Branding and 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

What is Branding

• Branding -- is the process by which the name or the identity of a company, an enterprise, an organization (etc.) 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 take a position in the marketplace and create customer loyalty.

• It is the way by which companies launch and sell goods & services, communicating the essence of new products and lines, highlighting why it is great and better than all competing products.

• It reflects in general a prestigious (aesthetic) image in order to attract more consumers.

Successful BrandingCATCHES THE CONSUMER’S CURIOSITY

• DEVELOPING A BRAND IS PART OF A 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 consumers and quite differentiated from competitors

• Sell the brand outside (but also think about motivating your partners & your employees in the development of your brand).

• Keep the brand flexible, create multiple variations and names for your products, imagine in advance a rich collection of packaging

C1 - corporate identity for industrial companies

OmegaTech, paintwork material productionAnton Smirnov (Russia)

F&C TECHNOLOGY,

make-up cosmetics

produced byICOM (Russia)

Sample of branding - corporate identity for retail (supermarkets, shops, boutiques, bars

and restaurants

(Maraschino, Bar's name refers to a authentic liqueur which has been produced

in Zadar area (Croatia) for decades

Studio Cuculic (Croatia)

Froggy, computer production and repairZebra design branding (Russia)

1961 Coca Cola original vintage advertisement.

Features a Valentine's Day

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 (smells)

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

• A source of revenue through licensing

• A 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 efforts

• Promotes customer loyalty/ reputation / image of company

• Provides coverage in relevant markets where business operates

• Registered marks permit license or basis franchising agreements

PRACTICAL ASPECTS

• Create or buy a trademark (after searching worldwide to find out that there are no similar registered ones -avoid claims- refusals or oppositions

• Protect your trademark through your national or regional office and then extend it to the world (WIPO Madrid & Protocol System)

• Use and maintain your trademark(s) (paying fees, following notification of refusals, extending territory)

• Enforce your trademark(s), innovate (develop new products)

What to avoid when selecting a Trademark

• Generic terms: CHAIR to sell chairs

• Descriptive terms: SWEET to sell chocolates

• Deceptive terms: “ORWOOLA” or “Pure whool” for 100% synthetic material

• Marks and terms contrary to public order/morality

• Do not use flags, armorial bearings, official hallmarks, emblems without a legal authorization

What to Remember when selecting Trademark?

• Create inherently distinctive mark

• Think about fanciful names as: “Kodak”

– Arbitrary marks and logos as: “apple” for computers

– Suggestive marks as : SUNNY for heaters

• A mark easy to memorize and pronounce, with a positive connotation and that fits product or image of the business

• Has no legal restrictions or reasons for rejection– TM search>not identical or confusingly similar to existing

• Suitable for export markets with a corresponding domain name which is not already used

Protecting a TM through registration

• The applicant can file a request at his national office and then at WIPO which offers free assistance, information & guidelines for:

– Filing application forms, contact details, fees

– Registration and certificate valid for 10 years

– Renewal services & publication (CD-ROMs /Gazette)

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

– Formal examination

– Substantive examination

– Publication and opposition

The Madrid system for the international registration of marks (the Madrid system), that was established in 1891, functions under the Madrid Agreement and the Madrid Protocol (adopted in 1989) are administered

by the International Bureau of WIPO located in Geneva headquarters in Switzerland.

This system for an international protection of Trademarks and Brands is adopted by more than

70 member states of WIPO, which are 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 more than 70 countries at once

WIPO has made possible a free search on-line of all the trademarks recorded at wipo under “Madrid Express”

http://www.wipo.int/madrid/en/services/

MANY REGISTRIES FOR SEARCH ARE AVAILABLE IN THE PRIVATE SECTOR OR VIA

THE IP OFFICE, COUNTRY BY COUNTRY.

Madrid System for the International Registration of Marks

Protecting a TM through registration

• While filling in a TM application, 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 - a total of 45 classes of goods and services).

• Some TM offices such as in US and Canada require the proof that the TM is used.

• A substantive examination may be required to avoid conflict with an existing and similar Mark, previously registered.

• Some countries publish the TM in a journal allowing 3rd parties to make an opposition (during a certain period of time).

• Once it is decided that there are no grounds for refusal, a certificate is issued with a validity of 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 from using an identical or similar mark for new 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 -

• A trademark agent may be required

• Protecting at home and abroad

• Renewing your registration

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; Benelux TM office; Office for Harmonization of the Internal Market of the EU; Organisation Africaine de la Propriété Intellectuelle

• The international route

– The Protocol & Madrid system administered by WIPO (over 70 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

• Shall be used 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 companies in exchange of 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 (s)

• Search and seize order

• Cooperation with customs authorities to prevent counterfeit trademark goods

• Arbitration and mediation (preserve business relations)

SMES GUIDE FOR TRADEMARKS

THANK YOU FOR YOUR ATTENTION

Caroline Schwab - Program Officer

SMEs Division

www.wipo.int/sme/en

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