the small and medium-sized enterprises (smes) division of wipo wipo national seminar on importance...

The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

WIPO National Seminar on Importance of Intellectual Property

Rights for the Indian Handicrafts Sector

April 5-7, 2005


Marketing and Branding StrategiesBranding and Trademarks in Marketing Handicrafts; Case Studies

byGuriqbal Singh Jaiya

Director, SMEs Division

World Intellectual Property Organization (WIPO)


Does a name really matter?

• In 1969 while speaking at a small scientific conference, Sir Roger Penrose, a Cambridge physicist announced his discovery of what he called a "gravitationally totally collapsed object." The world yawned.

• Months later, he changed his description to a "Black Hole" and the news of his discovery raced around the world. Today, the term Black Hole is a part of the world's working vocabulary.

• We cannot understand, or maybe we do not care about a collapsed object. But a Black Hole is something very different. It is provocative, intriguing, exciting and conceptual. Most important, it is believable. (quoted from Lexicon Branding, Inc.)


Concept of Branding

• Getting people to recognize your name• A brand is a company image as seen by the customer• Good branding means getting people to recognize you first• A brand means you have an effective logo with which

customers can identify• A brand is what differentiates you from your competitors

• Good advertising and how it attracts customers • A compelling customer experience


Branding is sending a message

• Think of it this way: marketing is a conversation. The brand name initiates the conversation which will develop multiple concepts and criteria, namely:

– Vision, mission, message, service, package, image, differentiation, understanding the customer, advertising, logoname recognition, customer service, internal training, team work, investment


Branding matters

“Consumers are starved for time and overwhelmed by the choices available to

them. They want strong brands that simplify their decision making and reduce

their risks” Kevin Lane Keller, Tuck School of Business


Purpose of Branding

• Gives a business/enterprise a significant edge over the competition

• Have the customer view a business/enterprise as the only solution to their problem

• A strong brand engenders feelings of trust, reliability, loyalty, empathy, responsiveness and recognition in the customer’s mind.


Plan to Brand

• Developing a brand is a milestone in the preparation of every strategic business plan

• Trademarks, Industrial Designs and Geographical Indications - Three Intellectual Property Rights that are crucial to successful branding


Trademarks


“A sign capable of distinguishing the goods or services produced or provided by one enterprise from

those of other enterprises”

What is a Trademark/Brandname?


Any Distinctive Words, Letters, Numerals, Pictures, Shapes, Colors, Logotypes, Labels or Combinations


Less/Non Traditional Forms

• Single colors

• 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 vs Trademark


The Functions of Trademarks

• Allows companies to differentiate their products

• Ensures consumers can distinguish between products and ultimately develop brand loyalty/Trust


The Value of Trademarks

• A marketing tool

• Source of revenue through licensing

• Crucial component of franchising agreements

• May be useful for obtaining finance

• A valuable business asset


Value of trademarks in 2004 (*)

• 1 Coca Cola 67,394• 2 Microsoft 61,372• 3 IBM 53,791• 4 GE 44,111• 5 Intel 33,499• 6 Disney 27,113• 7 McDonald’s 25,001• 8 Nokia 24,041 * ($ Millions)


Protecting through 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 may be licensed or basis franchising

agreements


Practical aspects

• Selecting a trademark

• Protecting a trademark through registration

• Using and maintaining a trademark

• Enforcing a trademark


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/morality• Flags, armorial bearings, official hallmarks, emblems•Negotiating a permission is however possible


The Napapijri’s case

• Italian skiwear and sportswear company

• Napapijri means Artic Polar Circle in Finnish Language. Napapijri is also the name of a small village located on the Polar Circle.

• The Norwegian flag appears on many of the garments as a tribute to the Norwegian explorers that first traveled to Polar Regions by foot and by dog sled over 100 years ago.

• Permission to use the Norwegian flag as a Napapijri logo was happily granted by the King of Norway, Harald the 5th.


Napapijri


Things to remember in selecting a trademark

• Naturally distinctive– Coined or fanciful words: “Kodak”– Arbitrary marks: “Apple” for computers

• Easy to memorize and pronounce• Fits product or image of the business• Not identical or confusingly similar to existing TM• Has a positive connotation in all languages• Suitable for export markets• Corresponding domain name available


Registration steps

• The applicant– Application form, contact details, graphic illustration of mark,

description of goods, fees• The trademark office

– Formal examination– Substantive examination– Publication and opposition– Registration certificate valid for 10 years– Renewal


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

• A trademark agent may be required

• Protecting at home and abroad

• Renewing your registration


Protection at home and abroad• The national route

– Each country where you seek protection

• The regional route

– 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 Madrid System administered by WIPO (77 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• Offering the goods or services• Affixing the mark to the goods or their packaging• Importing or exporting the goods under the mark• Use on business papers or in advertising


TM in marketing and advertising

• Use exactly as registered• Protect TM from becoming generic

– Set apart from surrounding text– Specify font, size, placement and colors– Use as a name 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


Using TM on the Internet

• Use of TM on internet may raise controversial legal problems

• Conflict between trademarks and domain names (internet addresses) - cybersquatting

• WIPO procedure for domain name dispute (http://arbiter.wipo.int/domains/index.html)

http://arbiter.wipo.int/domains/index.html






Using the TM 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, etc.)

• Selling/assigning TM to another company (merger & acquisitions/raising of cash)


Enforcing trademarks

• Responsibility on TM owner to identify infringement and decide on measures

• “ Cease and desist letter” to alleged infringer • Search and seize order• Cooperation with customs authorities to prevent counterfeit

trademark goods• Arbitration and mediation (preserve business relations)


IP for Business Series


Use of IPRs in Advertizing


Nature of IPRs

• Designed to protect the exclusive right of exploitation for limited periods of time

• This is probably encouraging creativity while creativity is stimulated by a reasonable and fair use of other’s ideas

– “I have never made the slightest effort to compose anything original” (Wolfang Amadeus Mozart)


Originality

• Applying legal concepts is essential for advertisement professionals

• In the case of trademarks, words, symbols and logos must clearly identify a brand, good or service

• To do so, they have to show sufficient artistic originality

• A too simple presentation of the creation would probably cause the rejection of IP protection by the IP Office


Slogans and headlines

• The word “Slogan” comes from the Gaelic term for “battle cry”• Many slogans begin as headlines and become familiar, such as

“Just do it” (Nike) or “We Try Harder” (Avis)• Continuos use of a slogan can create trademark rights• Advertising text is copyrightable and may be classified as

literary work, provided it has a creative and original component• A long text increases the possibility of copyright protection

while a short text requires an additional creativity and originality


Advertising and trademarks

• Essential to allow consumers to identify the product/service

• Trademarks law protect the mark owner as well as the buying public, avoiding possible confusion

• Importance of performing a trademark search before investing in a slogan or advertisement campaign


Advertising and copyright

• Ownership generally follows authorship

• To be copyrightable, the work must be original

• In addition, it must fall into one of the following work categories: literary, musical, dramatic, pantomimes and choreographic, pictorial, graphic and sculptural works, audio-visual, sound recording, three-dimensional architectural works.

• It must be fixed in a tangible support


The Nike’s case

• This case reflects the popularity of a well-known TM• The “Swoosh” is the well known symbol of Nike• Originally Nike’s logo included also the shoemaker’s name• At the end of the nineties, the Nike’s name disappeared• The swoosh remained as the main identification symbol of

the shoemaker• Today there is no need to include the brand into this logo

since the recognition of a simple swoosh automatically bring our attention to Nike


The “Swoosh”


Comparative Advertisement (CA)

• Advertising that claims superiority to competitors

• In many legislations, the owner of a well-known trademark cannot prevent a competitor to fairly refer to the owner’s mark in the context of comparative advertisement

• Few rules in CA: be fair, honest, accurate and especially do not mislead

• Opinions should never be expressed as facts


Thank you

e-mail: [email protected]

http://www.wipo.int/sme/

http://www.wipo.int/sme/

the small and medium-sized enterprises (smes) division of wipo wipo national seminar on importance...

Documents

investment slide

successful branding

brand loyaltytrust slide

small scientific conference

branding strategies

tuck school of business

valuable business asset

marketing products