Signs and emotions:Signs and emotions:

A brief introduction to the A brief introduction to the role of TM in business role of TM in business

WIPO Summer School, The Role of IP for WIPO Summer School, The Role of IP for SMEsSMEsWashington, August 1 to 12, 2011Washington, August 1 to 12, 2011

Marco Marzano de Marinis, Program OfficerMarco Marzano de Marinis, Program OfficerSmall and MediumSmall and Medium--sized Enterprises Divisionsized Enterprises Division

World Intellectual Property OrganizationWorld Intellectual Property Organization

RoadmapRoadmap……

1) Business use of distinctive signs 1) Business use of distinctive signs

2) Trademarks: legal aspects2) Trademarks: legal aspects

3) TM protection: national, regional and 3) TM protection: national, regional and

international. international.

1) Business use of distinctive 1) Business use of distinctive signssigns

�� Communication tool: Communication tool:

---- Crucial for identify Crucial for identify

* technical aspects of products* technical aspects of products

* the qualities of products* the qualities of products

---- Brand plays a terrific role in the psychology of Brand plays a terrific role in the psychology of consumers for the choice of product and services: What consumers for the choice of product and services: What product to chose; why this product; what product to chose; why this product; what this product will add to my daily lifethis product will add to my daily life……. .

./.. ./.. Business use of distinctive Business use of distinctive signssigns

The TM allows to distinguish it own products to those of competiThe TM allows to distinguish it own products to those of competitorstors

The TM is a crucial tool in the enterprise The TM is a crucial tool in the enterprise marketingmarketing campaign; indeed campaign; indeed

through a fair marketing policy an enterprises: through a fair marketing policy an enterprises:

---- consolidate itsconsolidate its imageimageIt help in build an identity, image and reputation on the marketIt help in build an identity, image and reputation on the market

---- Improve the reputation of its own products and Improve the reputation of its own products and

strengthen the relationship with the clientsstrengthen the relationship with the clientsThe quality of the products, push clients to remain linked to thThe quality of the products, push clients to remain linked to the TM owner. e TM owner.

At the same time the trust of the clients, impose the producer tAt the same time the trust of the clients, impose the producer to keep an o keep an

high standard in products marked with it TMhigh standard in products marked with it TM

./.. ./.. Business use of distinctive Business use of distinctive signssigns

---- It improves the value of intangibles on the marketIt improves the value of intangibles on the marketA well exploited TM can become an important economic assetA well exploited TM can become an important economic asset

CocaCoca--cola: cola: 68.9 68.9 BlsBls USD USD MicrosoftMicrosoft : 65.1 : 65.1 BlsBls USD USD IBMIBM: 52.7 : 52.7 BlsBls USD USD

---- When Exploited in a dynamic way the TM can reward the owner When Exploited in a dynamic way the TM can reward the owner with high incomes with high incomes

---- An intangible asset, when adequately managed, can be crucial forAn intangible asset, when adequately managed, can be crucial forgetting support from private and public investors. getting support from private and public investors.

Marlboro1955

1956

1973

2) TM: 2) TM: LegalLegal aspectsaspects

Any Any distinctive signdistinctive sign (words, letters, (words, letters, numerals, drawings, pictures, shapes, numerals, drawings, pictures, shapes,

colors, logotypes, labels) or combinations of colors, logotypes, labels) or combinations of signs, that can be signs, that can be graphically graphically

representedrepresented, used to distinguish goods or , used to distinguish goods or services may be considered a trademarkservices may be considered a trademark

TrademarksTrademarks

IndividualIndividual TMTM V.V. Non Non

IndividualIndividual TMTM

ConventionalConventional TMTM Collective andCollective and

Certification TM, Certification TM,

GIsGIs

Non Non ConventionalConventional TMTM

Individual Individual

TMTM

./.. ./.. TrademarksTrademarks

./.. TMsTMs: : Elements composing a TMElements composing a TM

� Conventional TMs:A Word

A combination of words

Letter (acronym) or numbers

A Designs

The merger of words

and designs

International Business Machines

./.. ./.. TMsTMs: : Elements composing a TMElements composing a TM

�� Non Conventional TMsNon Conventional TMs::

Sounds (music, noises, Sounds (music, noises, jingle,etcjingle,etc....)....)

Colors Colors

TM triTM tri--dimensionalsdimensionals

Smells Smells

* * NokiaNokia, OHIM application N1040955. Signature tune of Nokia Corporation, OHIM application N1040955. Signature tune of Nokia Corporation

** ** Tarzan yellTarzan yell, OHIM application N. 000736827, OHIM application N. 000736827

Non Non

Individual Individual

TMTM

./.. ./.. TrademarksTrademarks

Collective TMCollective TM�� Marks used to distinguish goods or services produced or providedMarks used to distinguish goods or services produced or provided

by members of an association. by members of an association.

�� Aim: identifies products or services coming from a given Aim: identifies products or services coming from a given association association

�� CTM are used for testifying a standard level of quality or otherCTM are used for testifying a standard level of quality or otherelements established by the consortium running the collective TMelements established by the consortium running the collective TM

�� For using the Collective TM a business have to be member of the For using the Collective TM a business have to be member of the CTM consortium and respect the conditions of use imposed by CTM consortium and respect the conditions of use imposed by the consortium regulationthe consortium regulation

Certification TM Certification TM

�� Aim: Marks used to distinguish goods or services that comply witAim: Marks used to distinguish goods or services that comply with a set h a set of standards and have been certified by a certifying authority.of standards and have been certified by a certifying authority.

�� certifying products/services common features, especially qualitycertifying products/services common features, especially quality, , ingredients, processing methods. ingredients, processing methods.

�� Differently from the Collective TM, the use of Certification TM Differently from the Collective TM, the use of Certification TM do not do not require require SMEsSMEs to be member of an association/consortium. Enterprises to be member of an association/consortium. Enterprises dealing with the regulation can use it.dealing with the regulation can use it.

�� Certification TM can only be granted by a third entity, called Certification TM can only be granted by a third entity, called ““certifying certifying authorityauthority”” that certify that all production methods used by the company that certify that all production methods used by the company deal with the regulation. deal with the regulation.

�� The use of a certification TM impose the respect of a The use of a certification TM impose the respect of a ““user regulationuser regulation””, , explaining i.e.: the methods of production explaining i.e.: the methods of production

GeographicaGeographica IndicationsIndications

�� A A geographical indicationgeographical indication (GI) is a sign used on goods that have a specific (GI) is a sign used on goods that have a specific

geographical origin and possess qualities, reputation or charactgeographical origin and possess qualities, reputation or characteristics that eristics that

are essentially attributable to that origin.are essentially attributable to that origin.

�� GIs are protected in accordance with international treaties and GIs are protected in accordance with international treaties and national national

laws under a wide range of concepts, including laws specificallylaws under a wide range of concepts, including laws specifically for the for the

protection of GIs, trademark laws in the form of collective markprotection of GIs, trademark laws in the form of collective marks or s or

certification marks, laws against unfair competition, consumer pcertification marks, laws against unfair competition, consumer protection rotection

laws, or specific laws or decrees that recognize individual GIs.laws, or specific laws or decrees that recognize individual GIs.

�� Generally speaking, a GI identify in the name the origin of the Generally speaking, a GI identify in the name the origin of the labeled labeled

products; i.e. Prosciutto products; i.e. Prosciutto didi Parma; Champagne; Parma; Champagne; ParmigianoParmigiano

./.. ./.. GeographicaGeographica IndicationsIndications

�� The use of geographical indications is not limited to agriculturThe use of geographical indications is not limited to agricultural al products, Craft products, Touristic locations SPA.products, Craft products, Touristic locations SPA.

�� A geographical indication points to A geographical indication points to ““LINKLINK”” a specific place, or a specific place, or region of production, that determines the characteristic qualitiregion of production, that determines the characteristic qualities es (air, land, water,(air, land, water,……) of the product which originates from that ) of the product which originates from that place. place.

�� Geographical indications are understood by consumers to Geographical indications are understood by consumers to denote the origin and the quality of products. Many of them denote the origin and the quality of products. Many of them have acquired valuable reputations which, if not adequately have acquired valuable reputations which, if not adequately protected, may be misrepresented by dishonest commercial protected, may be misrepresented by dishonest commercial operators. operators.

GI v. GI v. TrademarksTrademarks

�� A A trademarktrademark is a sign used by an enterprise to distinguish its goods and is a sign used by an enterprise to distinguish its goods and services from those of other enterprises. It gives its owner theservices from those of other enterprises. It gives its owner the right to right to exclude others from using the trademark. A trademark will often exclude others from using the trademark. A trademark will often consist of a consist of a fanciful or arbitrary name or device. fanciful or arbitrary name or device.

�� A A geographical indicationgeographical indication tells consumers that a product is produced in a tells consumers that a product is produced in a certain place and has certain characteristics that are due to thcertain place and has certain characteristics that are due to that place of at place of production. It may be used by all producers who make their produproduction. It may be used by all producers who make their products in the cts in the place designated by a geographical indication and whose productsplace designated by a geographical indication and whose products share share specified qualities. specified qualities.

�� The Importance of combining GI with TMs: Champaign V. The Importance of combining GI with TMs: Champaign V. ParmigianoParmigiano

ChampaingChampaing is GI + TM is GI + TM

whilewhile

ParmigianoParmigiano isis mainlymainly a GIa GI

./.. ./.. TM that cannot constitute a TMTM that cannot constitute a TM::

* * Absolute ground for refusal:Absolute ground for refusal:–– 1) Signs lacking a distinctive character:1) Signs lacking a distinctive character:

�� Water, wine, chair, Water, wine, chair, coffecoffe, world, etc..., world, etc...

–– 2) Signs considered to be contrary to public order or morality.2) Signs considered to be contrary to public order or morality.

–– 3) Deceptive TM, Sign that can mislead consumers : 3) Deceptive TM, Sign that can mislead consumers :

�� Geographical origin of the productGeographical origin of the product

�� Product characteristics or ingredientsProduct characteristics or ingredients

–– 4) Flags, armorial bearings, official hallmarks and emblems of s4) Flags, armorial bearings, official hallmarks and emblems of states tates and international organizations: ONU, Governments, Ministries, eand international organizations: ONU, Governments, Ministries, etc.. tc..

* Relative ground for refusal* Relative ground for refusal–– 1) TM identical or similar to exiting TM, i.e.:1) TM identical or similar to exiting TM, i.e.: INTELL v. INTELLE; INTELL v. INTELLE;

NIKE v. NIKY.NIKE v. NIKY.

Selecting a good TM Selecting a good TM

�� Find a good TMFind a good TM

�� enough distinctiveenough distinctive

�� Easy to read, memorize and to be use in advertising campaigns Easy to read, memorize and to be use in advertising campaigns IBMIBM

�� Avoid negative meaning in the language of the country: Avoid negative meaning in the language of the country: Nova, Nova, PajeroPajero, ,

�� It is always better to check the existing TM, in order to avoid It is always better to check the existing TM, in order to avoid potential disputespotential disputes

�� check the possibility to register a check the possibility to register a DN DN that recall or is identical to your TMthat recall or is identical to your TM

�� Invented words: easy to protect and to be memorized (Invented words: easy to protect and to be memorized (kodakkodak))

�� Remember to protect all aspect of your TM Remember to protect all aspect of your TM �� Word Word

�� Shape threeShape three--dimensional dimensional

�� LogoLogo

�� Color(sColor(s))

�� packagingpackaging

�� soundsound

�� smell, (where possible)smell, (where possible)

Protecting TM in the appropriate market Protecting TM in the appropriate market

�� Select a given market Select a given market –– National routeNational route

–– Regional routeRegional route

�� OAPI (OAPI (OrganisationOrganisation AfricaineAfricaine de la de la PropriPropriééttéé IntellectuelleIntellectuelle) )

�� ARIPO (ARIPO (OrganisationOrganisation RRéégionalgional AfricaineAfricaine de la de la PropriPropriééttéé industrielleindustrielle) )

�� OHMI (Office de lOHMI (Office de l ’’HarmonisationHarmonisation du Marchdu Marchéé IntIntéérieurrieur))

�� BBM (Bureau BBM (Bureau BBéénnééluxlux des Marques)des Marques)

–– International route, Madrid systemInternational route, Madrid system

�� Check the MarketCheck the Market�� Licensing or Franchising contract: you should verify that the liLicensing or Franchising contract: you should verify that the licensee or the censee or the

franchisee respect the contract obligation franchisee respect the contract obligation

�� Enforce your right in the case of abusive use by third people. Enforce your right in the case of abusive use by third people.

3) 3) TM protection: national, regional and TM protection: national, regional and

international. international.

Few Few StrategiesStrategies for for ProtectingProtecting YourYour TM on an TM on an

International International ScaleScale

�� National RouteNational Route

..

�� RegionalRegional RouteRoute

�� InternacionalInternacional Route, Madrid systemRoute, Madrid systemRegional IP Office

Nat. Office

Nat. Office

Nat. Office

International

Phase

TM

National IP Office

Regional

Office

�� 1 system two treaties :1 system two treaties :

---- Madrid Agreement (1891)Madrid Agreement (1891)

---- Madrid Protocol (1989)Madrid Protocol (1989)

�� The main advantage of the Madrid system is of granting the regisThe main advantage of the Madrid system is of granting the registration tration of TMs in about 80 member countries of TMs in about 80 member countries

–– By using 1 unique procedureBy using 1 unique procedure

–– 1 unique administrative file management 1 unique administrative file management

–– 1 language (EN, FR, ES)1 language (EN, FR, ES)

�� More than 135.000 users; 412,000 international registration in fMore than 135.000 users; 412,000 international registration in force = orce = 4,800,000 National TMs4,800,000 National TMs

�� Extremely useful for Extremely useful for SMEsSMEs since costs are reduced of 10/20 times since costs are reduced of 10/20 times

Madrid System

Madrid System

Madrid SystemMadrid System

./.. The Madrid System

(data 2008: about 80 members))

Arrangement 11Protocole 21

Arrangement and Protocole 45Madrid System

27

42

11

21

45

5

4

June 1989 Apr-96 Oct-04

Agreement & Protocol

Protocol

Agreement

./.. Madrid System ./.. Madrid System

Madrid Agreement (1891)Madrid Agreement (1891)

Madrid Protocol (1989)Madrid Protocol (1989)

27

51

77

Madrid System

The Madrid system and its functioning The Madrid system and its functioning

Main AspectsMain Aspects

�� 1 application,1 application,

�� 1 language (FR, EN, ES),1 language (FR, EN, ES),

�� 1 set of fees, 1 set of fees,

�� Lodged by a natural or legal entity, having an:Lodged by a natural or legal entity, having an:

�� business establishment business establishment

�� domicile domicile

�� nationalitynationality

�� 1 unique system of management: 1 unique system of management:

�� National Office, National Office,

�� Formal examination, Formal examination,

�� registration, registration,

�� notification and publication, notification and publication,

�� Possible refusal by contracting partiesPossible refusal by contracting parties

Madrid System

Madrid System

./.. Madrid system ./.. Madrid system costscosts simulation simulation

Filing Application in JP, USA, FR,

CH, EC*Filing Application in EC only*

Filing Application in JP, USA, FR,

CH, EC, AU, SG, MZ, EG, KE;

SD, CN UK*

8,463

6,894

9,390

5,017

3,508

6,388

0

1,000

2,000

3,000

4,000

5,000

6,000

7,000

8,000

9,000

10,000

Fees to be paid i Swiss Franc

International Route

National Route

Filing Application in JP, USA,

FR, CH, EC*Filing Application in EC only*

Filing Application in JP, USA,

FR, CH, EC, AU, SG, MZ,

EG, KE; SD, CN UK*

International Route

National Route

11,663

24,494

19,790

5,017

3,508

6,388

0

5,000

10,000

15,000

20,000

25,000

International Route

National Route

Madrid System data 2003

Madrid System’s Main users

France3

281=15.0%

Germany4 999=22.9%

Other Countries in transition1484=6.8%

Other DevelopingCountries197=0.9%

Czech Republic355=1.6%Italy

1 806=8.3%

United Kingdom599=2.7%

Benelux2 104=9.6%

Denmark347=1.6%

Other Countries1303=6.0%

Sweden355=1.6%

Austria723=3.3%

Switzerland2

204=10.1%

Spain914=4.2%

Turkey408=1.9%

China413=1.9%

Russian Federation355=1.6%M

adrid System data 200

3

OwnersOwners ⇒

1-2 marks32%

11-100 marks27% 3-10 marks

25%

101-500 marks11%

> 500 marks5%

Registrations more

than (400,000) ⇒

Registration by ownersRegistration by owners’’ categoriescategories

TM grouped by owners

1-2 marks3-10 marks11-100 marks101-500 marks> 500 marks

Total

80.00%

16.33%

3.47%

0.19%

0.01%

100.00%

10490021408455524518

131126

N. Of Owners

ThanksThanks!!

OMPI, OMPI, PMEsPMEs websitewebsite: : www.wipo.int/smewww.wipo.int/sme

marco.marzano@wipo.intmarco.marzano@wipo.int

NegativeNegative MeaningMeaning

Mitsubishi Mitsubishi PajeroPajero, a car for real men!!!, a car for real men!!!

Good food for good dogsGood food for good dogs

Taste beerTaste beer

It is all about cleaning!It is all about cleaning!

Efficiency has a priceEfficiency has a price

Volkswagen Volkswagen JettaJetta, Nova car , Nova car

Domain Names Domain Names

what is and what for...?what is and what for...?

WWW.WIPO.INTWWW.WIPO.INT

www.wipo.intwww.wipo.int ══ 192.0.32.65192.0.32.65

URL URL UniversalUniversal ResourceResource LocatorLocator

ICANN: Internet ICANN: Internet CorporationCorporation forfor AssignedAssigned NamesNames

and and NumbersNumbers

�� WWW. The InternetWWW. The Internet

�� WIPO. WIPO. SecondSecond Top Top

level domainlevel domain

�� SuffixSuffix (.com, (.com, .it.it, , IntInt, , .eu.eu, , .uk.uk, , etcetc……

Domain Names Domain Names

what is and what for...?what is and what for...?

�� What kind of Suffix:What kind of Suffix:

GenericGeneric gTLDgTLD

GeograficoGeografico

ccTLDccTLD

Domain Names Domain Names

what is and what for...?what is and what for...?