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LAUNCHING NEW PRODUCTS IN THE MARKET Unleashing the Power of Branding through Trademarks (updated 2006)

LAUNCHING NEW PRODUCTS IN THE MARKET Unleashing the Power of Branding through Trademarks (updated 2006). Caroline Schwab - Program officer Small and Medium-Sized Enterprises Division WIPO - World Intellectual Property Organization.

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LAUNCHING NEW PRODUCTS IN THE MARKET Unleashing the Power of Branding through Trademarks (updated 2006)

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  1. LAUNCHING NEW PRODUCTS IN THE MARKETUnleashing the Power of Branding through Trademarks (updated 2006) Caroline Schwab - Program officer Small and Medium-Sized Enterprises Division WIPO - World Intellectual Property Organization

  2. Branding and trademarks are keys to success in business and in the global market

  3. YESTERDAY’S OPERATION: - Technology Brands - E-mails Campaigns - PR in place of advertising - Viral Marketing TODAY: - Lifestyle Brand - Authenticity Marketing - Product Placement - Viral Marketing - Brand Culture

  4. Branding-- is the process by which the name or the identify of an owner, a company/enterprise or organization, 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 create customer loyalty. This way, a company takes a position in the marketplace. What is Branding

  5. A way by which companies launch and sell goods & services. A brand name is sometimes made of a part or the totality of a trademark name It communicates theessence of a products or its line, including why it is great and how it is better than all competing products. It reflects in general a prestigious (aesthetic) image in order to attract more consumers. What is Branding

  6. Developing a brand is part 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 Communicate constant innovating brand image at all levels of operation SUCCESSFUL BRANDINGAttracts / catches the consumers

  7. THE PINK PANTHER IS A WORLDWIDE PROTECTED CHARACTER USED AS A MARK, AS A COPYRIGHT & AS AN INDUSTRIAL DESIGN.

  8. TRADEMARKSARE FOR EVER

  9. 10 Points about TRADEMARKS

  10. Before launching a trademark - key to success is CLEARANCE 10 POINTS ABOUT TRADEMARKS1. Product or service Image (Identity)2. Distinguish goods or services among others3. Play a pivotal role in the branding/marketing Strategy 4. Can be extended to any country5. Defines a certain image - builds a reputation6. Is a marketing tool - enabling licensing & franchising7. Is a valuable IP business asset8. Encourage companies to invest, maintain and improve product quality9. Once protected, are useful for obtaining financing10. Can be put in the stock exchange

  11. A BRAND NAME - A KIND OF VISIT CARDTHAT 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)”. What is a Trademark?

  12. Examples: A TRADEMARK IS MADE OF :Any Distinctive Words, Letters, Numerals, Pictures, Shapes, Colors, Logotypes, Labels

  13. Single colors (Louis Vuitton) Three-dimensional signs (shapes of products or packaging) Audible signs (sounds) Olfactory signs (perfume) Less traditional forms

  14. 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) Types of Trademarks?

  15. 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 function of a Trademark

  16. A MARKETING TOOL SOURCE OF REVENUE THROUGH LICENSING CRUCIAL COMPONENT OF FRANCHISING AGREEMENTS USEFUL FOR OBTAINING BANKS OR THIRD PART FINANCE A VALUABLE BUSINESS ASSET THE VALUE OF A TRADEMARK?

  17. 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) The Value of Trademarks

  18. 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 FOR LICENSE OR BASIS FRANCHISING AGREEMENTS Trademark protection > Registration =

  19. Creating/selecting a trademark after CLEARANCE - searching worldwide that there is not a similar one yet legally protected Avoid IP offices’ refusals or oppositions Protecting a trademark through national, regional and WIPO registration system (Madrid & Protocol) Using and maintaining a trademark (paying fees, following notification of refusals, extending territory) Enforcing a trademark by Innovating (new products) PRACTICAL ASPECTS

  20. Generic terms: CHAIR to sell chairs Descriptive terms: SWEET to sell chocolates Deceptive terms: “ORWOOLA” for 100% synthetic material MARKS CONTRARY TO PUBLIC ORDER and MORALITY AVOID USING FLAGS, ARMORIAL BEARINGS, OFFICIAL HALLMARKS, EMBLEMS WITHOUT LEGAL AUTHORIZATION What to avoid when selecting a Trademark

  21. Inherently distinctive Coined or fanciful words: “Kodak” Arbitrary marks: “apple” for computers Suggestive marks: SUNNY for heaters Easy to memorize and pronounce Fits product or image of the business Has no legal restrictions Reasons for rejection TM search>not identical or confusingly similar to existing TM Has a positive connotation Suitable for export markets Corresponding domain name available What to Remember when selecting Trademark?

  22. The applicant can file a request through his national office Right after filing through the IP Office, a trademark can be filed at WIPO (Madrid & Protocol) - saving time and money WIPO offers free assistance, information & guidelines Filing application form, contact details, graphic illustration of mark, description of goods, fees Registration certificate valid for 10 years Renewal & Publication (CD-Rooms /Gazette) The IP national office is the only authority in charge of : Formal examination Substantive examination Publication and opposition Protecting a TM through registration

  23. Madrid System for the International Registration of Marks The Madrid system for the international registration of marks (the Madrid system) established in 1891 functions under the Madrid Agreement (1891), and the Madrid Protocol (1989) are administered by the International Bureau of WIPO located in Geneva, Switzerland. This system for an international protection of Trademarks and Brands is adopted by more than 70 member states of WIPO, members of the « MADRID UNION »

  24. Madrid System for the International Registration of Marks The Madrid and the Protocol system offers the possibility to record a trademark in 78 countries at once. However, owners has to go through their own national office to present their request to WIPO WIPO HAS MADE POSSIBLE A FREE SEARCH ON-LINE OF “ROMARIN” – INFORMATION ON TRADEMARKS RECORDED AT WIPO. http://www.wipo.int/madrid/en/services/ MANY REGISTRIES FOR SEARCH ARE AVAILABLE IN THE PRIVATE SECTOR OR VIA THE IP OFFICES, COUNTRY BY COUNTRY.

  25. 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. Some TM offices such as in US and Canada require the proof that the TM is used within a year. Protecting a TM through registration

  26. A substantive examination may be required if there is a conflict with an existing Mark on the register. Some countries publish the TM in a journal allowing 3rd parties to oppose during a given period. Once it is decided that there is no grounds for refusal, a certificate is issued which is valid for 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. Protecting a TM through registration

  27. 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 SCOPE OF RIGHTS

  28. THE TIME IT TAKES TO REGISTER A TM THE COSTS ASSOCIATED WITH TM PROTECTION THE NEED FOR A TRADEMARK SEARCH - FREE AT WIPO A TRADEMARK AGENT MAY BE REQUIRED PROTECTING AT HOME AND ABROAD RENEWING YOUR REGISTRATION& PAYING FEES KEEP IN MIND

  29. 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; ASEAN IPO; Benelux TM office; Office for Harmonization of the Internal Market of the EU; Organisation Africaine de la Propriété Intellectuelle THE INTERNATIONAL ROUTE UK JOINED THE MADRID PROTOCOLE IN DECEMBER 2005 - ISRAEL MAY JOIN VERY SOON The Protocol & Madrid system administered by WIPO 78 member countries PROTECTING AT HOME AND ABROAD

  30. 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 USING A TRADEMARK

  31. 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 ACTIVELY USING A TRADEMARK

  32. USE 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 TRADEMARK IN ADVERTISING

  33. 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 TM ON THE INTERNET

  34. 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, S/W, SHOP DECORATION. ETC) SELLING/ASSIGNING TM TO ANOTHER COMPANY(MERGER & ACQUISITIONS/RAISING OF CASH) USING A TRADEMARK AS A BUSINESS ASSET

  35. RESPONSIBILITY OF TM OWNER TO IDENTIFY INFRINGEMENT AND DECIDE ON MEASURES “ CEASE AND DESIST LETTER” TO ALLEGED INFRINGER WIPO ENFORCEMENT PROGRAMS - COOPERATION WITH CUSTOMS AUTHORITIES TO PREVENT COUNTERFEIT TRADEMARK GOODS ARBITRATION AND MEDIATION (PRESERVE BUSINESS RELATIONS) ENFORCING TRADEMARKS

  36. SMES GUIDE FOR TRADEMARKS

  37. THANK YOU FOR YOUR ATTENTION (end of part I) www.wipo.int/sme/en SUSCRIBE TO OUR NEWSLETTER ON-LINE sme@wipo.int

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