Vivien Irish, WIPO and TPI, Istanbul January 2005 Marketing and Branding Strategies ( Trade Marks...

Vivien Irish, WIPO and TPI, Istanbul January 2005

Marketing and Branding Strategies

(Trade Marks and Designs)

Vivien Irish

Consultant Patent Attorney

Vivien Irish, WIPO and TPI, Istanbul January 2005

Very early “trademarks”

Egypt: Ramses II cartouche on a sun-dried mud and straw brick. Dynasty 19, 1279 – 1212 BC

China: Ming bowl C. 1600 AD

China: Shang dynasty mark, C1600 BC

Vivien Irish, WIPO and TPI, Istanbul January 2005

Later trademarks

Edouard Manet: Un Bar au Folies Bergere, 1882

Vivien Irish, WIPO and TPI, Istanbul January 2005

Turkish Trade Mark Act 1995 andCommunity Trade Mark Act

A Trade Mark means any sign which can be represented graphically and which is capable of distinguishing goods or services of one undertaking from those of other undertakings

Vivien Irish, WIPO and TPI, Istanbul January 2005

“Any sign capable of distinguishing…”

Eg: Invented word “Xerox” for photocopiers

“Kodak” for cameras but NOT

“Safemix” for valves to mix hot and cold

and not

“Orlwoola” a misspelling of “all wool”

Vivien Irish, WIPO and TPI, Istanbul January 2005

“Any sign capable of distinguishing…”

“Apple” for computers

“Jaguar” for automotives

Eg: A word taken out of context

Vivien Irish, WIPO and TPI, Istanbul January 2005

Eg: A symbol or “device"

“Any sign capable of distinguishing…”

Or both a word and a symbol….

Vivien Irish, WIPO and TPI, Istanbul January 2005

“…the goods and services of one undertaking from those of other

undertakings…” Goods are divided into 34 classes.

Services are divided into 8 classes.

“Penguin” is registered for books, class 16, paper goods.

“Penguin” is registered for biscuits, class 30, bakery products

Vivien Irish, WIPO and TPI, Istanbul January 2005

“….can be registered as a trademark…”

Trademarks are registered at national Trademark Offices,

or internationally via the Madrid system,

or for a region, eg: European Community.

Can use a Trademark Attorney or Trademark Agent

who is expert in the law of trademarks

– optional but advisable.

Vivien Irish, WIPO and TPI, Istanbul January 2005

Cannot register a trade mark if:-

•it is devoid of distinctiveness

•it is identical or confusingly similar to an earlier mark for identical or confusingly similar products or services

•it is exclusively a sign used in the trade

Vivien Irish, WIPO and TPI, Istanbul January 2005

Indicating a Trademark

Can use “TM” after the Mark

If registered, can use “R” after the Mark

Vivien Irish, WIPO and TPI, Istanbul January 2005

Infringement of a registered trade mark

Same sign on the same goods or services

Same or similar sign on same goods or services or on goods or services so similar that there is a risk of confusing the public

Infringement can be civil or criminal act

Vivien Irish, WIPO and TPI, Istanbul January 2005

Other types of Trademark ICollective Marks

• A Group applies to register the Mark and sets rules for its use

• Eg a mark used by 16 apple-growing cooperatives in Italy

Vivien Irish, WIPO and TPI, Istanbul January 2005

Other types of Trademark IICertification Marks

• In Turkey – Guarantee Marks

• Owner controls common characteristics and methods of production

• Woolmark used by manufacturers of pure new wool products in 67 countries

Vivien Irish, WIPO and TPI, Istanbul January 2005

Other types of Trademark IIIGeographical Marks or Appellations of Origin

• Name of place, area or region• Used to designate quality or

character of product due to inherent natural and human factors of the place

• Eg labels on wine bottles

Vivien Irish, WIPO and TPI, Istanbul January 2005

Industrial Designs

Turkish Industrial Designs Law 1995

Community Registered Designs

Vivien Irish, WIPO and TPI, Istanbul January 2005

Registered Designs –typical products

Vivien Irish, WIPO and TPI, Istanbul January 2005

Appearance of the whole or part of a product resulting from features of, in particular, the lines, contour, shape, texture and/or materials of the product itself and/or its ornamentation

“Product” = industrial or handicraft item including….. packaging, get-up, graphic symbols

Vivien Irish, WIPO and TPI, Istanbul January 2005

A design must:-

be new – but 1year grace period

have an individual character

Vivien Irish, WIPO and TPI, Istanbul January 2005

Cannot register a design

for features of appearance dictated solely by technical function

for features which allow a product to fit to another product

Vivien Irish, WIPO and TPI, Istanbul January 2005

How to register a design I

Apply to Designs Registry

- in Turkey for a Turkish Registration

- in Alicante in Spain for a Community Registration

(through the Turkish Design Registry)

Vivien Irish, WIPO and TPI, Istanbul January 2005

How to register a design II

• Provide an illustration of the product from several angles

• Pay a fee

• Can use a patent attorney

Vivien Irish, WIPO and TPI, Istanbul January 2005

Advantages of a design registration

Can last for 5 X 5 = 25 years- if renewal fees are paid

Can stop use of same design on any product including making, offering, importing, exporting, putting on the marketVisual test – compare registration with the offending article

Vivien Irish, WIPO and TPI, Istanbul January 2005

Community Unregistered Design

Lasts for 3 yearsFor tangible three-dimensional articlesMust be “not commonplace”Infringed by copying

Vivien Irish, WIPO and TPI, Istanbul January 2005

The end

Thank you for listening