Federico Guicciardini Corsi Salviati Officer-in-charge Information and Promotion Division (IPD)

World Intellectual

Property Organization

Trademarks, Industrial Designs and Geographical Indications: A Business Tool

for Economic Development

Federico Guicciardini Corsi SalviatiFederico Guicciardini Corsi SalviatiOfficer-in-chargeOfficer-in-charge

Information and Promotion Division (IPD)Information and Promotion Division (IPD)Sector of Trademarks, Industrial Designs and Geographical IndicationsSector of Trademarks, Industrial Designs and Geographical Indications

National Seminar for Patent AttorneysOctober 24 and 25, 2007 – Minsk (Belarus)

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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications

Table of Contents

1. Introduction2. Trademarks (Collective and

Certification Marks), Industrial Designs and Geographical Indications for economic development

3. The concept of Branding4. Conclusions

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(1) Introduction

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Introduction

• Collective marks, certification marks, industrial designs and geographical indications (appellations of origin) are important Intellectual Property Rights (IPRs) for the promotion of economic development

• The application of these IPRs require a strong implication by central and local governments to be effective

• Protection of GI more problematic at an international level than industrial designs, collective and certification marks

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Role of IP in Marketing

• Consumers are not always able to assess the quality of specific products on the market

• These Intellectual Property Rights (IPRs) refer to the reputation and to certain qualities of the products

• Trust in these IPRs is the reason why consumers may be willing to pay more in buying the original product

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IP and Marketing

Trademarks and IDs are focussing on individual

marketing

Acting individually it is often difficult to gain product recognition

Collective, certification marks and geographical

indications are focussing on joint

marketing

Some knowledge and production techniques

belong to entire communities and can therefore hardly be

attributed to a particular individual

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Value of Trademarks in 2006 (*)

1. Coca Cola 67,42. Microsoft 56,93. IBM 56,24. GE 48.95. Intel 32.36. Nokia 30.17. Toyota 27.98. Disney 27.89. McDonald’s 27.510. Mercedes 21.8

(*) In $ Billions

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(2) Collective Marks

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Collective Marks

• Marks used to distinguish goods or services produced or provided by members of an association

• IPRs belonging to an association or cooperative whose members use the collective mark to market their product

• Set of criteria for using the collective mark (e.g. quality standards)

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Collective Marks

• Collective mark Vs individual mark• Focus on the good or service rather

than on the single enterprise as the source of the good or services

• Close links with geographical indications

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Collective Mark Rules

• Comply with rules, criteria, procedures and sanctions set by the producers’ association

• Membership• Quality control

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Benefit of Using CM

• Saving on registration cost, advertising campaign, marketing, enforcement etc.

• Reputation on the basis of common origin or other characteristics of the product made by different producers

• May facilitate cooperation among local producers and traders and enhance quality control

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Collective Marks Function

• Collective marks provide information to customers about the origin of the products, their level of quality, accuracy, geographical origin or other features established by the reference association

• Collective marks are used to protect goods or services in a wide range of economic sectors, including the agro-food industry, textile and fashion industry, tourism, handicraft, etc.

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Melinda Consortium (Italy)

• Consortium with 5,200 members• 3 Millions tons of apples harvested

every year by 16 cooperatives• Representing 60% of Trentino, 10% of

Italy and 5% of European production• Brand created in 1989• Logo made in England

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Melinda Consortium (Italy)

• Two separate valleys in Trentino local government

• Join under a unique brand many little local producers used to apply same traditional production techniques

• Only with these special characteristics the fruits would have deserved the plus of the Melinda label

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Interflora (International)

• The world’s largest flower delivery• Quality, creativity and choice• 58,000 florists delivering flowers to

over 140 different countries• The Roman God Mercury is now one

of the most recognized marks in the world and a shared symbol of quality and service

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(2) Certification Marks

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Historical Background

• Egyptians, Greeks, Romans and Chinese used various forms of stamps or marks to indicate who made certain products

• 12th: trade guilds and marks• 13th: bell makers use marks• 1266: Bakers Marking Law (England)• 1353: ownership by using marks• 1373: bottle-makers to be marked• 15th & 16th: marks proliferate• 1618: first ref. to infringement• 1653: De Porceleyne Fles (Holland)

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Marks Used by Trade GuildsFlorence, Italy – XIII Century

Butchers

JudgesSilk

LocksmithsBlacksmiths

Wool

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Certification and Collective MarksXXI Century

Ham

WoolLeather

TextileWine

Flowers

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Certification Marks

• Marks used to distinguish goods or services that comply with a set of standards and have been certified by a certifying authority

• Usually given for compliance with defined standards, may be used by anyone whose products meet certain established and certified standards

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Certification Marks

Certification marks must protect products and services according to well established criteria:

• Legal evidence that the product comply with a national/international accredited standard

• Proven accreditation by a well known certification organization

• Formal assurance that the manufacturer is being regularly audited by the certification organization, at unannounced intervals, to ensure the maintenance of the original standards

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Certification Marks

Among other things, certification marks attest that:

• A product is handmade• Certain ecological requirements have

been respected in the making• No children were employed in the

production process• Made in specific geographical regions• 100% of recyclable material• Made by indigenous group

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Rugmark (International)

• 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

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Woolmark (Australia)

• Certification mark attesting that the products on which its label is stamped are made from 100% new wool and comply with strict specifications set down by the Woolmark company

• Registered in over 140 countries and is licensed to producers who are able to meet these quality standards in 65 countries

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Woolmark (Australia)

• The power of this brand ensures to retailers and consumers a strong quality endorsement

• In consumer tests, garments displaying Woolmark are perceived as 17% higher in value

• 66% of consumers feel more confident about buying a wool garment carrying the Woolmark

• In consumer tests, garments displaying Woolmark are 30% more likely to sell

• 77% of consumers (over 2 billion consumers worldwide) recognise the Woolmark

• 79% of retailers prefer garments to carry Woolmark labels

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China Compulsory Certification (CCC)

• Required for a wide range of manufactured products before being exported to or sold in the People Republic of China market

• The CCC Mark is required for products in 19 groups divided into totally 132 product categories

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ITC Czech

• ITC has been providing professional services in the field of toys testing and certification for more than 15 years

• Cooperation since 2004 with the Italian Institute for Toys Safety (IISG) which was looking for a suitable partner for extension of the “Safe Toys“ project into East European countries

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(2) Industrial Designs

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Definition

What is protected is the aesthetic feature of a product not the technical (Patents) nor distinguishing features (Trademarks)

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The Value of a Creative Design

• Makes a product attractive and appealing

• Target specific market segments• Create a new market niche• Strengthen brands

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Protecting Through Registration

• Exclusive right to prevent unauthorized copying or imitation by others

• Return on investment• Business asset increasing commercial

value of a company and its products• Registered design may be licensed (or

sold)• Encourages fair competition and honest

trade practices

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Reasons for Protecting in EU

• 70% prevent copying• 23.4% company policy• 20.3% get ahead competition• 10.1% prestige• 6.5%prevent people think “I copy”• 5.8%other

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Protection at Home and Abroad

• The national route– each country where you seek protection

• The regional route– countries members of a regional

agreement: African Regional Industrial Property Office; Benelux Design Office; Office for Harmonization of the Internal Market of the EU; Organisation Africaine de la Propriété Intellectuelle

• The international route– Hague agreement - Administered by

WIPO (47 countries)

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Classes of Goods 2006

10 Clocks and watches and other measuring instruments, checking and signalling instruments

22%

9 Packages and containers for the transport or handling of goods

11%

6 Furnishing 8%

7 Household goods, not elsewhere specified 6%

11 Articles of adornment 6%

23 Fluid distribution equipment, sanitary, heating, ventilation and air-conditioning equipment, solid fuel

5%

14 Recording, communication or information retrieval equipment 5%

26 Lighting apparatus 4%

19 Stationery and office equipment, artists' and teaching materials

4%

12 Means of transport or hoisting 4%

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Designs in Industry

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(2) Geographical Indications

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Geographical Indications (GIs)

Indication which identifies a good as originating in the territory of a Member, or a region, or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attribuable to its geographical origin (TRIPS)

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Appellation of Origin

• From the Lisbon Agreement, the geographical name of a country, region, or locality, which serves to designate a product originating therein, of which the quality and characteristics are due exclusively or essentially to the geographical environment, including natural and human factors

• Lisbon Agreement has at present 26 Member States

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Country of Origin

From the Lisbon Agreement, the country whose name, or in which is situated the region or locality whose name, constitute the appellation of origin which has given the product its reputation

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Standards of Protection (GIs)

GIs shall be protected against:

1. Any use in the designation or presentation of a good which misleads the public as to its geographical origin

2. Any use which constitutes an act of unfair competition within the meaning of Art.10bis of the Paris Convention

3. Registration of trademarks which can mislead the public as to the geographical origin of products

4. Deceptive geographical indications

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Standards of Protection (GIs)

GIs for wines or spirits shall benefit from additional protection against:

1. Any use of the GIs which identifies a wine or a spirit not originating in the area indicated

2. Registration of trademarks not having the geographical origin indicated

3. Homonymous GIs (for wines)

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Four Categories to Protect GIs

• Laws focusing on business practices• Trademark law:

– Protecting GIs agains the registration and use as trademarks

– Protecting GIs by means of collective, certification or guarantee marks

• Laws providing sui generis protection for GIs that relate to products with specifically defined characteristics

• Laws providing special protection for GIs without specific definitions or prior recognition requirements

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WIPO Standing Committee

• Definition of GIs• Protection in Country of Origin• Protection Abroad• Generic Terms• Conflicts Between Trademarks and GIs• Homonymous GIs• Link Between Product and Origin

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Aceto Balsamico di Modena (Italy)

• Balsamic Vinegar date back to the tradition of the ancient Romans

• The term Balsamic is relatively new and was used for the first time in 1747

• First ministerial authorisation to produce it dates from 1933

• At present, the Consortium is working to obtain the registration of this fine vinegar with P.G.I. (Protected Geographical Indication) status

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Virginia (USA)

• Successful example to promote tourism, by the State of Virginia more than 30 years ago

• 1969 Virginia introduced the slogan Virginia is for Lovers

• At the time, total travelers’ expenditure in Virginia were 809 million US$

• In 2005, they account for more than 11.6 billion US$

• Three of every four US citizens correctly identify the slogan

• Mark has proven to be extremely durable, probably because of its simplicity

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St. Moritz (Switzerland)

• The famous tourist location of St. Moritz protects its logo, slogan, design and name as part of an unique brand

• The sun and writing were used as early as 1930, the slogan “Top of the World” was added in 1987

• Protection through the Madrid System in over fifty countries for up to 15 categories of merchandize

• Message aims to convey trust, quality, reliable performance, durability, tradition, competence and credibility

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Solingen (Germany)

• Solingen is a city in Germany as well as an appellation of origin and a quality mark

• A leading Cutting Industry since early middle age - Me fecit Solingen (1571)

• Name protected in Germany by trademark legislation– Made within the industrial area of

Solingen– Conform with a specific quality

standards• Protection abroad partly under bilateral

agreements and partly under regulations against unfair competition (Paris Convention)

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Darjeeling Tea (India)

Darjeeling tea is the most famous tea cultivated in India (CM & AO)

• Production started in 1852 in the Darjeeling district (West Bengal) with less than 39 gardens for a total production of 21,000 kilograms of tea

• Today nearly 17,400 hectares in 87 gardens produce around 9 to 10 million kilograms of tea (52,000 workers on a permanent basis)

• Darjeeling logo, created in 1983, identify and protect a quality of tea produced exclusively in the Darjeeling district

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Protection of Cheese

• In Europe, the cheese production is particularly protected through both the appellation of origin and collective marks registration

• Example of this are the consortium of Roquefort, Brie de Meaux, Camembert de Normandie and Parmigiano Reggiano (all protected by appellation of origin)

• Roquefort and Parmigiano Reggiano are also registering the rights of their respective associations

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Parmigiano Reggiano (Italy)

• 450 dairies, 270,000 cows that produce milk for the Consortium

• 16 liter of milk to produce 1 Kg• 12 months minimum of ageing of the

wheels• 550 liters of milk to produce a 38 Kg

wheel• 3,000 wheels produce

in one year

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(3) The Concept of Branding

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Branding

Branding possess and develop multiple concepts: vision, mission, message, service & quality, image, differentiation, recognition, investment and pride

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A Whole Image

A brand it is not just a mark or a logo. Rather it is the whole image, a customer experience represented by a collection of images and ideas

A brand serves to create associations & expectations among products made by a producer

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Purpose of Branding

• Gives a business/enterprise a significant edge over the competition

• Have the customer view a business/enterprise 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

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Building a Tradition (Longines)

• Never modified, continually used: the winged hourglass logo of the Longines watch-making company is the oldest valid trademark in the International Registry at WIPO

• Originally registered in Switzerland in 1889 and filed under the Madrid Agreement in 1893

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Building a Tradition (Longines)

• Building its brand by continually innovating and creating unique design

• Using IP system to protect and market the product

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Small Business Brands

• Branding a small business is possible• Google used almost no advertising

and developed extremely strong brand

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Branding Evolve (Nike)

“Swoosh”

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(4) Conclusions

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Using a TM, ID or GI

• Actively using these IPRs• Using/maintaining them in marketing• Using them on the Internet• Using them as a business asset• Using them on business papers or in

advertising

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Conclusions

• Collective marks, certification marks, industrial designs and geographical indications may be used to promote key economic sectors such as tourism, the agro food industry, handicraft, cultural industries, etc.

• Change the vision behind the registration of IPRs (investment potential rather than protection only)

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Conclusions

• These IPRs are proven marketing tools for enhancing local and regional development at both individual and community level

• Successful case studies available in developed and developing countries

• Crucial component in licensing and franchising negotiations

• Encourage the producers to invest in maintaining and improving product quality

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IP for Business Seriesby the SMEs Division of WIPO

Looking Good (Designs)Making a Mark (Trademarks)

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International Registration Gateway

• The Madrid System• The Hague System• Filing Information• Madrid System Information Notices• Fees Calculator• The Romarin Database• The Lisbon Database• Guides and Information Material• The WIPO Gazette of International Marks• Annual Statistics• Contacts

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Useful Internet Links at WIPO

• WIPO Administered Treaties• The SMEs Division of WIPO• Resources for Business• Calendar of Meetings• WIPO Electronic Bookshop• E-Newsletters

World Intellectual

Property Organization

Many thanks!

[email protected]

Documents

Federico Guicciardini Corsi Salviati Officer-in-charge Information and Promotion Division (IPD)