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Marketing Software Products: The Importance of Trademarks and Industrial Designs - Case Studies

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Beyond Getting Noticed: The Role of Trademark and

Industrial Designs in Developing a

Branding Strategy

Guriqbal Singh JaiyaDirector

Small and Medium-sized Enterprises DivisionWorld Intellectual Property Organization

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This Presentation1. What is Branding?

2. The Branding and Trademark Symbiotic Relationship

3. The $ Value of a Brand, …. of a Trademark

4. What is a Trademark?

5. DO’s and Don’ts to Preserve Distinctiveness and Value of a Trademark

6. Most Common Mistakes by Exporters

7. What is an Industrial Design?

8. The Value of a Creative Design

9. Practical Aspects of Industrial Designs

10. Industrial Design Issues Affecting Various Types of Business Decisions

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What is Branding?

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Does a Name Really Matter?

In 1969 while speaking at a small scientific conference, Sir Roger Penrose, a Cambridge physicist announced his discovery of what he called a “gravitationally totally collapsed object.” The world yawned.

Months later, he changed his description to a “Black Hole” and the news of his discovery raced around the world. Today, the term Black Hole is a part of the world's working vocabulary.

We cannot understand, or maybe we do not care about a collapsed object. But a Black Hole is something very different. It is provocative, intriguing, exciting and conceptual. Most important, it is believable. (quoted from Lexicon Branding, Inc.)

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What is a Brand?

In marketing terms it is:

The intangible, but real, value of words, graphics or symbols that are associated

with the products or services offered by a business.

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A brand represents the holistic sum of all information about

a product or group of products.

It is a symbolic construct which typically consists of

— a name;

— identifying mark;

— logo;

— visual images or symbols; or

— mental concepts.

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— distinguish a product or service.

It is useful for the marketer to think of this as a set of aligned expectations in the mind of its stakeholders ...

from its consumers, to its distribution channels, to the people and companies who supply the products and services.

Simply, a brand is to ...

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What is the Purpose of Branding for your Business?

1. Gives your business a significant edge over the competition;

2. Makes the customer view your business as the only solution to their need or problem;

3. A strong brand will engender feelings of trust, reliability, loyalty and recognition in the customer’s mind;

4. Through its brand image, a business will attract and retain customer loyalty for its goods and services and increase the value of its business.

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What to do for a Successful Branding Strategy ...

1. Develop a brand that is part and parcel of your business plan;

2. Target what customers care about: articulate precise values and qualities that are relevant and of direct interest;

3. Emphasize features that are both important to consumer and quite differentiated from competitors;

4. Sell the brand outside and inside: Motivate employees to identify with brand;

5. Keep brand flexible;

6. Communicate the brand image at all levels of operation;

7. Use Intellectual Property Rights (IPRs), tools for branding, such as trademarks and industrial designs.

11Source: Association of Professional Design Firms, APDF, http://www.apdf.org/Public/Index.asp?Page_ID=74

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The Branding and Trademark Symbiotic Relationship

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What is the Relationship between a Brand and a Trademark?

… The term ‘brand name’ is often used interchangeably with “brand”, BUT …

… it is more correctly used to specifically denote written or spoken linguistic elements of a brand.

…. In this context a “brand name” constitutes a type of trademark, if the brand name exclusively identifies the brand owner as the commercial source of products or services.

…. A brand owner may seek to protect proprietary rights in relation to a brand name through trademark registration.

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A Brand — A Trademark

— Trademark: Legal concept

— Brand: Marketing concept

1. Registration of a trademark will add value to your business as it protects its other inherent assets;

2. Brand profile and positioning may vary over time, but trademark protection will remain the same.

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So … What is the Value of Branding ...

….. and the Importance of Trademark Protection ….?

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The Importance of Brand Equity and Trademark Protection

— Brand Equity measures the total value of the brand to the brand owner, and reflects the extent of brand franchise.

… Brand Equity is built on the foundation of a protected Trademark,

and this in turn becomes one of your business’ most valuable assets.

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….. be disposed of separately from the other company’s assets (it becomes a ‘free-standing’ asset); and

….. give rights that can be legally protected.

…. Therefore, as an asset, a ‘Brand’ and/or a Trademark, can...

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Note ….

— In a highly competitive market, a company’s brand will either ...

….. disappear much faster than their products’ trademarks protection period, or will be …

…. adapted to protect a different product over time.

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… the Importance of a Trademark is that it becomes ...

— A marketing tool;

— Source of revenue through licensing;

— Crucial component of franchising agreements;

— May be useful for obtaining finance.

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The $ Value of a Brand;

….. of a Trademark

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The Value of Brands in 2004

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Switzerland (December 16, 2004)

France (June1, 2005)

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Spain16 February 2004

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Singapore(December 15, 2004)

Brazil(June 2, 2004)

Australia(November 18, 2004)

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Mexico(June 11, 2003)

Chile(August 5, 2002)

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{The ‘Social’ Value of a Brand}by www.brandchannel.com

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Using the 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, etc.);

— Selling/assigning TM to another company (merger & acquisitions/raising of cash).

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What is a Trademark?

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A sign capable of distinguishing the

goods or services produced or provided by one enterprise from

those of other enterprises.

What is a Trademark?

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… a Trademark is ...

— Any distinctive sign, or any combination of signs;

Words, including personal names, letters, numerals, figurative elements (logos), combination of colors, sounds, smells, etc.

Visually perceptible; 2D or 3D (shape)

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Less or Non-Traditional Forms of TMs

Single colors

Three-dimensional signs (shapes of products or packaging)

Audible signs (sounds)

Olfactory signs (smells)

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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;• Trade-name vs Trademark.

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What are the Functions of a Trademark?

— Allows companies to differentiate their products.

— Ensures consumers can distinguish between products and ultimately develop brand loyalty and Trust.

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Any Distinctive Words, Letters, Numerals, Pictures, Shapes, Colors, Logo-types, Labels or Combinations

http://www.progress.com/trademarks/index.ssp

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Any Distinctive Words, Letters,..

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Examples of Trademarks

• CyberGrid, MetaRules, High Tower, the High Tower logo, and TowerView are trademarks or registered trademarks of High Tower Software, Inc. in the United States and other countries.

• HI-TECH C®, Pacific C™, Lucifer™, PPD™, HPD™ and HI-TIDE™ are trademarks or registered trademarks of HI-TECH Software.

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Protection through TM 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 may be licensed or basis franchising agreements.

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Enforcing Trademarks

— Responsibility on trademark owner to identify infringement and decide on measures;

— “Cease and desist letter” to alleged infringer;

— Search and seize order;

— Cooperation with customs authorities to prevent counterfeit trademark goods;

— Arbitration and mediation (preserve business relations).

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… In many countries, to enforce trademark rights,

….. the owner of the trademark has to provide evidence or proof of use of the mark in relation to the goods or services specified in the trademark register, aside from proof of infringement.

Remember ...

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Do’s and Don’ts to preserve

distinctiveness and value of a trademark

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Protecting trademarks begins in-house...

• Trademark is instrumental to developing

brand identity and customer loyalty

• Important to preserve and enhance distinctiveness and value of mark

Make proper use of your trademark

Protect it from being misused by

others

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1. Use Actively ...

… by offering the products, the services;

… Affix the mark to the goods or their packaging … in promotional, instructional and reference materials; on website, labels, packaging, business papers, invoices, etc.

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2. Avoid Trademark from becoming Generic

— Remember, the function of trademark is

…. to distinguish the goods/services

NOT to describe the goods/services.

— If the trademark becomes common use ...– risks becoming generic; and– a loss of protection will follow.

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Examples of Generic Trademarks

• Kleenex = facial tissue

• Coke = soft drink

• Xerox = photocopier

• FedEx = overnight courier service

• Thermos = hot water bottle

• Yo-yo =

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A) Set TM apart from surrounding text__

Distinguish mark from surrounding text

– Use capital letters, bold, color, italics, underline, quotation marks.

– This is to avoid the chance of the mark being seen as generic term.

– Creates distinct commercial impression in minds of consumers regarding the mark.

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Correct use:

Raymond Textile is India's leading producer of worsted suiting fabric with over 60% market share.

‘Raymond Textile’ is India's leading producer of worsted suiting fabric with over 60% market share.

Incorrect use:

Raymond Textile is India's leading producer of worsted suiting fabric with over 60% market share.

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B) Specify font, size, proportion and placement___

— Consistently reproduce font / size / proportion (especially if integral part of registered mark).

This helps to maintain a uniform and consistent look.

It avoids confusing consumers.

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Correct use:

Incorrect use:

VIMAL ADT A ftosa

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C) Specify colors________________

Color can be effective tool for creating brand identification (many people use color as selection).

If color is feature must always appear in correct colors

must appear in color whenever possible

If you license others to use your trademark provide color specifications

monitor correct use

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D) Use trademark as adjective_____

Avoid using as nouns or verbs;

Use as adjective in association with a descriptive noun;

Non-adjectival use, over time, can result in genericness.

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Correct use:

- Buy a Mafatlal suite from authorized dealers.- Photocopy this for me on the Xerox copier.

Incorrect use:

- Buy Mafatlals from authorized dealers.- Xerox this for me.

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Correct use:

- The great quality and design of Swarovski jewelry

Incorrect use:

- Swarovski’s great quality and design

E) Do not use in possessive form_______

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F) Do not change spelling _____

Do not insert/delete hyphens;

Do not merge words;

Do not abbreviate (except when registered).

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- Calvin Klein- Tommy Hilfiger- Luis Vuitton- MPC POTTERIES GWALIOR

- Kalvin Klein- Tommy-Hilfiger- Luisvuitton- MPC P/G

Incorrect use:

Correct use:

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3. Use Trademark Notice ...

…. Not compulsory, but: Alerts public that trademark is registered

May discourage illegal use

Where to place it: With the name or logo of the mark

On products, advertising, websites, labels, etc.

NOT ® in countries where not registered!

… ®, TM, SM ...

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4. Register Domain Name

• Often most important asset of an online business

• Use trademark as SLD, if possible

• Choose carefully TLD

– .in : if target audience is based in India. Not so good if you're reaching out for global audience

– .com : classic TLD for any site anywhere in the world. BUT: not always available

– .biz : for business sites– .info : for informational sites– .org : for nonprofit sites – .coop : for cooperatives

Greater availabilityBUT: spammers

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5. Monitor authorized users

All types of users Licensees, franchisees

Authorized resellers, retailers

Brand owners

Developers

Advertising agencies

Subsidiaries

Customers

All types of use Promotional, instructional, reference material,

website, products, labels, packaging, etc.

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Control quality of goods and services offered under the licensed mark:

Bad quality damages your reputation!

Monitor correct use (style, color, etc.) of trademark:

Incorrect use confuses customers + risk of loss of protection

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Most Common Mistakes

Made by Exporters

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1. Believing that Trademark Protection is Universal

• Trademark rights are territorial

• In many countries only protected if registered

• Registration abroad– ‘national route’– ‘regional route’– ‘international route’ (Madrid Protocol)

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2. Using Trademark that is already Registered/Used by

Competitors in Export Market

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3. Using Trademark that Conflicts with Geographical Indication

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4. Not applying for Trademark Registration until it is too late

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5. Leaving ® on product/packaging when exported in country where

trademark is not registered

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6. Launching product in export market without checking whether

trademark is likely to be considered distinctive and has no undesired

connotation in local language

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Ensure the Proper Use of a Trademark...

It is crucial to acquire, register and maintain the mark;

Avoid the risk that the mark will become generic;

Preserve the mark’s ability to identify ‘origin’ of the products;

Maintain a consistent business image so that it provides immediate recognition and creates goodwill.

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What is an Industrial Design?

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Source: Design Council publication, “Competitive Advantage Through Design”, www.designcouncil.info

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Industrial Design: An Important Branding Tool

Just as trademarks distinguish your product or service, ….

…. industrial designs differentiate your products from those of the competition.

Both are intellectual property tools that contribute to your branding strategy and

therefore need protection.

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… In everyday language often it is

the “look” of a product which we like because we find it is attractive and appealing to our eyes;

… For businesses, designing a product implies

developing a product’s functional and aesthetic features taking into consideration issues such as marketability, costs of manufacturing, ease of transport, storage, repair and disposal.

What is a Design?

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... In an Intellectual Property law perspective, it refers ...

only to the ornamental or aesthetic aspects of a product ...

… even when the product may have a technical (Patents) or functional feature, or distinguishing features (Trademarks).

What is an Industrial Design?

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Two-dimensional Designs

- Ornamentation, patterns, lines or color on a product

Wallpaper, carpets, textiles, etc...

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Three Dimensional Designs

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Packaging, containers, bicycles, even computer design, etc...

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The Value of a Creative Design

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Industrial Design helps to ...

1. Make a product attractive and appealing:

-- may be unique selling point;

2. Target specific market segments:

-- i.e. customization: by making small modifications to make product suitable for different age groups, cultures or social groups

3. Create a new market niche:

-- to differentiate product from those of other competitors, I.e, locks, shoes, cups and saucers, etc.

4. Strengthen brands:

-- combined with distinctive trademarks to enhance the distinctiveness of a company’s brand.

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“… There is compelling evidence that businesses which use design perform better.

Design Council research found that while 90% of businesses which are growing rapidly say design is integral or significant to them, only 26% of static companies say the same.

As well as increasing market share, using design can help to reduce costs by making manufacturing processes more efficient and cutting materials costs. It can also reduce the time to market for new products and services.

It is significant that while a third of the UK's fastest growing companies surveyed by the Design Council in 2005 see design as integral to their running, only 11 per cent of shrinking firms say the same. Also, almost 70 per cent of companies which see design as integral have developed new products and services in the last three years, compared to only a third of businesses overall.”

Source: Design Council, UK, www.designcouncil.info

“Design - the business case”

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“… One of the best-known examples of a business transformed by the strategic use of design is Apple Computer.

The development first of the iMac and now the iPod (both the work of a team led by Briton Jonathan Ive), have transformed Apple's fortunes.

A fine creative achievement but, just as importantly, also a great advert for the design-aware management culture, led by CEO Steve Jobs, which enabled that creativity.

Remember too that it wasn't just about putting a brightly coloured shell around the same old computer, or coming up with a slick shape for a new music player. Ive's team creating an improved user experience and Apple's design process embraced every single component and the entire manufacturing process as well as integrating the iTunes music service.”

Source: Design Council, UK, www.designcouncil.info

“Design and your strategy”

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Many regard Apple's iMac a masterpiece of product design.

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Using ID as a Business Asset

Licensing – additional source of revenue– exploiting a company’s exclusivity over design– licensing contracts

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Reasons for Protecting Designs

Example: in the 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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By Protecting Industrial Design through Registration, the Owner Obtains:

Exclusive right(s) to prevent unauthorized copying or imitation by others;

A fair return on investment;

A business asset which will increase the commercial value of a company and its products;

A registered design that may be licensed (or sold);

Encourages fair competition and honest trade practices.

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What can be Registered as an Industrial Design?

…. A design must be

“NEW” -- i.e. if there is no identical design already made available to the public before the date of filing, or application for registration.

“ORIGINAL” -- must be independently created by designer, and not a copy or imitation of existing designs.

“INDIVIDUAL CHARACTER” -- overall impression produced by a design must differ from the overall impression produced by an earlier design made available to the public.

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Many regard Apple's iMac a masterpiece of product design.

‘Blauwerk’ bicycle/scooter by Philippe Starck

Virgin Trains

Manor Born - packaging and branding redesign

'Analog Pad' by Oriol Mogas Bartomeu

Duracell flashlight

Swatch watches

The Stethoscope Reflex Hammer, PharmaDesign

86Custom design

License agreement License Agreement for S. ten Broeke Royalty-Free Icons. This is a legal agreement between You, the purchaser, and S.ten Broeke, Inc. ("Qualityicons.com"). By opening the CD package, you agree to the following: All of the icons remain the property of S. ten Broeke. The icons can be used royalty-free by the licensee for any personal or commercial projects. This is a non-exclusive license. Modifications to the image data are limited to combinations of the included icons and to hue, saturation, brightness adjustments. These icons may not be resold or redistributed by the licensee or included in any product wherein the icons will be resold or redistributed (in whole or in part).

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Protecting Computer Generated Designs through Registration

Korean Intellectual Property Office (KIPO) extends design protection in Korea by accepting applications of Computer Generated Graphic designs under amended Guidelines for Examination of Design Applications.

The KIPO, as of July 1, 2003, accepts design applications of Computer Generated Graphics such as Graphic User Interface (e.g. a website GUI, software GUI, and mobile GUI), icons (e.g. an application icon, tool icon, and GUI icon), and graphic images (e.g. a character, screen saver, contents graphic, 3D animation, and emoticon).

In order for a computer-generated graphic to be protected under the Korean Design Law, the article to which the image is embodied or applied must be a subject matter for design. For example, any article of manufacture with a display panel such as a computer monitor, mobile phone, PDA, navigation system, refrigerator, washing machine, photo copier, MP3 player, CD player, MD player, digital camera, digital TV, ATM, and POS terminal is an appropriate subject matter for design of a computer-generated icon. However, a design of a computer-generated graphic that is separate from the object to which it is applied will simply be rejected.

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Protecting Industrial Designs through Registration

— The Applicant• application form, contact details, drawings or

photographs of design, written description or statement of novelty, fee.

— The IP Office• formal examination;• substantive examination;• design register/design gazette;• design registration certificate valid at least 10 years.

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Swatch watches

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Scope of Rights

— The right to prevent unauthorized copying or imitation by third parties;

— Exclude all others making, offering, importing, exporting or selling product with the design.

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Keep in Mind ...

The time it takes to register a design;

The cost of registration’

Keeping design secret prior registration;

Grace period;

Who may apply for ID protection;

Who owns the right over ID.

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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 (ARIPO); Benelux Design Office; Office for Harmonization of the Internal Market of the EU; Organisation Africaine de la Propriété Intellectuelle (OAPI).

• The international route– Hague agreement - Administered by WIPO (36 countries)

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An applicant can file for a single international deposit with WIPO or with the national office in a country party to the treaty.

The design will then be protected in as many member countries of the treaty as desired.

NOTE …. on the Hague agreement ...

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Enforcing Industrial Designs

— Responsibility on owner of the ID to monitor, identify imitators/counterfeiters and decide on action;

— Advice of IP lawyer;

— “Cease and desist” letter to infringer;

— Search and seize order;

— Cooperation with customs authorities to prevent importation of infringing goods.

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Remember what cannot be protected

— Designs that fail to meet requirements of novelty, originality and/or individual character;

— Designs dictated by technical function;

— Designs with official symbols or emblems;

— Designs contrary to public order or morality

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Industrial Design Issues Affecting Various Types of Business Decisions

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— which details should be disclosed to the designer, especially when the designer is employed by a contractor;

— whether to undertake design development entirely in-house, to contract or commission an outside agency or to do it jointly;

— timing of the initial use of a new design in advertising, marketing or public display in an exhibition;

The type of protection and its cost or effectiveness may affect:

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— if and when to seek or continue to maintain design registration;

— if and when to initiate action against unauthorized and/or infringing acts of competitors, counterfeiters or importers;

— if and when to license or partially assign a design; and

— if and when to register the design in other markets for export or for exploring the potential of entering into strategic business alliances, joint ventures, setting up wholly owned subsidiaries, etc.