25 July 2015 | Yerevan, Armenia Noric Dilanchian | Dilanchian Lawyers & Consultants Intellectual Property Summer Academy Intellectual Property Rights Center of Armenia
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How legal design builds a trade mark monopoly
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Understand and control the full trade mark lifecycle A. Mark selection & legal design
B. Search & application drafting
C. Application filing and registration
D. Consistent and managed use
Lack of “legal design” builds weak marks or Frankenstein monsters. Source of graphics: logomashups.tumblr.com
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The golden thread of intellectual property is originality
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Trade marks are strategic, and need management Product Sale Collateral • • •
• •
• • • •
Email signature block Letters Forms Brochures
Marketing Collateral • • •
Social Media Publications Blog Articles
• • • • •
Packaging Labels Banners Swing tag Guides
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Website Banner Letterhead Invoice Statement Receipt Business Card
Communication Collateral
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Understand how trade marks build monopoly power
A legally strong trade mark or brand: • Differentiates and arms a product, service or organisation • Becomes a symbol of quality, value and trust • Secures wealth in goodwill and brand loyalty • Encourages employees, investors, licensees, collaborators and donors • Stores value as an asset recognised in law and accounting principles
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Ethiopia registered coffee trade marks and made use subject to a licence agreement. It aims to increase the price for raw coffee.
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Multi-‐disciplinary decisions increase monopoly Legally weak trade marks are harder and more expensive to protect in both negotiations and in courts of law. Here is a typical birth of a trade mark scenario. 1. Domain name registered by founder of a venture – “Wow, it was available!” 2. Company name registered by accountant – “I spelt it differently, for a reason.” 4. Trade mark registered by founder/attorney – “We’ll file it immediately.” The underlined 4 people made 4 separate decisions. With little co-‐ordination in their thinking -‐ inconsistency is the likely result. This produces trade marks and brands that are legally weak, ie they have limited monopoly rights. To create a legally strong trade mark, decisions makers in the team should wear many hats. Multi-‐disciplinary, co-‐ordinated and consistent decisions are needed.
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3. Logo by graphic designer – “It’s got it all, name and design, looks great, eh?”
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Integrate management, design and legal decisions Legal design involves integrated management, design and legal decisions. For example, the focus of a graphic designer is on one part of the job for a trade mark or brand, eg fonts, colour palette, symbols and layouts. There is more to consider. 1 Management…
2 Design…
3 Legal… www.dilanchian.com.au | Copyright © Dilanchian 2005-2015
Legally weak trade marks result from unco-‐ordinated and inconsistent decisions in separate silos by different people.
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Trade mark application workflow, focus on task 1 Trade mark application preparation tasks: Select the trade mark
2.
Decide on the applicant to own the registration
3.
Select the country for filing the application
4.
Select goods/services classes
5.
Craft goods/services descriptions for each class
Descriptive marks describe a feature of the product or service, eg “Chairs+” for a company that sells seating.
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1.
For task 1 -‐ a basic principle in trade mark law is that a mark cannot be registered if it is descriptive.
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What to register: conventional trade mark types 1. Plain text mark
BEELINE | AMERIA | TOYOTA | JUST DO IT
2. Stylised text mark
4. Composite mark
5. Shape mark
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3. Device mark (eg logo or label)
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What to register: unconventional trade mark types
Colour Mark
Twentieth Century Fox registered as a US trade mark its movie opening music.
A company in Australia registered a “Eucalyptus Radiata” scent as its trade mark for “golf tees”.
Cadbury purple colour registered trade mark for chocolate
(usTM #74629287)
(auTM #1241420)
Tiffany blue colour registered trade mark for jewelry
Series Mark Lamborghini’s moving image trade mark registration in EU for doors opening and turning upward. (CTM #1400092)
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Scent Mark
Sound Mark
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Questions to test the strength of a proposed mark Management 1.
Is the mark effective for search engine optimisation?
2.
Is the mark already in common use by traders in the market?
3.
Is the mark costly to market and protect?
1. Is the mark’s look, sound, concept and spelling a problem? 2. Is the mark appropriate for the format for use (eg online)? 3. Is the mark translatable for markets abroad? Legal 1. Is it available for use as a trade mark, domain name, social media handle, company name, and brand name? 2. Is it registrable (eg not descriptive, geographic or surname)? 3. Is it a prohibited mark (eg government department names)?
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Design
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Do a thorough trade mark search, use professionals
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Trade mark registers
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Company name registers
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Domain name spaces
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Social media platforms
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Product directories
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General web search
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Once you select what to register, do a thorough trade mark availability and registrability search. A search: (1) avoids wasted time and money; (2) minimises legal risk; and (3) provides ideas for improving the legal design of marks.
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Legal Design Case Study:
Brand Architecture for a product -‐ wine
The colour may be a brand eg Karas gold cap with Armavir Vineyard logo
2012 -‐ The year of vintage is a brand for wine connoisseurs
The variety can also be a brand, eg CHARDONNAY Armavir -‐ The winery or vineyard may be a brand Armenia -‐ The geographic region may be a brand
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Clay urn -‐ The logo may be a brand
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Legal Design Case Study:
Brand Architecture for an organisation This case study illustrates how a graphic, organisation name, descriptor and tag line build and integrate to create a brand. Importantly, separate elements of the brand could be separate trade mark applications.
A Breath of Fresh Air™
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Separate brand elements work in sync. • The circular graphic on its own, with the concept of CO2. • The graphic combined with an organisation name and descriptor (“oxygen” +“accounting”). • The tag line (“A Breath of Fresh Air”).
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Consistent use and documentation builds monopoly Consistent, managed use strengthens trade marks over time. 1. Use IP notices:
® TM *Trade mark of xxx Use a trade mark in its registered form, ie same spelling, typography, colour and arrangement. 3. Use an IP register Record registered and unregistered trade mark and other intellectual property assets in an IP register. 4. Use IP policies and branding guides Create policies, guides and user manuals setting out when, where and how an organisation’s brand elements are to be used.
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2. Make use consistent
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Overview on how to build an intense monopoly 1.
Make careful and strategic trade mark decisions on what to register, in what countries to register, in which name to register and how to register (eg consider trade mark types, classes and descriptions).
3. Control the full trade mark lifecycle. 4. Prepare trade mark management documentation and processes, including contracts, registers, policies, templates, and house style guides.
Name registered
Trade Marks
Trademark
Exclusive Intense Area
Monopoly
Registered & Unregistered
unregistered
Social Trade Secret Media Handles
Copyright Domain Name
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2. Build brand architecture, eg select brand elements that can work with the trade mark, eg descriptor, tag line, labels, swing tags
Patent
Company
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Questions Noric Dilanchian www.dilanchian.com.au
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[email protected]
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