Download Beyond Getting Noticed: Branding, Trademarks and

WIPO Workshop on Intellectual Property for
Business for Small and Medium-Sized Enterprises
(SMEs)
Dar-es-Salaam, May 10 and 11, 2005
« Beyond Getting Noticed: Branding,
Trademarks and Business Strategy »
By
Atangcho N. Akonumbo
May 10, 2005
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Introduction
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What is an SME?
The role of SMEs in a modern economy
Significance of the IP system for SMEs
Unawareness of the IP system?
Focus of the presentation
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Preliminary Issues
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Nature of a Brand/Trademark
Situating brands/trademarks in the IP arena
Conceptual clarification: overlapping terms
Definition of brand or trade mark: A sign or any
combination of sign capable of distinguishing a
product or service from others on the market.
Scope
duration
3
Foundational Strategy considerations
• Choosing the appropriate IP regime
*An SME should be able to select and choose the most
suitable IP regime(s) under which it intends to seek
protection for its products. For example, for products
with a longer development and production cycle and
higher research and development costs, a patent is
usually more suitable since that would ensure a much
longer period of exclusivity (twenty years or more)
within which to the cost of the investment could be
recuperated.
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Foundational Strategy considerations
(Cont’d)
• NB: The operationality of IPRs may depend on
and stand in the face of the IPRs of other
producers or inventors or other non IPRs of
others. (Examples)
• Justification?
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Foundational Strategy considerations
(Cont’d)
• Territoriality of trademarks : In addition to fulfilling the
registration requirements under the relevant system
where protection is sought, trademarks (as other
regimes of IP) are territorial (national) only and at best
regional.
• A search (trademark search) must be conducted before
submission of an application to register a trademark.
The purpose of this important measure, is to ascertain
that the trade mark whose registration is sought does
not already in exist . Why? Case study: Société Paco
Rabanne v. Mahmoud El Gandour.
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Business Strategies
• What is a business strategy?
• Some strategies for SMEs (applicable to all IPR regimes)
- consider how to identify, protect, highlight and manage IP
assets
- integrate in business planning how to derive maximum benefits
from commercialization of IP the asset
- depending on targeted market, consider fling system
- how to value IP assets in business accounts and in pricing
policy.
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Importance of trademarks in
business strategy
• The upshot of registration
- identification
- proof of ownership or prior existence in the event of dispute
relating to counterfeiting or confusion created by a contested
mark
- tool of trustworthiness
- deterrent
• Trademark is used to identify a product
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Importance (Cont’d)
• Trademark is used to identify a product or service; a
certain quality and image in it. In other words,
trademark is a sign off consistency of the quality of a
product
• Trademark is used to differentiate products in the
interest of consumers.
• Trademark can be used to build confidence in the
brand of the products.
• Trademark can be used to build confidence in the
brand of the goods or services.
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Importance (Cont’d)
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The concept of collective trademarks mentioned earlier,
can be used, for example, by SMEs in OAPI region in
their business strategy in two respects
- cost effective management of registrations
- lessen inferiority complex.
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IP may assist an SME in almost every aspect of its
business development and competitive strategy: from
product development to product design, from service
delivery to marketing, and from raising financial
resources to exporting or expanding your business
abroad through licensing
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Importance (Cont’d)
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Trademark is an asset that may be commercialized by
SMEs whether as owner or as to improve turn out,
efficiency, competitiveness through access to new
markets and investment, through licensing or franchising.
Business entities generally should be able to
appreciate the relevance of IP assets whether actually
owned or licensed. Certainly IPRs create an
atmosphere of business competition and increase the
face value of an SME
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Pitfall(s) of Strategies
• Why considered in business strategy?
• In trying to get a foothold on the market crowded with
an impressionable number of competitive goods and
services carrying well known marks, SMEs should
avoid being tempted to formulate overzealous and
counterproductive policies that would serve as a dropback to their efforts and dampen down their reputation
• Effects
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Infringement of trademarks
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Why considered in business strategy?.
Status of the right allegedly infringed
Scope of infringement.
Who can infringe?
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Enforcement of Rights/Remedies
• Raison d’être of enforcement: prevent “free
ridding” on the protected good.
• Enforcement means:
- Non-judicial: Arbitration, mediation, warning letter
(or cease and desist letter), negotiation of a license
etc.
- Judicial means: Court action, civil or criminal. Civil
action for damages (in tort for passing-off in common
law systems) and/or an injunction.
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Conclusion
• Concluding remarks
• Discussion & questions/clarifications
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END
Thank You
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