Marketing and Branding Strategies ( Trade Marks and Designs)

1. Marketing and Branding Strategies(Trade Marks and Designs) Vivien Irish Consultant Patent Attorney Vivien Irish, WIPO and TPI, Istanbul January 2005

2. China: Ming bowl C. 1600 AD Egypt: Ramses II cartouche on a sun-dried mud and straw brick. Dynasty 19, 1279 – 1212 BC China: Shang dynasty mark, C1600 BC Very early “trademarks” Vivien Irish, WIPO and TPI, Istanbul January 2005

3. Later trademarks Edouard Manet: Un Bar au Folies Bergere, 1882 Vivien Irish, WIPO and TPI, Istanbul January 2005

4. 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

5. “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

6. “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

7. Or both a word and a symbol…. “Any sign capable of distinguishing…” Eg: A symbol or “device" Vivien Irish, WIPO and TPI, Istanbul January 2005

8. “…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

9. “….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

10. 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

11. 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

12. 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

13. 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

14. 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

15. 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

16. Industrial Designs Turkish Industrial Designs Law 1995 Community Registered Designs Vivien Irish, WIPO and TPI, Istanbul January 2005

17. Registered Designs –typical products Vivien Irish, WIPO and TPI, Istanbul January 2005

18. 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

19. A design must:-be new – but 1year grace periodhave an individual character Vivien Irish, WIPO and TPI, Istanbul January 2005

20. Cannot register a designfor features of appearance dictated solely by technical functionfor features which allow a product to fit to another product Vivien Irish, WIPO and TPI, Istanbul January 2005

21. How to register a design IApply 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

22. 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

23. Advantages of a design registrationCan last for 5 X 5 = 25 years - if renewal fees are paidCan 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

24. Community Unregistered DesignLasts for 3 yearsFor tangible three-dimensional articlesMust be “not commonplace”Infringed by copying Vivien Irish, WIPO and TPI, Istanbul January 2005

25. The endThank you for listening Vivien Irish, WIPO and TPI, Istanbul January 2005