WIPO NATIONAL SEMINAR
ON ENHANCING AWARENESS
AND BUILDING CAPACITY
OF SMES TO BENEFIT FROM THE
INTELLECTUAL PROPERTY
SYSTEM
Kuala Lumpur, Malaysia, Sep 7 and 8, 2006
Marketing and Branding Strategies:
The Role of Collective Marks,
Certification Marks and
Geographical Indications for
Business Success
Lien Verbauwhede Koglin
Consultant, SMEs Division
World Intellectual Property Organization (WIPO)
1.
Introduction
3
The Challenge of Marketing
for SMEs
• Some products have to face competition of
other products on the market that are often
similar or almost identical
• Need to find mechanism that creates and
maintains loyal clientele
4
Choosing a textile product
• Materials and texture:
– quality silk, pure wool
– vegetable colors
• Quality:
– colorfastness
– easy to clean
– density of the knots
• Manufacturing technique:
– weaving/knitting technique
– hand woven
– woven by women
• Reputation
• Design:
– traditional designs
– fashion trends
– unique
5
Marketing a textile product
• Materials and texture
• Quality
• Manufacturing
technique
•Give information
•Send a message
• Design
• Create
image that
differentiates you
• Reputation
• To maintain credibility,
confidence and loyalty
6
Role of IP in Marketing
• Consumers are unable to assess the quality
of products on the market
• Trademarks, collective marks, certifications
and geographical indications (GIs) refer to the
reputation and to certain qualities of the
products
• Trust in the mark/GI is the reason why
consumers may be willing to pay more
7
IP and Marketing
Trademarks
• Collective marks
• Certification marks
• GIs
Individual marketing
Joint marketing
8
• Acting individually, it is often difficult to gain
recognition for your products in the marketplace
• Some knowledge and production techniques belong
to entire communities and can therefore hardly be
attributed to a particular individual
“If you can’t beat them, join them”
SMEs have grouped in associations
( organized geographically or per
industrial sector)
Working collectively, SMEs can
benefit from the advantages of a
joint undertaking.
9
2.
Certification Marks
My: “certification trade marks” - Section 56 TMA
10
What is a certification mark?
• Sign indicating that the goods/services have been
certified by an independent body in relation to one or
more characteristics
– Origin, material, mode of manufacture, quality, accuracy,
etc.
• Owner is usually an independent enterprise, institution,
governmental entity, etc. that is competent to certify the
products concerned (My: ‘person’)
• Registered in trademarks register
11
How does certification mark work?
• Rules of use
– Cases in which the owner is to certify the goods/services
• quality, composition, other characteristics
– Cases in which the owner is to authorize the use
– Other provisions required by Registrar
• e.g. control measures, sanctions
• My: Mark must be to the public advantage
• Authorization to use
–
–
–
–
anyone who meets with the prescribed standards
not confined to membership
generally: licence agreement (fee)
owner not allowed to use
• Control
12
Benefits
• For Consumers:
– Guarantee for consumers of certain
quality
• For SMEs:
– Benefit from the confidence that
consumers place in users of certification
mark
– Strengthen reputation
13
• For example, certify that:
 Product is handmade
 Certain ecological requirements have been
respected in the production procedure
 No children were employed in the production
process
 Products have been produced in specific
geographical region
 Products are made 100% of recyclable materials
 Products are made by indigenous group
14
Case Study: “RUGMARK”
• 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
15
Case Study: “RUGMARK”
• To be certified by RUGMARK, carpet-manufacturers
sign legally binding contract to:
– Produce carpets without illegal child labor
– Register all looms with the RUGMARK Foundation
– Allow access to looms for unannounced inspections
• Carpet looms are monitored regularly by RUGMARK
• Each labeled carpet is individually numbered
 enables origin to be traced back to the loom on which is was
produced
 also protects against counterfeit labels
16
Case Study: “WOOLMARK”
– Registered by Woolmark Company
– Quality assurance symbol denoting that the
products on which it is applied are made
from 100% wool and comply with strict
performance specification set down by the
Woolmark Company
– Registered in over 140 countries
17
“Through ownership and licensing of the Woolmark,
we provide unique worldwide quality endorsement.
Our brands and symbols are protected by rigorous
and extensive control checks and recognized globally
as unrivalled signs of quality and performance.
If a wool product carries our brands, it carries our
guarantee of product quality.”
18
Case Study: “TOI IHO”
• Exciting initiative for Maori artisans,
artists and businesses
• Denotes that products are authentic
quality indigenous Maori arts and
crafts
• The creation of the mark was
facilitated by Te Waka Toi, the Maori
arts board of Creative New
Zealand, in consultation with Maori
artists.
19
Case Study: “CRAFTMARK”
– Registered by the All India Artisans and
Craftworkers Welfare Association (AIACA)
– Logo symbolizes ‘threads’ from craft
product. Also metaphor for the hands of the
craft worker.
– Certifies that product is genuine Indian
handicraft or handloom
20
– Minimum standards + norms for
labeling
– Fee based on turnover of the
applicant
– Increases consumer awareness
of distinct handicraft traditions
- AIACA is working towards
building the Craftmark into a
strong brand
-
national advertising campaign
in-store displays and posters
direct mailing to consumers
tying up with international craft
support organizations to
publicize the Craftmark in other
countries
- Website: www.craftmark.org
21
Case Study: “SIRIMLINK”
• SIRIMLINK provides access to technical
information, stored in SIRIM
– Malaysian Standards
– Malaysian Patents
– Technical Abstracts from journals
– Malaysian Experts in Science and Technology, etc
• Owner = Sirim Berhad (government owned
company)
• Logo can be used by? Rules of Use?
• Certifies what?
22
Case Study:
“VETERINARY HEALTH MARK”
– Awarded under the
Veterinary Inspection and
Accreditation Program of
the Department of
Veterinary Services
(DVS), Ministry of
Agriculture, Malaysia
– Given to plants processing
livestock products
23
– Accredited plants allowed to
imprint the logo on the label
of approved products /
packaging material
– Benefits:
• Consumer confidence on
food safety
• marketing tool
• easier acceptance in
applications for access to
foreign markets
24
3.
Collective Marks
My: not available
25
What is a collective mark?
• Sign capable of distinguishing the origin or
any other common characteristics of
different enterprises which use the sign
under the control of the registered owner
• Typically, the owner of collective mark is an
association of which the producers are
members
• Registered as such in trademarks registry
26
How does collective mark work?
• Rules of use
– persons authorized to use
– criteria for membership
– conditions of use
• e.g. particular features/qualities of the
products
– sanctions against misuse
• Authorization to use
– membership
– application or automatic
– comply with the rules
• Control
27
• Thus, function of collective mark is to
INFORM the customers :
– About the origin of the products
• e.g. ceramic artisan, member of a specific association in
Thailand
– About a level of quality or accuracy, geographical
origin, or other features set by the association
28
Benefits for SMEs
1. Economies of scale (registration cost, advertising
campaign, enforcement, etc.)
2. Reputation acquired on the basis of common
origin or other characteristics of the products
made by different producers/traders
3. May facilitate cooperation amongst local
producers/traders
29
4. Creation of collective mark hand in hand with
development of certain standards and criteria (rules)
and common strategy
 collective marks can become powerful tool for
local development
 harmonization of products/services, enhancement
of quality
 no licenses
30
Example: “Interflora”
• To buy, order and send flowers at almost anywhere in the
world
• > 70.000 florists in 150 countries
• emblem : Mercurio with flowers in hand
• Slogan: “Say it with flowers"
• Guarantees freshness, flower quality and value of every
Interflora relay order
31
CASE STUDY: “La Chamba”
32
Project “La Chamba, Tolima”
The project
• 3 municipalities: El Guamo,
Flandes, El Espinal
• Population: 12.100 inhabitants
• 1.300 ceramic artisans (10%)
• 284 workshops
• 70% women
• 12% without formal eduction
• 21% without public services
•
33
Mapa del Tolima
Project “La Chamba, Tolima”
The product
Added value:
• traditional know-how
transferred from
generation to generation
• 89%: handwork or with
simple tools
34
Project “La Chamba, Tolima”
Organization
Problems:
•
•
•
•
little enterprise management
capacity
paternalism
individual leaders
lack of organizational structure
Solution:
•
•
•
cooperation
development of enterprise
management capacity
common strategy
35
Project “La Chamba, Tolima”
Marketing
Problem:
• Added value (handmade, tradition, quality) of the product
not advertised
• Need to find new clients, enter new markets
Solution:
• Certification “Hecho a Mano” (handmade)
• Creation of culture of CONSISTENT QUALITY
• Collective Mark (joint project WIPO)
36
Project “La Chamba, Tolima”
COLLECTIVE MARK
Association:
• Members allowed to use the collective mark
• Exchange of experiences
• Joint advertising and promotion
Regulation of use:
• Production process (mine extraction, preparation of clay, moulding, heating,
glazing)
• Quality control and inspection
 homogeneous products
Objectives:
• Strenghten image of Chamba ceramics
• Reputation of consistent quality and tradition
• Differentiate on the market Chamba ceramics from other ceramics
• Preserve cultural heritage
• Foster commercialization
37
Collective Mark
Certification
•Only members that comply •Anyone who complies
•Control by association
•Control by independent
entity: stronger
•Simple authorization
•Authorization through
license agreement
•Free use
•Fee
•Owner allowed to use
•Owner not allowed to use
•Cooperation
38
4.
Geographical Indications
My: Geographical Indications Act 2000
39
What is a GI?
• Sign used on goods that have a specific
geographical origin and possess qualities or a
reputation that are due to that place of origin
• Source identifiers
• Indicators of quality
• Not created. Can only be recognized
40
• Most commonly, consists of the name of the
place of origin of the goods
• Country, region, city
• E.g. Champagne (France), Havana (Cuba)
• In some countries : can also be figurative sign
• E.g. Eiffel tower, Egyptian pyramid
• E.g. birds, animals associated with a place
Matterhorn,
Switzerland
Eiffel Tower,
Paris
Tower Bridge,
London
41
How does a GI work?
• Authorization to use
– Collective right of use
– Each enterprise located in the area has right to use
• For products originating from that area  LINK
• Possibly subject to certain quality requirements
• Link between product and place
• Place where product is produced (industrial products,
crafts)
• Place where product is extracted (clay, salt)
• Place where product is elaborated (liquor,cheese)
42
•
•
Unauthorized persons may not use GIs if
such use is likely to mislead the public as to
the true origin of the product
•
for not originating from geographical place
•
for not complying with prescribed quality standards
•
Stronger protection for wines & spirits
Sanctions:
–
Court injunctions preventing unauthorized use
–
Payment of damages
–
Fines
–
Imprisonment
43
GI – Who does what?
Government:
– supplies the legal framework
– approves GIs, verifies compliance
– “external” (independent) control system + enforcement
Producers groupings:
– talk to government
– help define the mandatory specifications (book of
requirements) to be met
– ‘’internal”control
44
Typical examples:
• Agricultural products that have qualities that derive
from their place of production and are influenced by
specific local factors, such as climate, type of soil,
altitude, etc
– E.g. wine, champagne, cognac, port, sherry, whiskey
– E.g. cheese, yoghurt
– E.g. olive oil, ham, potatoes, honey, rice
45
Typical examples:
• Also: handicrafts and medium-tech goods
–
–
–
–
E.g. ‘Hereke’ (Turkey) for carpets
E.g. ‘Limoges’ (France) for porcelain
E.g. ‘Swiss’ for watches
E.g. ‘Arita’ (Japan) for ceramics
46
Examples in Asia:
Laos:
• Coffee and Green tea from Paksong
• Silk from Pak Eum
• Algea from Luang Prabang
• Benzoin from Laos
Indonesia:
• Tobacco from Deli (Sumatra)
• Cocoa from Bone Bone
• Coffee from Kintanami (Bali) or Toraja
• Clove from Ternate
Benzoin raisins
clove
47
Examples in Asia:
Vietnam:
• Pepper from Phu Quoc
• Pomelo from Nam Roi
• Tan Lam Coffee
Pomelo Nam Roi
Cambodia:
• Khampot Pepper
• Prahoc
• Durian
durian
Philippines:
• Dried mangos from Cebu
Cebu mango
48
Case Study: “Sarawak pepper”
- Exported throughout the world
over the last 100 years
- Gained international recognition
by chefs and gourmets
- Distinctive flavour and taste
through years of agro-research
- Sarawak’s tropical climate and
fertile hill slopes are ideal for
pepper cultivation
49
Geographical Indications No: GI03-00001
Class: 3
Name of Registered Proprietor: Pepper Marketing Board
Registered From: 4th day of November 2003
Expiry Date: 3rd day of November 2013
Goods: In respect of the following goods
SARAWAK PEPPER IN ANY FORMS (WHOLE,
GROUND, PICKLED, ETC). ALL GRADED PEPPER,
VALUE ADDED PEPPER PRODUCTS AND PEPPERBASED PRODUCTS FROM MALAYSIA
50
Quality, Reputation or Other Characteristic
Sarawak, the largest state in Malaysia is an establish producer of “King Of Spice”-Pepper,
where about 98% of pepper production in Malaysia comes from Sarawak. Pepper cultivation in
Sarawak was commercialized by the White Rajah Charles Brooke with the introduction of
‘Gambier and Pepper Proclamation’* in the 1870’s. Ironically, Sarawak a latecomer, went on to
become a significant producer in world pepper industry. Starting with a modest output of 4
tonnes* in 1870s, pepper production now averages 30,000 tonnes a year (over 90% is for
export) and in 2002, Malaysia was the fourth biggest pepper exporter in the world. Currently,
there are about 70,000 pepper farmers throughout Sarawak and their cultivation covered about
14,000 hectares.
Sarawak Pepper is synonymous with quality in the spice trade and it has been recognized in the
international market as one of the high quality pepper. Nowadays, Sarawak Pepper Sarawak
value-added pepper such as Creamy White Pepper (CWP), Mikrokleen (MK) and Naturally
Clean Pepper (NCP) are well accepted, particularly by clients who would not compromise on
quality. (Refer to the brochures on CWP, MK and NCP and Grade Specification of Sarawak
Pepper attached). In this respect, Pepper Marketing Board (PMB) as one of the main
government agencies entrusted with the development of the pepper industry in Malaysia has to
ensure that only quality Sarawak Pepper will be exported to overseas.
In order to enhance buyers confidence towards Sarawak Pepper, the Board has embarked on
efforts to improve the quality of Sarawak Pepper right from the farm level up to the export level.
In 2002, the board was awarded with SAM ISO 17025 accreditation and ISO 9001:2000 for
Testing Laboratory and Statutory Grading respectively. This recognition has to put PMB on the
fast track of pepper industry by having a testing laboratory and grading unit with worldwide
recognition.
51
How is a GI protected?
• National
• Regional
• International
52
Protection on national level
– Specific title of protection
• Registration with IP office (Russia)
• Decree (France)
• Special laws for the protection of GIs (India, Malaysia)
– Act of public law
– Defines area of production and production standards
– Enforcement through public law bodies (fair trading bodies, consumer protection
bodies etc)
– Unregistered: through Passing-off, Unfair
Competition, Consumer Protection laws
• if reputation + misleading
• Pass off: e.g. Scotch whisky – Peter Scot in India
• Cons prot: e.g. ‘made in Japan’; Egyptian cotton
– Only successful if you can prove damages (if goodwill)
– Protection only effective between parties of the proceedings. Entitlement
to protection of given GI must be demonstrated every time enforcement is
sought.
53
Protection on national level
– Certification marks or collective marks
• May certify or indicate origin of products
• Cert: e.g. in the U.S.A.: Darjeeling, Swiss, Stilton
• Coll: e.g. Japan; agricultural label in France
54
Protection on international level
– No legally binding international register for
all GIs
– Bilateral agreements
• e.g. EU-Bulgaria for wine names
– International treaties
55
– International treaties
• TRIPS:
– minimum standard of protection for WTO members
– if misleading or act of unfair competition
– enhanced level of protection for wines and spirits
– no protection if GI is generic term for the goods in the
member state
• Lisbon:
– international registration system
– member countries must prohibit imitations, including
terms like “type” or “kind”
– cannot become generic, as long as protected in country
of origin
56
Benefits for SMEs
• GIs shift focus of production to quality
 increased production
 local job creation
• Reward producers with higher income in
return for efforts to improve quality
• Provide consumers with high-quality
products whose origin and mode of
production is guaranteed
57
Disadvantages
– Inconsistent protection
• Absence of GI system in many countries
• Civil law
– Registration
– Only similar goods
• Common law
– Repution enough (e.g. Champagne in India)
– Also dissimilar products
• Additional protection for wines and spirits
– GIs may become generic terms (e.g. Chablis
in America, China for porcelain)
58
GI
•Protects indication that links
product’s origin and
quality/reputation based on that
origin
Certification
•Protects certification of product’s
particular characteristics (not
necessarily origin)
•Most often: public right; owner=
State
• Most often: private right; owner
= trade association or producer
group
•Anyone can use
•License needed
•Proscribed list of unauthorized
actions
•Protection against those who
don’t have license
•Action: private + public
•Action: owner of certification59
4.
Conclusions
60
•
Trademark is powerful instrument to differentiate your
individual products from those of your competitors
•
However, in order to be effective (strong reputation), the
enterprise in question must have a high level of
organization and production
•
Collective marks, certification marks and GIs may be
useful (additional) tools to help enterprises overcome
the disadvantages associated with their small size and
isolation in the marketplace
61
Economic benefits of collective
marks, certification marks and GIs
• Capable to acquire a high reputation
• Protection can be maintained indefinitely
• No monopoly, but simply limit group of
people who can use a specific symbol
• Protect goodwill and reputation acquired
by a group of producers over centuries
62
IP and Marketing
Trademarks
• Collective marks
• Certification marks
• GIs
Individual marketing
Joint marketing
•Origin: enterprise
•Individual reputation
•Origin: geographical
•Common reputation,
characteristics,
qualities
63
Lien Verbauwhede Koglin
WIPO, SMEs Division: www.wipo.int/sme/
64