LAUNCHING NEW PRODUCTS IN THE MARKET

Unleashing the Power of Branding through

Trademarks
(updated 2006)

Caroline Schwab - Program officer

Small and Medium-Sized Enterprises Division
WIPO - World Intellectual Property Organization
 Branding and
trademarks are keys
to success in business
and in the global
market
 YESTERDAY’S OPERATION:
- Technology Brands
- E-mails Campaigns
- PR in place of advertising
- Viral Marketing

TODAY:
- Lifestyle Brand
- Authenticity Marketing
- Product Placement
- Viral Marketing
- Brand Culture
 What is Branding
• Branding -- is the process by which the
name or the identify of an owner, a
company/enterprise or organization, is
communicated.
• Branding allows a company to differentiate
its products and services from the
competition by creating a bond with its
customers. It aims to create customer
loyalty.
• This way, a company takes a position in the
marketplace.
 What is Branding
• A way by which companies launch and sell
goods & services.
• A brand name is sometimes made of a part
or the totality of a trademark name
• It communicates the essence of a products
or its line, including why it is great and how
it is better than all competing products.
• It reflects in general a prestigious (aesthetic)
image in order to attract more consumers.
 SUCCESSFUL BRANDING
Attracts / catches the consumers

• Developing a brand is part of every strategic

business plan
• Target what customers care about: articulate
precise values and qualities that are relevant
and of direct interest
• Emphasize features that are both important to
consumer and quite differentiated from
competitors
• Communicate constant innovating brand image
at all levels of operation
 THE PINK PANTHER IS A WORLDWIDE
PROTECTED CHARACTER USED AS A MARK, AS A
COPYRIGHT & AS AN INDUSTRIAL DESIGN.
TRADEMARKS

ARE FOR EVER

10 Points about
TRADEMARKS
 Before launching a trademark - key to success is
CLEARANCE
10 POINTS ABOUT TRADEMARKS
1. Product or service Image (Identity)
2. Distinguish goods or services among others
3. Play a pivotal role in the branding/marketing Strategy
4. Can be extended to any country
5. Defines a certain image - builds a reputation
6. Is a marketing tool - enabling licensing & franchising
7. Is a valuable IP business asset
8. Encourage companies to invest, maintain
and improve product quality
9. Once protected, are useful for obtaining financing
10. Can be put in the stock exchange
 What is a Trademark?

• A BRAND NAME - A KIND OF VISIT CARD THAT

PROMOTES THE IMAGE OF A COMPANY
AND ITS RANGE OF GOODS & SERVICES.

• “A sign distinguishing goods or services

produced or sold by one enterprise (from those
of other enterprises)”.
 A TRADEMARK IS MADE OF :

Any Distinctive Words, Letters, Numerals,

Pictures, Shapes, Colors, Logotypes, Labels

• Examples:
 Less traditional forms

• Single colors (Louis Vuitton)

• Three-dimensional signs
• (shapes of products
• or packaging)

• Audible signs (sounds)

• Olfactory signs (perfume)

 Types of Trademarks?

• Trade marks: to distinguish goods

• Service marks: to distinguish services
• Collective marks: to distinguish goods or services by
members of an association
• Certification marks

• Well-known marks: benefit from stronger protection

• Tradename (Brand name)
 The function of a Trademark

• ALLOWS COMPANIES TO MARK A

TERRITORY, EXPRESSING SPECIFIC
FUNCTIONS AMONG SIMILAR PRODUCTS IN
THE MARKET.

• ENSURES THAT CONSUMERS CAN IDENTIFY A

LINE OF PRODUCTS.

• ENSURES EXTENSION OF THE MARK

THROUGH LICENSING OR FRANCHISING
PROCESS.
 THE VALUE OF A TRADEMARK?

• A MARKETING TOOL

• SOURCE OF REVENUE THROUGH LICENSING

• CRUCIAL COMPONENT OF FRANCHISING

AGREEMENTS

• USEFUL FOR OBTAINING BANKS OR THIRD

PART FINANCE

• A VALUABLE BUSINESS ASSET

 The Value of Trademarks

• Global Brand Scoreboard

• 1. COCA-COLA 67.52$ billion

• 2. MICROSOFT 59.95$ billion
• 3. IBM 53.37$ billion
• 4. GE 46.99$ billion
• 5. INTEL 35.58$ billion
• (German survey January 17, 2006)
 Trademark protection >
Registration =
• EXCLUSIVE RIGHTS PREVENT OTHERS FROM MARKETING
PRODUCTS UNDER SAME OR CONFUSINGLY SIMILAR MARK

• SECURES INVESTMENT IN MARKETING EFFORT

• PROMOTES CUSTOMER LOYALTY/ REPUTATION / IMAGE OF

COMPANY

• PROVIDES COVERAGE IN RELEVANT MARKETS WHERE

BUSINESS OPERATES

• REGISTERED MARKS FOR LICENSE OR BASIS FRANCHISING

AGREEMENTS
 PRACTICAL ASPECTS

• Creating/selecting a trademark after CLEARANCE -

searching worldwide that there is not a similar one
yet legally protected
• Avoid IP offices’ refusals or oppositions
• Protecting a trademark through national, regional
and WIPO registration system (Madrid & Protocol)

• Using and maintaining a trademark (paying fees,

following notification of refusals, extending territory)

• Enforcing a trademark by Innovating (new products)

 What to avoid when selecting
a Trademark
• Generic terms: CHAIR to sell chairs
• Descriptive terms: SWEET to sell chocolates
• Deceptive terms: “ORWOOLA” for 100% synthetic
material

• MARKS CONTRARY TO PUBLIC ORDER and

MORALITY

• AVOID USING FLAGS, ARMORIAL BEARINGS,

OFFICIAL HALLMARKS, EMBLEMS WITHOUT
LEGAL AUTHORIZATION
 What to Remember when
selecting Trademark?
• Inherently distinctive
• Coined or fanciful words: “Kodak”
– Arbitrary marks: “apple” for computers
– Suggestive marks: SUNNY for heaters
• Easy to memorize and pronounce
• Fits product or image of the business
• Has no legal restrictions
– Reasons for rejection
– TM search>not identical or confusingly similar to existing
TM
• Has a positive connotation
• Suitable for export markets
• Corresponding domain name available
 Protecting a TM
through registration
• The applicant can file a request through his national office
• Right after filing through the IP Office, a trademark can be filed at
WIPO (Madrid & Protocol) - saving time and money
– WIPO offers free assistance, information & guidelines
– Filing application form, contact details, graphic illustration of
mark, description of goods, fees
– Registration certificate valid for 10 years
– Renewal & Publication (CD-Rooms /Gazette)

• The IP national office is the only authority in charge of :

– Formal examination
– Substantive examination
– Publication and opposition
 Madrid System for the
International Registration of Marks

The Madrid system for the international registration

of marks (the Madrid system) established in 1891
functions under the Madrid Agreement (1891), and the
Madrid Protocol (1989) are administered by the
International Bureau of WIPO located in Geneva,
Switzerland.
This system for an international protection of
Trademarks and Brands is adopted by more than
70 member states of WIPO, members of the
« MADRID UNION »
 Madrid System for the
International Registration of Marks
The Madrid and the Protocol system offers the possibility
to record a trademark in 78 countries at once.
However, owners has to go through their own national
office to present their request to WIPO
WIPO HAS MADE POSSIBLE A FREE SEARCH ON-
LINE OF “ROMARIN” –
INFORMATION ON TRADEMARKS RECORDED AT WIPO.

http://www.wipo.int/madrid/en/services/
MANY REGISTRIES FOR SEARCH ARE AVAILABLE IN THE
PRIVATE SECTOR OR VIA THE IP OFFICES, COUNTRY BY
COUNTRY.
 Protecting a TM
through registration

• It is critical to register your trademark in all

classes in which you use or intend to use your
trademark.
• The most widely used classification system
(Nice has 34 classes for goods and 11 for
services.
• Some TM offices such as in US and Canada
require the proof that the TM is used within a
year.
•
 Protecting a TM
through registration

• A substantive examination may be required if

there is a conflict with an existing Mark on
the register.
• Some countries publish the TM in a journal
allowing 3rd parties to oppose during a given
period.
• Once it is decided that there is no grounds for
refusal, a certificate is issued which is valid
for 10 years.
• Registration can be renewed indefinitely but
may be cancelled if TM is not actively used
for a certain period stated in the TM law.
•
 SCOPE OF RIGHTS

• THE EXCLUSIVE RIGHT TO USE THE MARK

• THE RIGHT TO PREVENT OTHERS FROM USING AN

IDENTICAL OR SIMILAR MARK FOR IDENTICAL OR
SIMILAR GOODS OR SERVICES

• THE RIGHT TO PREVENT OTHERS FORM USING AN

IDENTICAL OR SIMILAR MARK FOR DISSIMILAR
GOODS OR SERVICES
 KEEP IN MIND

• THE TIME IT TAKES TO REGISTER A TM

• THE COSTS ASSOCIATED WITH TM PROTECTION

• THE NEED FOR A TRADEMARK SEARCH - FREE AT

WIPO

• A TRADEMARK AGENT MAY BE REQUIRED

• PROTECTING AT HOME AND ABROAD

• RENEWING YOUR REGISTRATION & PAYING FEES

 PROTECTING AT HOME
AND ABROAD
• THE NATIONAL ROUTE
– Each country where you seek protection

• THE REGIONAL ROUTE (for some countries only)

– Countries members of a regional trademark system: African
Regional Industrial Property Office; ASEAN IPO; Benelux
TM office; Office for Harmonization of the Internal Market
of the EU; Organisation Africaine de la Propriété
Intellectuelle

• THE INTERNATIONAL ROUTE

• UK JOINED THE MADRID PROTOCOLE IN DECEMBER
2005 - ISRAEL MAY JOIN VERY SOON
– The Protocol & Madrid system administered by WIPO
– 78 member countries
 USING A TRADEMARK

• ACTIVELY USING A TM

• USING/MAINTAINING A TM IN MARKETING AND

ADVERTISING

• USING THE MARK ON THE INTERNET

• USING THE MARK AS A BUSINESS ASSET

 ACTIVELY USING A
TRADEMARK

• OFFERING THE GOODS OR SERVICES

• AFFIXING THE MARK TO THE GOODS OR THEIR

PACKAGING

• IMPORTING OR EXPORTING THE GOODS UNDER THE

MARK

• USING IT ON BUSINESS PAPERS OR IN ADVERTISING

 USING A TRADEMARK IN
ADVERTISING
• USE EXACTLY AS REGISTERED

• Protect TM from becoming generic

– Set apart from surrounding text
– Specify font, size, placement and colors
– Use as an adjective not as noun or verb
– Not plural, possessive or abbreviated form
– Use a trademark notice in advertising and labeling ®

• MONITOR AUTHORIZED USERS OF THE MARK

• REVIEW PORTFOLIO OF TRADEMARKS
• AN EVOLVING TRADEMARK
 USING A TM ON THE
INTERNET

• USE OF TM ON INTERNET MAY RAISE

CONTROVERSIAL LEGAL PROBLEMS

• CONFLICT BETWEEN TRADEMARKS AND DOMAIN

NAMES (INTERNET ADDRESSES) - CYBER SQUATTING

• WIPO PROCEDURE FOR DOMAIN NAME DISPUTE

(HTTP://ARBITER.WIPO.INT.DOMAINS)
 USING A TRADEMARK AS
A BUSINESS ASSET
• LICENSING: OWNER RETAINS OWNERSHIP AND
AGREES TO THE USE OF THE TM BY OTHER COMPANY
IN EXCHANGE FOR ROYALTIES > LICENSING
AGREEMENT (BUSINESS
EXPANSION/DIVERSIFICATION)

• FRANCHISING: LICENSING OF A TM CENTRAL TO

FRANCHISING AGREEMENT.THE FRANCHISER
ALLOWS FRANCHISEE TO USE HIS WAY OF DOING
BUSINESS (TM, KNOW-HOW, CUSTOMER SERVICE, S/W,
SHOP DECORATION. ETC)

• SELLING/ASSIGNING TM TO ANOTHER COMPANY

(MERGER & ACQUISITIONS/RAISING OF CASH)
 ENFORCING
TRADEMARKS

• RESPONSIBILITY OF TM OWNER TO IDENTIFY

INFRINGEMENT AND DECIDE ON MEASURES

• “ CEASE AND DESIST LETTER” TO ALLEGED

INFRINGER

• WIPO ENFORCEMENT PROGRAMS -

• COOPERATION WITH CUSTOMS AUTHORITIES TO

PREVENT COUNTERFEIT TRADEMARK GOODS

• ARBITRATION AND MEDIATION (PRESERVE BUSINESS

RELATIONS)
SMES GUIDE FOR
TRADEMARKS
 THANK YOU FOR
YOUR ATTENTION
(end of part I)
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