vivien irish, wipo and tpi, istanbul january 2005 marketing and branding strategies ( trade marks...
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Vivien Irish, WIPO and TPI, Istanbul January 2005
Marketing and Branding Strategies
(Trade Marks and Designs)
Vivien Irish
Consultant Patent Attorney
Vivien Irish, WIPO and TPI, Istanbul January 2005
Very early “trademarks”
Egypt: Ramses II cartouche on a sun-dried mud and straw brick. Dynasty 19, 1279 – 1212 BC
China: Ming bowl C. 1600 AD
China: Shang dynasty mark, C1600 BC
Vivien Irish, WIPO and TPI, Istanbul January 2005
Later trademarks
Edouard Manet: Un Bar au Folies Bergere, 1882
Vivien Irish, WIPO and TPI, Istanbul January 2005
Turkish Trade Mark Act 1995 andCommunity Trade Mark Act
A Trade Mark means any sign which can be represented graphically and which is capable of distinguishing goods or services of one undertaking from those of other undertakings
Vivien Irish, WIPO and TPI, Istanbul January 2005
“Any sign capable of distinguishing…”
Eg: Invented word “Xerox” for photocopiers
“Kodak” for cameras but NOT
“Safemix” for valves to mix hot and cold
and not
“Orlwoola” a misspelling of “all wool”
Vivien Irish, WIPO and TPI, Istanbul January 2005
“Any sign capable of distinguishing…”
“Apple” for computers
“Jaguar” for automotives
Eg: A word taken out of context
Vivien Irish, WIPO and TPI, Istanbul January 2005
Eg: A symbol or “device"
“Any sign capable of distinguishing…”
Or both a word and a symbol….
Vivien Irish, WIPO and TPI, Istanbul January 2005
“…the goods and services of one undertaking from those of other
undertakings…” Goods are divided into 34 classes.
Services are divided into 8 classes.
“Penguin” is registered for books, class 16, paper goods.
“Penguin” is registered for biscuits, class 30, bakery products
Vivien Irish, WIPO and TPI, Istanbul January 2005
“….can be registered as a trademark…”
Trademarks are registered at national Trademark Offices,
or internationally via the Madrid system,
or for a region, eg: European Community.
Can use a Trademark Attorney or Trademark Agent
who is expert in the law of trademarks
– optional but advisable.
Vivien Irish, WIPO and TPI, Istanbul January 2005
Cannot register a trade mark if:-
•it is devoid of distinctiveness
•it is identical or confusingly similar to an earlier mark for identical or confusingly similar products or services
•it is exclusively a sign used in the trade
Vivien Irish, WIPO and TPI, Istanbul January 2005
Indicating a Trademark
Can use “TM” after the Mark
If registered, can use “R” after the Mark
Vivien Irish, WIPO and TPI, Istanbul January 2005
Infringement of a registered trade mark
Same sign on the same goods or services
Same or similar sign on same goods or services or on goods or services so similar that there is a risk of confusing the public
Infringement can be civil or criminal act
Vivien Irish, WIPO and TPI, Istanbul January 2005
Other types of Trademark ICollective Marks
• A Group applies to register the Mark and sets rules for its use
• Eg a mark used by 16 apple-growing cooperatives in Italy
Vivien Irish, WIPO and TPI, Istanbul January 2005
Other types of Trademark IICertification Marks
• In Turkey – Guarantee Marks
• Owner controls common characteristics and methods of production
• Woolmark used by manufacturers of pure new wool products in 67 countries
Vivien Irish, WIPO and TPI, Istanbul January 2005
Other types of Trademark IIIGeographical Marks or Appellations of Origin
• Name of place, area or region• Used to designate quality or
character of product due to inherent natural and human factors of the place
• Eg labels on wine bottles
Vivien Irish, WIPO and TPI, Istanbul January 2005
Industrial Designs
Turkish Industrial Designs Law 1995
Community Registered Designs
Vivien Irish, WIPO and TPI, Istanbul January 2005
Registered Designs –typical products
Vivien Irish, WIPO and TPI, Istanbul January 2005
Appearance of the whole or part of a product resulting from features of, in particular, the lines, contour, shape, texture and/or materials of the product itself and/or its ornamentation
“Product” = industrial or handicraft item including….. packaging, get-up, graphic symbols
Vivien Irish, WIPO and TPI, Istanbul January 2005
A design must:-
be new – but 1year grace period
have an individual character
Vivien Irish, WIPO and TPI, Istanbul January 2005
Cannot register a design
for features of appearance dictated solely by technical function
for features which allow a product to fit to another product
Vivien Irish, WIPO and TPI, Istanbul January 2005
How to register a design I
Apply to Designs Registry
- in Turkey for a Turkish Registration
- in Alicante in Spain for a Community Registration
(through the Turkish Design Registry)
Vivien Irish, WIPO and TPI, Istanbul January 2005
How to register a design II
• Provide an illustration of the product from several angles
• Pay a fee
• Can use a patent attorney
Vivien Irish, WIPO and TPI, Istanbul January 2005
Advantages of a design registration
Can last for 5 X 5 = 25 years- if renewal fees are paid
Can stop use of same design on any product including making, offering, importing, exporting, putting on the marketVisual test – compare registration with the offending article
Vivien Irish, WIPO and TPI, Istanbul January 2005
Community Unregistered Design
Lasts for 3 yearsFor tangible three-dimensional articlesMust be “not commonplace”Infringed by copying
Vivien Irish, WIPO and TPI, Istanbul January 2005
The end
Thank you for listening