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WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

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Page 1: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

WIPO-ARIPONational Seminar on Intellectual Property

for the Competitiveness of Small and Medium-Size Enterprises (SMEs)

Harare, February 7 to 9, 2007

Page 2: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Getting Noticed: The Role of Trademarks, Geographical

Indications and Industrial Designs

SMEs Division WIPO

Page 3: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

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.” Nothing happened.

• 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.)

Page 4: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

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 attracts customers

Page 5: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

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

Page 6: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

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

Page 7: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Purpose of Branding

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

• Makes the customer view a business/enterprise as the only solution to their need or problem.

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

• Through its brand image an enterprise will attract and retain customer loyalty for its goods and services and increase the value of its business.

Page 8: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Successful Branding

• Developing a brand part and parcel 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.

• Sell the brand outside and inside: Motivate employees to identify with brand, communicating the brand image at all levels of operation.

• Intellectual Property Rights such as trademarks and industrial designs important tools for branding.

Page 9: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Plan to Brand

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

• Trademarks • Industrial Designs• Geographical Indications

3 IP Rights

crucial to

successful branding

Page 10: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Trademarks

Page 11: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

What is a Trademark (TM)?

• “A sign capable of distinguishing the goods or services produced or provided by one enterprise from those of other enterprises”

Page 12: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

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

In some countries: sounds, smells and three-dimensional marks

• Examples:

Page 13: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Types of TMs

• 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

Page 14: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

The Function of a TM

• Allows companies to differentiate their products.

• Ensures consumers can distinguish between products.

• Promotes customer loyalty/ reputation / image of company.

• Secures investment in marketing effort.

• Exclusive rights obtained through registration prevent others from marketing products under same or confusingly similar mark.

• Registered marks may be licensed or basis for franchising.

Page 15: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

The Value of TMs

• A marketing tool

• Source of revenue through licensing

• Crucial component of franchising agreements

• May be useful for obtaining finance

• A valuable business asset

Page 16: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Value of TMs 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)Source: Interbrand

Page 17: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Things to remember in selecting a TM

• 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

Page 18: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

A few more important points

• TM must be distinctive: not generic, descriptive, deceptive or contrary to public order or morality.

• TM is a territorial right.

• TM must be registered (protection through use weak and only in some countries).

• TM must not be confusingly similar to other trademark for similar or identical goods (trademark search critical).

• TM cannot be confusingly similar to a Geographical indication.

• It is the responsibility of the TM owner to identify TM infringement and take action against infringers.

Page 19: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

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

Page 20: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

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

Page 21: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

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

Page 22: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

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 (80 member countries)

Page 23: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

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

Page 24: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

The “Swoosh”

Page 25: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

IP & Marketing

• Collective marks• Certification marks• GIs

Trademarks

Individual marketing

Joint marketing

Page 26: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Collective Trademarks

Page 27: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

What is a collective mark?

• Sign ‘capable of distinguishing the origin or any other common characteristics, including the quality’ of the goods/services of different enterprises which use the sign under the control of the registered owner.

• Typically, the owner of collective mark is an association of which those producers are members

• Registered as such in trademarks registry

Page 28: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

How does a collective mark work?

• Regulation of use

– persons authorized to use – criteria for membership – conditions of use

• e.g. particular features/qualities of the products– sanctions against misuse

• Authorization to use

– membership – application or automatic – comply with the rules

• Control

Page 29: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

• About the origin of the products • e.g. Café de Colombia with its label of Juan Valdez

• About a level of quality or accuracy, geographical origin, or other features set by the association.

Thus, function of collective mark is to INFORM the customers :

Page 30: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Benefits for SMEs

1. Economies of scale (registration cost, advertising campaign, enforcement, etc.)

2. Reputation acquired on the basis of common origin or other characteristics of the products made by different producers/traders

3. May facilitate cooperation amongst local producers/traders

4. Creation of collective mark hand in hand with development of certain standards and criteria (rules) and common strategy

collective marks can become powerful tool for local development

harmonization of products/services, enhancement of quality

Page 31: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

• To buy, order and send flowers at almost anywhere in the world

• > 70.000 florists in 150 countries

• Emblem : Mercurio with flowers in hand

• Slogan: “Say it with flowers"

• Guarantees freshness, flower quality and value of every Interflora relay order

Case Study: “Interflora”

Page 32: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Case Study (2): Melinda

• Used by 5,200 appleproducers of the Valle del Nocein Northern Italy

• Over half of them have less thanone hectare

• Strict rules not only on the product but also on production techniques and packaging of the product

• Important market share in Europe and beyond

Page 33: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Certification Marks

Page 34: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

What is a certification mark?

• Sign indicating that the goods/services have been certified by an independent body in relation to one or more characteristics– composition, manner of manufacture, quality, origin, material,

accuracy, etc.

• Owner is usually an independent enterprise, institution, governmental entity, etc. that is competent to certify the products concerned

Page 35: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

How does certification mark work?

• Regulations of use– quality, composition or other characteristics of the

goods/services– control measures– sanctions

• Authorization to use– anyone who meets with the prescribed standards– not confined to membership – generally: licence agreement (fee)– owner not allowed to use

• Control

Page 36: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Benefits for SMEs

• Guarantee for consumers of certain quality

• Benefit from the confidence that consumers place in users of certification mark

• Strengthen reputation

Page 37: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Product is handmade

Certain ecological requirements have been respected in the production procedure

No children were employed in the production process

Products have been produced in specific geographical region

Products are made 100% of recyclable materials

Products are made by indigenous group

For example, certify that:

Page 38: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Case Study: “RUGMARK”

• Global non-profit organization working to end child labor and offer educational opportunities for children in India, Nepal and Pakistan

• RUGMARK label is assurance that no illegal child labor was employed in the manufacture of a carpet or rug

Page 39: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

“RUGMARK”

• To be certified by RUGMARK, carpet-manufacturers sign legally binding contract to:– Produce carpets without illegal child labor– Register all looms with the RUGMARK Foundation– Allow access to looms for unannounced inspections

• Carpet looms are monitored regularly by RUGMARK

• Each labeled carpet is individually numbered

enables origin to be traced back to the loom on which was produced

also protects against counterfeit labels

Page 40: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Geographical Indications(GIs)

Page 41: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

What is a GI?

“indications which identify a good as originating in a country, region or locality where a given quality, reputation or other characteristic is essentially attributable to its geographical origin.”

– Used mainly for wines, spirits, cheese and other food products

– Different countries protect them in different ways

– Common examples: Champagne, Roquefort, Chianti, Parma ham, etc.

– There must be a clear link with the territory

Page 42: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

• Authorization to use

– Each enterprise located in the area has right to use • For products originating from that area LINK

• Possibly subject to certain quality requirements

How does a GI work?

• Link between product and place

• Place where product is produced (industrial products, crafts)• Place where product is extracted (clay, salt)• Place where product is elaborated (liquor,cheese)

Page 43: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

• Agricultural products that have qualities that derive from their place of production and are influenced by specific local factors, such as climate, type of soil, altitude, etc

– E.g. wine, champagne, cognac, port, sherry, whiskey

– E.g. cheese, yoghurt

– E.g. olive oil, ham, potatoes, honey, rice

Typical examples:

Page 44: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

• Also: handicrafts and medium-tech goods

– E.g. ‘Hereke’ (Turkey) for carpets

– E.g. ‘Limoges’ (France) for porcelain

– E.g. ‘Swiss’ for watches

– E.g. ‘Arita’ (Japan) for ceramics

More examples:

Page 45: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Case Study: Tequila

– In 1977 el Tequila was registered as an appellation of origin in Mexico.

– Internationally registered through the Lisbon Agreement and through mutual recognition with the USA, EU among others.

- In 1994 the Tequila Regulator Council was founded.

- Only the producers from 5 Mexican States where a specific variety of “agave”grows are entitled to produce “Tequila”.

- In 2006, 242.6million liters of Tequila were produced,giving employment to 36,000 people.

Page 46: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

- Considered to be one of the finest ceramics in Mexico

- Handmade and painted by hand

- Historical linked with the Spain settler since XVI century

- Typical are the geometric designs in

blue color painted on a white background

- The design and colours of the artwork are created following traditional rules and know-how

Case Study (2): “Talavera de Puebla”

Page 47: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

• National

• Regional

• International

How is a GI protected?

Page 48: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

– Specific title of protection• Registration with IP office (Russia)• Decree (France)• Special laws for the protection of GIs (India)

– Certification marks or collective marks • Certification: e.g. in the U.S.A.: Darjeeling, Swiss, Stilton• Collective: e.g. Japan; agricultural label in France

– Passing-off, Unfair Competition, Consumer Protection laws • If reputation + misleading

• Passing off: e.g. Scotch whisky – Peter Scot in India

• Consumer protection: e.g. ‘made in Japan’; Egyptian cotton

Protection on national level

Page 49: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Protection on international level

– No legally binding international register for all GIs

– Bilateral agreements • e.g. EU-Australia for wine names

– International treaties • e.g. TRIPS, Lisbon

Page 50: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

– International treaties• TRIPS:

– minimum standard of protection for WTO members

– if misleading or act of unfair competition

– enhanced level of protection for wines and spirits

– no protection if GI is generic term for the goods in the member state

• Lisbon:– international registration system

– member countries must prohibit imitations, including terms like “type” or “kind”

– cannot become generic, as long as protected country of origin

Page 51: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

• GIs shift the focus of production to quality increased production local job creation

• Reward producers with higher income in return for efforts to improve quality

• Provide consumers with high-quality products whose origin and mode of production is guaranteed

Benefits for SMEs

Page 52: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

– Inconsistent protection• Absence of GI system in many countries

• Civil law

– Registration

– Only similar goods

• Common law

– Repution enough (e.g. Champagne in India)

– Also dissimilar products

• Additional protection for wines and spirits

– GIs may become generic terms (e.g. Chablis in America)

Disadvantages

Page 53: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Industrial Design

Page 54: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Industrial Design important branding tool

Just as trademarks distinguish your product or service, industrial designs differentiate your products from

those of the competition. Both are intellectual property tools that contribute to your branding strategy and

therefore need protection.

Page 55: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

• What is Protected: the Aesthetic Feature of a Product not the Technical (Patents) nor Distinguishing Features (Trademarks)

“ The Form of a Product”

Two-dimensional Designs Three Dimensional Design

Page 56: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

The Value of a Creative Design

• Makes a product attractive and appealing

• Target specific market segments

• Create a new market niche

• Strengthen brands

Page 57: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Business Strategy

• Integrate issues of design protection into a broader business strategy

• Costs

• Type of protection

• Ownership issues

• In-house development or outside agency

• Timing

• Advertising, marketing, public display in an exhibition

• Export markets?

• License?

Page 58: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Legal Considerations

REQUIREMENTS

• The design must be NEW

• The design must be ORIGINAL

• The design must have INDIVIDUAL CHARACTER

What CANNOT BE protected

• Designs that fail to meet requirements of novelty, originality and/or individual character

• Designs dictated by technical function

• Designs with official symbols or emblems

• Designs contrary to public order or morality

Page 59: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Industrial Design protection> registration =

• Exclusive right to prevent unauthorized copying or imitation by others.

• Return on investment

• Business asset increasing commercial value of a company and its products

• Registered design may be licensed (or sold)

• Encourages fair competition and honest trade practices

Page 60: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Protecting ID through Registration

• The Applicant– application form, contact details, drawings or photographs

of design, written description or statement of novelty, fee.

• The IP Office– formal examination

– substantive examination

– design register/design gazette

– design registration certificate valid at least 10 years

Page 61: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Reasons for protecting designs in EU

• 70% prevent copying

• 23.4% company policy

• 20.3% get ahead competition

• 10.1% prestige

• 6.5% prevent people think “I copy”

• 5.8% other

Page 62: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Broken Line PracticeFront Body Portion of a Car

GrillesDisclaimed

Wheels Disclaimed

Rear Body Portion Disclaimed

Source: Robert Katz

Page 63: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Feature Omission Practice

Nike Air Max PlusShoe and Upper

Design Patent

Trademark omitted

in design claim

Page 64: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Multiple Claim Scope Example

U.S. Pat. Nos. D452,282 and D452,534

Page 65: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Draft Generic Claims

Low Version Mid Version

Generic Patent Claim

Nike Air Mada 2

Page 66: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

The Hague Agreement

Registration and Administration of Industrial Designs up to 45 States / Contracting Parties by means of -

• a single procedure

• with a single administration (WIPO)

• in one language (English or French)

• on payment of a fee in a single currency (Swiss Francs)

Page 67: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

Advantages of the Hague System

For Industrial Design Owners

• Simple, efficient and cost-effective procedure for obtaining protection for industrial designs in the (45) countries bound by the Hague Agreement.

• Effective and economical means of maintaining

protection and subsequently managing the registration.

Page 68: WIPO-ARIPO National Seminar on Intellectual Property for the Competitiveness of Small and Medium-Size Enterprises (SMEs) Harare, February 7 to 9, 2007

THANK YOU

Email: [email protected]

http:/www.wipo.int/sme/