Branding and Marketing - Role of Trademarks and Geographical Indications -

1. Branding and Marketing - Role of Trademarks and Geographical Indications - May 2007, Geneva Won-Kil YOON Counsellor, SMEs Division World Intellectual Property Organization (WIPO)

2. 1. Branding & Marketing

4. Why does a brand matter? “Consumers are starved for time and overwhelmed by the choices available to them. They want strong brandsthat simplify their decision making and reduce their risks.”

5. What is Branding? • Making company image as seen by the customer • Good branding : getting people to recognize your product as the best in the market • Brand : what differentiates you mostly from your competitors in the market - Co-branding : useful for entering new markets (ex. LG-Phillips) - Multibranding : useful for attracting various consumers ex.) For core premium customer : Nike brand For discount shoppers : Starter brand For “lifestyle” consumers : Converse Sneaker brand

6. Guiding Principles to make a Good Brand Able to be protected as a trademark The best brand for your business Easy to read, write and remember Acceptable in major overseas markets Able to be registered as domain name

7. Brand Sector 2006 Value ($m) Change in Brand Value 1. Coca-Cola Beverages 67,000 -1% 2. Microsoft Computer Software 56,926 -5% 3. IBM Computer Services 56,201 5% 4. GE Diversified 48,907 4% 5. Intel Computer Hardware 32,319 -9% 6. Nokia Telecom Equipment 30,131 14% 7. Toyota Automotive 27,941 12% 8. Disney Media/Entertainment 27,848 5% Best Global Brands (Best Global Brands 2006, Interbrand, www.interbrand.com)

8. 2. Trademarks

9. “A sign capable of distinguishing the goods or services produced or provided by one enterprise from those of other enterprises” What is a Trademark?

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

11. Trade mark to distinguish goods Service mark to distinguish services Collective mark to distinguish goods or services by members of an association Certification mark to distinguish goods or services certified by a certifying authority Well-known mark very famous in the market and as a result benefit from stronger protection Some Concepts of Trademarks

13. The Nike’s 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 brings our attention to Nike

14. What to avoid when selecting a trademark Generic: CHAIR to sell chairs Descriptive: SWEET to sell chocolates Deceptive: “ORWOOLA” for 100% synthetic material Marks contrary to public order/morality

15. Less Traditional Forms • Single colors • 3-D signs (shapes of products/packaging) • Audible signs (sounds) • Olfactory signs (smells)

16. Application: single color? • In principle, single color is considered as not distinctive • Exceptionally, if it gets secondary meaning it may receive TM protection *secondary meaning : acquired strong distinctiveness through use • However, colors are in limited supply … - allowing companies to appropriate colors will soon lead to the "depletion" of all attractive colors in each product line - preventing use of color would put competitors at a significant disadvantage • functionality test

17. Single color? • US Courts • Royal blue is a “cool color”. It is suggestive of coldness and used by a multitude of ice cream and frozen dessert producers • Royal blue when used to package frozen desserts is functional and can not be monopolized in a trademark Blue Frozen Desserts (Ambrit v. Kraft)

18. Application: 3D trademark? • Lego: Patent expired in 1988 - competitors (Tyko, Mega Bloks, COKO): identical "legos" that are interchangeable and compatible with Lego system • The Lego brand is all they have left … • Tried 3-dim Mark Canadian court + OHIM: No TM rights in purely functional elements of a product. If LEGO is unable to rely upon patent protection for those utilitarian features, then those features are available for all to use. ?

19. Ways to Use Trademarks as Business Assets • Marketing tool • Source of revenue through licensing • Crucial component of franchising agreements • May be useful for obtaining finance • Sale of TM itself

20. Registering a Trademark – Step by Step 1. Making a Mark & Trademark Search 2. Application 5. Registration & Renewal 3. Formality Check & Examination 4. Publication & Opposition

21. Scope of rights • Exclusive right to use the mark (and allow use) • Right to prevent others from using • an identical or similar mark for identical or similar goods or services • if well-known: also for goods or servicesof different kind

22. 3 Ways for International Application The Madrid Route The Regional Route The National Route - Application to the countries of Union or WIPO - One international application, in one language, subject to one set of fees and deadlines - Application to countries in the required language - Priority right of 6 months under Paris Convention - Application to regional trademark offices - The African Regional Industrial Property Office, OHIM for the EU, etc.

23. 3. Geographical Indications

24. What is a Geographical Indicaton? • Sign used on goods that have a specific geographical origin and possess qualities or a reputation that are due to that place of origin - Source identifiers - Indicators of quality

25. Tower Bridge, London Matterhorn, Switzerland Eiffel Tower, Paris • Mostly: name of place of origin • Country, region, city • E.g. Champagne (France) • Some countries: also figurative element • E.g. Eiffel tower, Egyptian pyramid

26. How does a GI work? • Basically, each enterprise located in the area has right to use GI freely For some products, • Subject to certain quality requirements, only authorized persons may use the GI • 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)

27. Unauthorized persons should not use GIs since it could mislead public as to true origin of the product • for not originating from geographical place, • for not complying with prescribed quality standards - Sanctions: • Court injunctions preventing unauthorized use • Payment of damages • Fines • Imprisonment

28. Typical examples: • 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

29. Typical examples: • 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

30. National legislation to protect Geographical Indications • Special system for protection • Registration with IP office (Russia, Slovenia) • Decree (France) • Special laws for the protection of GIs (India) • Certification marks or collective marks • Cert: e.g. in the U.S.A.: Darjeeling, Swiss, Stilton • Coll: e.g. Japan; agricultural label in France • Passing-off,UC, Consumer Protection • If reputation + misleading • Pass off: e.g. Scotch whisky – Peter Scot in India • Cons prot: e.g. ‘made in Japan’; Egyptian cotton

31. Protection on international level • No legally binding international register for all GIs • Bilateral agreements • e.g. EU-Bulgaria for wine names • International treaties

32. - 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

33. Benefits for SMEs • Collective branding and marketing • For good reputation, GIs shift focus of production to quality  increased production and 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

34. Won-Kil YOON yoon@wipo.int Tel)+41-22-338-8159 Fax)+41-22-338-8760 Thank You ! WIPO SMEs Web-Site “www.wipo.int/sme” “Making a Mark” in Publications “IP Panorama” in Multimedia “E-NEWSLETTER”