Trademarks, Industrial Designs and
Geographical Indications: A Business Tool
for Economic Development
National Seminar for Patent Attorneys
October 24 and 25, 2007 – Minsk (Belarus)
World
Intellectual
Property
Organization
Federico Guicciardini Corsi Salviati
Officer-in-charge
Information and Promotion Division (IPD)
Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
Table of Contents
1. Introduction
2. Trademarks (Collective and
Certification Marks), Industrial
Designs and Geographical
Indications for economic
development
3. The concept of Branding
4. Conclusions
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
(1) Introduction
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
IP and Marketing
Trademarks and IDs are
focussing on individual
marketing
Collective, certification
marks and geographical
indications are
focussing on joint
marketing
Acting individually it is
often difficult to gain
product recognition
Some knowledge and
production techniques
belong to entire
communities and can
therefore hardly be
attributed to a
particular individual
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
Value of Trademarks in 2006 (*)
1. Coca Cola
2. Microsoft
3. IBM
4. GE
5. Intel
6. Nokia
7. Toyota
8. Disney
9. McDonald’s
10. Mercedes
67,4
56,9
56,2
48.9
32.3
30.1
27.9
27.8
27.5
21.8
(*) In $ Billions
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
(2) Collective Marks
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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)
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
Collective Mark Rules
• Comply with rules, criteria,
procedures and sanctions set by the
producers’ association
• Membership
• Quality control
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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 agrofood industry, textile and fashion
industry, tourism, handicraft, etc.
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
(2) Certification Marks
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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)
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
Marks Used by Trade Guilds
Florence, Italy – XIII Century
Silk
Judges
Wool
Butchers
Blacksmiths
Locksmiths
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
Certification and Collective Marks
XXI Century
Leather
Wool
Flowers
Ham
Wine
Textile
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
(2) Industrial Designs
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
Definition
What is protected is the aesthetic
feature of a product not the technical
(Patents) nor distinguishing features
(Trademarks)
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
The Value of a Creative Design
• Makes a product attractive and
appealing
• Target specific market segments
• Create a new market niche
• Strengthen brands
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
Reasons for Protecting in EU
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70%
23.4%
20.3%
10.1%
6.5%
5.8%
prevent copying
company policy
get ahead competition
prestige
prevent people think “I copy”
other
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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)
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
Classes of Goods 2006
10 Clocks and watches and other measuring instruments,
checking and signalling instruments
9 Packages and containers for the transport or handling of
goods
6 Furnishing
7
Household goods, not elsewhere specified
22%
11%
8%
6%
11 Articles of adornment
6%
23 Fluid distribution equipment, sanitary, heating, ventilation
and air-conditioning equipment, solid fuel
14 Recording, communication or information retrieval equipment
5%
26 Lighting apparatus
4%
19 Stationery and office equipment, artists' and teaching
materials
12 Means of transport or hoisting
4%
5%
4%
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
Designs in Industry
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
(2) Geographical Indications
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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)
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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)
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
WIPO Standing Committee
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Definition of GIs
Protection in Country of Origin
Protection Abroad
Generic Terms
Conflicts Between Trademarks and GIs
Homonymous GIs
Link Between Product and Origin
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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)
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
(3) The Concept of Branding
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
Branding
Branding possess and develop
multiple concepts: vision, mission,
message, service & quality, image,
differentiation, recognition,
investment and pride
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
Building a Tradition (Longines)
• Building its brand by continually
innovating and creating unique design
• Using IP system to protect and
market the product
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
Small Business Brands
• Branding a small business is possible
• Google used almost no advertising
and developed extremely strong
brand
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
Branding Evolve (Nike)
“Swoosh”
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
(4) Conclusions
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
Using a TM, ID or GI
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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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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)
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
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
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
IP for Business Series
by the SMEs Division of WIPO
Making a Mark (Trademarks)
Looking Good (Designs)
The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
International Registration Gateway
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Madrid System
Useful Internet Links at WIPO
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The Information and Promotion Division – Sector of Trademarks, Industrial Designs and Geographical Indications
Many thanks!
federico.guicciardini@wipo.int
World
Intellectual
Property
Organization