ORIENTATION PROGRAM ON INTELLECTUAL PROPERTY FOR MANAGEMENT STUDENTS OF INDIAN INSTITUTE OF MANAGEMENT (IIPM) Geneva,

1. ORIENTATION PROGRAM ON INTELLECTUAL PROPERTY FOR MANAGEMENT STUDENTS OF INDIAN INSTITUTE OF MANAGEMENT (IIPM)Geneva, Switzerland, 2006 The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

2. Marketing and Branding Strategies:The Role of Trademarks and Geographical Indications Lien Koglin Verbauwhede Consultant,SMEs Division World Intellectual Property Organization (WIPO) The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

3. 1. Marketing and Branding The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

4. Branding matters “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.” Kevin Lane Keller, Tuck School of Business The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

5. Concept of Branding • A company image as seen by the customer • Good branding = getting people to recognize you first • Having an effective logo with which customers can identify you • A brand is what differentiates you from your competitors • Good advertising and how it attracts customers • A compelling customer experience The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

6. 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, logo, name recognition, customer service, internal training, team work, investment The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

7. Purpose of Branding • Gives a business a significant edge over the competition • Have the customer view a business as the only solution to their problem • A strong brand engenders feelings of trust, reliability, loyalty, empathy, responsiveness and recognition in the customer’s mind The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

8. The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

9. 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 The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

10. The “Swoosh” The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

11. Trademarks • Industrial Designs • Geographical Indications 3 IP Rights crucial to successful branding The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

12. 2. Trademarks The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

13. “A sign capable of distinguishing the goods or services produced or provided by one enterprise from those of other enterprises”Slovenia: “Sign, capable of distinguishing goods and services in the course of trade” What is a Trademark? The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

14. A distinctive sign: Identifies certaingoods/services as those produced or provided by a specific personor enterprise • Exclusive rights: To prevent others from using identical or similar marks on identical or similar goods • Renewableindefinitely ! • Registrationis required in most countries (exception: well-known trademarks) The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

15. Any Distinctive Words, Letters, Numerals, Pictures, Shapes, Colors, Logotypes, Labels or Combinations The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

16. Less Traditional Forms • Single colors • Three-dimensional signs (shapes of products or packaging) • Audible signs (sounds) • Olfactory signs (smells) The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

17. Types of Trademarks • Trade marks: to distinguish goods • Service marks: to distinguish services • Collective marks: to distinguish goods or services by members of an association (art 23) • Certification marks • Well-known marks: benefit from stronger protection(art 22) • Tradename vs Trademark(art 21) The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

18. The Value of Trademarks • A marketing tool • Source of revenue through licensing • Crucial component of franchising agreements • May be useful for obtaining finance • A valuable business asset The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

19. Practical aspects • Selecting a trademark • Protecting a trademark through registration • Using and maintaining a trademark • Enforcing a trademark The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

20. What to avoid when selecting a trademark Generic terms: CHAIR to sell chairs Descriptive terms: SWEET to sell chocolates Deceptive terms: “ORWOOLA” for 100% synthetic material Marks contrary to public order/morality Flags, armorial bearings, official hallmarks, emblems Negotiating a permission is however possible The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

21. The Napapijri’s case • Italian skiwear and sportswear company • Napapijri means Artic Polar Circle in Finnish Language. Napapijri is also the name of a small village located on the Polar Circle. • The Norwegian flag appears on many of the garments as a tribute to the Norwegian explorers that first traveled to Polar Regions by foot and by dog sled over 100 years ago. • Permission to use the Norwegian flag as a Napapijri logo was happily granted by the King of Norway, Harald the 5th. The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

22. Napapijri The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

23. Things to remember in selecting a trademark • 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 (Pajero) • Suitable for export markets • Corresponding domain name available The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

24. 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 The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

25. 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 (pr. of speciality) • if well known: also for goods or servicesof a different kind The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

26. 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 Keep in mind The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

27. 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; OHIM; Organisation Africaine de la Propriété Intellectuelle • The international route • The Madrid System administered by WIPO (78 member countries) The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

28. Using a trademark • in marketing and advertising • on business papers • on the internet • as a business asset • affixing the mark to the goods or their packaging • importing or exporting the goods under the mark The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

29. IP and Marketing • Collective marks • Certification marks • GIs Trademarks Individual marketing Joint marketing The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

30. 3. Collective Trademarks The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

31. 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 The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

32. How does a collective mark work? • Regulation of use (art 24 Slov Law) • 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 The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

33. Thus, function of collective mark is to INFORM the customers : • About the origin of the products • e.g. ceramic artisan, member of a specific association in Llublijana • About a level of quality or accuracy, geographical origin, or other features set by the association The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

34. Benefits for SMEs 1.Economies of scale(registration cost, advertising campaign, enforcement, etc.) 2.Reputationacquired 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 The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

35. 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  no licenses The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

36. Example: “Interflora” • 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 The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

37. 4. Certification Marks The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

38. 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 The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

39. 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 The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

40. Benefits for SMEs • Guarantee for consumers of certain quality • Benefit from the confidence that consumers place in users of certification mark • Strengthen reputation The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

41. For example, certify that:  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 The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

42. Example: “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 The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

43. “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 is was produced  also protects against counterfeit labels The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

44. 5. Geographical Indications The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

45. What is a GI? • 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 The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

46. Tower Bridge, London Matterhorn, Switzerland Eiffel Tower, Paris • In some countries : can also be figurative element • E.g. Eiffel tower, Egyptian pyramid • E.g. birds, animals associated with a place • Most commonly, consists of the name of the place of origin of the goods • Country, region, city • E.g. Champagne (France), Nuoc Mam (Vietnam) The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

47. How does a GI work? • 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 • 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) The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

48. Unauthorized persons may not use GIs if such use is likely to mislead the public as to the 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 The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

49. 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 The Small and Medium-Sized Enterprises (SMEs) Division of WIPO

50. 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 The Small and Medium-Sized Enterprises (SMEs) Division of WIPO