Unleashing the Power of Branding through Trademarks - Grape5

1. Unleashing the Power of Branding through
Trademarks

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

3. What is Branding..?
• 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.
• 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 the essence 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.

4. SUCCESSFUL BRANDING
Attracts / catches the consumers
• 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

5. TRADEMARKS
ARE FOR EVER

6. 10 Points about Trademarks
• Product or service Image (Identity)
• Distinguish goods or services among others
• Play a pivotal role in the branding/marketing Strategy
• Can be extended to any country
• Defines a certain image - builds a reputation
• Is a marketing tool - enabling licensing & franchising
• Is a valuable IP business asset
• Encourage companies to invest, maintain and improve product quality
• Once protected, are useful for obtaining financing
• Can be put in the stock exchange

7. What is a Trademark?
A Brand name - 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:

8. 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)

9. 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
• Source of revenue through licensing
• Crucial component of franchising agreements
• Useful for obtaining banks or third part finance
• A valuable business asset

10. The Values of Trademark
• Google - $44.3 billion
• Microsoft - $42.8 billion
• Walmart - $36.2 billion
• IBM - $36.2 billion
• Vodafone - $30.7 billion
• Bank of America - $30.6 billion
• GE - $30.5 billion
• Apple - $29.5 billion
• Wells Fargo - $28.9 billion
• AT&T - $28.9 billion
Source: forbes.com

11. Trademark protection [Registration ]
• 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
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 and morality
• Avoid using flags, armorial bearings, official hallmarks, emblems without legal authorization

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

13. Protecting a TM through registration
• 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
o WIPO offers free assistance, information & guidelines
o Filing application form, contact details, graphic illustration of mark, description of goods, fees
o Registration certificate valid for 10 years
o Renewal & Publication (CD-Rooms /Gazette)
• The IP national office is the only authority in charge of :
o Formal examination
o Substantive examination
o Publication and opposition

14. Protecting a TM through registration
• 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.
• 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.

15. 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 form using an identical or similar mark for dissimilar 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 - free at wipo
• A trademark agent may be required
• Protecting at home and abroad
• Renewing your registration & paying fees

16. Protecting at Home & Abroad
• THE NATIONAL ROUTE
o Each country where you seek protection
• THE REGIONAL ROUTE (for some countries only)
o 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
o The Protocol & Madrid system administered by WIPO
o 78 member countries

17. Using a Trademark in advertising
• Use Exactly As Registered
• Protect Tm From Becoming Generic
o Set Apart From Surrounding Text
o Specify Font, Size, Placement And Colors
o Use As An Adjective Not As Noun Or Verb
o Not Plural, Possessive Or Abbreviated Form
o 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)

18. Using A Trademark As A Business Asset
• 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)
Enforcing TM
• 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)

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