Branding and

Trademarks
(updated 2006)

Caroline Schwab - Program officer

Small and Medium-Sized Enterprises Division
WIPO - World Intellectual Property Organization
 Branding and
trademarks are keys to
success in business and
in the global market
 What is Branding

• Branding -- is the process by which the name or the identity of a

company, an enterprise, an organization (etc.) 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 take a position in the marketplace and
create customer loyalty.
• It is the way by which companies launch and sell goods & services,
communicating the essence of new products and lines, highlighting
why it is great and better than all competing products.

• It reflects in general a prestigious (aesthetic) image in order to

attract more consumers.
 Successful Branding
CATCHES THE CONSUMER’S CURIOSITY

• DEVELOPING A BRAND IS PART OF A 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 consumers and quite

differentiated from competitors

• Sell the brand outside (but also think about motivating your partners &
your employees in the development of your brand).

• Keep the brand flexible, create multiple variations and names for your
products, imagine in advance a rich collection of packaging
 C1 -
corporate
identity for
industrial
companies
OmegaTech,
paintwork material
production
Anton Smirnov
(Russia)
 F&C
TECHNOLOGY,
make-up
cosmetics
produced by
ICOM (Russia)
 Sample of branding -
corporate identity for
retail (supermarkets,
shops, boutiques, bars
and restaurants
(Maraschino, Bar's name refers to a
authentic liqueur which has been produced
in Zadar area (Croatia) for decades
Studio Cuculic (Croatia)
Froggy,
computer
production
and repair
Zebra
design
branding
(Russia)
1961 Coca Cola original vintage
advertisement.

Features a Valentine's Day

 What is a Trademark?

• A BRAND NAME - A KIND OF VISIT CARD THAT

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)”.
 A TRADEMARK IS MADE OF :

Any Distinctive Words, Letters, Numerals,

Pictures, Shapes, Colors, Logotypes, Labels

• Examples:
 Less traditional forms

• Single colors (Louis Vuitton)

• Three-dimensional signs
• (shapes of products
• or packaging)

• Audible signs (sounds)

• Olfactory signs (smells)

 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
• Certification marks

• Well-known marks: benefit from stronger protection

• Tradename (Brand name) (*)
 The function of a Trademark

• 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 value of a Trademark?

• A marketing tool

• A source of revenue through licensing

• A crucial component of franchising agreements

• Useful for obtaining banks or third part finance

• A valuable business asset

 The Value of Trademarks

• 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)
 Trademark protection >
Registration =

• Exclusive rights prevent others from marketing products under

same or confusingly similar mark

• Secures investment in marketing efforts

• Promotes customer loyalty/ reputation / image of company

• Provides coverage in relevant markets where business operates

• Registered marks permit license or basis franchising agreements

 PRACTICAL ASPECTS

• Create or buy a trademark (after searching worldwide

to find out that there are no similar registered ones -
avoid claims- refusals or oppositions

• Protect your trademark through your national or

regional office and then extend it to the world (WIPO
Madrid & Protocol System)

• Use and maintain your trademark(s) (paying fees,

following notification of refusals, extending territory)

• Enforce your trademark(s), innovate (develop new

products)
 What to avoid when selecting
a Trademark
• Generic terms: CHAIR to sell chairs

• Descriptive terms: SWEET to sell chocolates

• Deceptive terms: “ORWOOLA” or “Pure whool”

for 100% synthetic material

• Marks and terms contrary to public order/morality

• Do not use flags, armorial bearings, official

hallmarks, emblems without a legal authorization
 What to Remember when
selecting Trademark?
• Create inherently distinctive mark
• Think about fanciful names as: “Kodak”
– Arbitrary marks and logos as: “apple” for computers
– Suggestive marks as : SUNNY for heaters

• A mark easy to memorize and pronounce, with a positive

connotation and that fits product or image of the business

• Has no legal restrictions or reasons for rejection

– TM search>not identical or confusingly similar to existing
• Suitable for export markets with a corresponding domain name
which is not already used
 Protecting a TM
through registration
• The applicant can file a request at his national office and then at
WIPO which offers free assistance, information & guidelines for:
– Filing application forms, contact details, fees
– Registration and certificate valid for 10 years
– Renewal services & publication (CD-ROMs /Gazette)

• The IP national office is the only authority in charge of :

– Formal examination
– Substantive examination
– Publication and opposition
 Madrid System for the
International Registration of Marks

The Madrid system for the international registration

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

The Madrid and the Protocol system offers the possibility

to record a trademark in more than 70 countries at once
WIPO has made possible a free search on-line of all the
trademarks recorded at wipo under “Madrid Express”
http://www.wipo.int/madrid/en/services/
MANY REGISTRIES FOR SEARCH ARE
AVAILABLE IN THE PRIVATE SECTOR OR VIA
THE IP OFFICE, COUNTRY BY COUNTRY.
 Protecting a TM
through registration
• While filling in a TM application, 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 - a total of 45 classes of goods and services).
• Some TM offices such as in US and Canada require the proof that the TM is
used.
• A substantive examination may be required to avoid conflict with an existing
and similar Mark, previously registered.

• Some countries publish the TM in a journal allowing 3rd parties to make an

opposition (during a certain period of time).

• Once it is decided that there are no grounds for refusal, a certificate is issued
with a validity of 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.
•
 Scope of Rights

• 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 from using an identical or similar

mark for new goods or services
 KEEP IN MIND

• 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

 PROTECTING AT HOME
AND ABROAD
• 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; Benelux TM
office; Office for Harmonization of the Internal Market of
the EU; Organisation Africaine de la Propriété Intellectuelle

• The international route

– The Protocol & Madrid system administered by WIPO
(over 70 member countries)
 USING A TRADEMARK

• 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

 ACTIVELY USING A
TRADEMARK

• 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

 USING A TRADEMARK IN
ADVERTISING
• Shall be used 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 TM ON THE
INTERNET

• 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 TRADEMARK AS
A BUSINESS ASSET

• Licensing: owner retains ownership and agrees to the use of the

TM by other companies in exchange of 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)
 ENFORCING
TRADEMARKS

• Responsibility of TM owner to identify infringement

and decide on measures

• “ Cease and desist letter” to alleged infringer (s)

• Search and seize order

• Cooperation with customs authorities to prevent counterfeit

trademark goods

• Arbitration and mediation (preserve business relations)

SMES GUIDE FOR
TRADEMARKS
 THANK YOU FOR YOUR
ATTENTION
Caroline Schwab - Program Officer
SMEs Division

www.wipo.int/sme/en
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