Beyond Getting Noticed: Branding, Trademarks, and Business Strategy

1. WIPO Workshop on Intellectual Property for Business for Small and Medium-Sized Enterprises (SMEs)Dar-es-Salaam, May 10 and 11, 2005 « Beyond Getting Noticed: Branding, Trademarks and Business Strategy » By Atangcho N. Akonumbo May 10, 2005

2. Introduction • What is an SME? • The role of SMEs in a modern economy • Significance of the IP system for SMEs • Unawareness of the IP system? • Focus of the presentation

3. Preliminary Issues Nature of a Brand/Trademark • Situating brands/trademarks in the IP arena • Conceptual clarification: overlapping terms • Definition of brand or trade mark: A sign or any combination of sign capable of distinguishing a product or service from others on the market. • Scope • duration

4. Foundational Strategy considerations • Choosing the appropriate IP regime *An SME should be able to select and choose the most suitable IP regime(s) under which it intends to seek protection for its products. For example, for products with a longer development and production cycle and higher research and development costs, a patent is usually more suitable since that would ensure a much longer period of exclusivity (twenty years or more) within which to the cost of the investment could be recuperated.

5. Foundational Strategy considerations (Cont’d) • NB: The operationality of IPRs may depend on and stand in the face of the IPRs of other producers or inventors or other non IPRs of others. (Examples) • Justification?

6. Foundational Strategy considerations (Cont’d) • Territoriality of trademarks : In addition to fulfilling the registration requirements under the relevant system where protection is sought, trademarks (as other regimes of IP) are territorial (national) only and at best regional. • A search (trademark search) must be conductedbefore submission of an application to register a trademark. The purpose of this important measure, is to ascertain that the trade mark whose registration is sought does not already in exist . Why? Case study: Société Paco Rabanne v. Mahmoud El Gandour.

7. Business Strategies • What is a business strategy? • Some strategies for SMEs (applicable to all IPR regimes) - consider how to identify, protect, highlight and manage IP assets - integrate in business planning how to derive maximum benefits from commercialization of IP the asset - depending on targeted market, consider fling system - how to value IP assets in business accounts andin pricing policy.

8. Importance of trademarks in business strategy • The upshot of registration - identification - proof of ownership or prior existence in the event of dispute relating to counterfeiting or confusion created by a contested mark - tool of trustworthiness - deterrent • Trademark is used to identify a product

9. Importance (Cont’d) • Trademark is used to identify a product or service; a certain quality and image in it. In other words, trademark is a sign off consistency of the quality of a product • Trademark is used to differentiate products in the interest of consumers. • Trademark can be used to build confidence in the brand of the products. • Trademark can be used to build confidence in the brand of the goods or services.

10. Importance (Cont’d) • The concept of collective trademarks mentioned earlier, can be used, for example, by SMEs in OAPI region in their business strategy in two respects - cost effective management of registrations - lessen inferiority complex. • IP may assist an SME in almost every aspect of its business development and competitive strategy: from product development to product design, from service delivery to marketing, and from raising financial resources to exporting or expanding your business abroad through licensing

11. Importance (Cont’d) • Trademark is an asset that may be commercialized bySMEs whether as owner or as to improve turn out, efficiency, competitiveness through access to new markets and investment, through licensing or franchising. • Business entities generally should be able to appreciate the relevance of IP assets whether actually owned or licensed. Certainly IPRs create an atmosphere of business competition and increase the face value of an SME

12. Pitfall(s) of Strategies • Why considered in business strategy? • In trying to get a foothold on the marketcrowded with an impressionable number of competitive goods and services carrying well known marks, SMEs should avoid being tempted to formulate overzealous and counterproductive policies that would serve as a drop-back to their efforts and dampen down their reputation • Effects

13. Infringement of trademarks • Why considered in business strategy?. • Status of the right allegedly infringed • Scope of infringement. • Who can infringe?

14. Enforcement of Rights/Remedies • Raison d’être of enforcement: prevent “free ridding” on the protected good. • Enforcement means: • Non-judicial: Arbitration, mediation, warning letter (or cease and desist letter), negotiation of a license etc. • Judicial means:Court action, civil or criminal. Civil action for damages (in tort for passing-off in common law systems) and/or an injunction.

15. Conclusion • Concluding remarks • Discussion & questions/clarifications

16. END Thank You