Intellectual Property and Pharmaceutical Branding Dr. Guriqbal Singh Jaiya Director Small and Medium-Sized Enterprises Division World Intellectual Property Organization firstname.lastname@example.org www.wipo.int/sme Global Security Study: Perspectives for Life Sciences • ―The chief security officer is the newest member of the C-suite in many life sciences companies,‖ said Amry Junaideen, DTT life sciences leader for Security & Privacy Services and a principal with Deloitte & Touche LLP, who oversaw the study. ―Life sciences companies realize that security is an executive level issue, and applies to more than just information technology security. Recent trends in the industry – including global supply chains, increased regulatory pressures, outsourcing, and the importance of brand reputation – necessitate that the CSO position is a vital role in the success of any organization.‖ • ―Strategically, tracking mechanisms reduce the risk of product theft and counterfeiting, allow increased precision of drug recall, and help protect the organization‘s brand reputation at a time of increasing concern over counterfeit drugs and the subsequent health effects.‖ • http://www.deloitte.com/dtt/article/0%2C1002%2Ccid%25253D119421%2 C00.html Brand Medicine: The role of branding in the pharmaceutical industry By Tom Blackett & Rebecca Robins Palgrave (2001) Branding in the Pharmaceutical Industry By Tom Blackett, Group Deputy Chairman of Interbrand • With the gradual decline in the power of the patent to secure future business earnings, and the rise in patient power and the availability of medicines, the brand will play an increasingly important role. First in helping customers to find and select products which are suitable for their requirements, and then as a symbol of high quality and value. • This is exactly the role that the famous Coke and Pepsi brands play - and these brands now represent the most valuable assets that their owners possess (in the case of Coke, some 50 per cent of the Coca-Cola Corporation's stock market value). There is no reason why this should not become the case in the pharmaceutical industry. Indeed, if the major drug companies are to maintain their historically high levels of profitability against a background of declining R&D productivity, then it must do. http://www.samedanltd.com/members/archives/PMPS/Spring2002/TomBlackett.htm Pharmaceutical Branding Strategies • Datamonitor October 19, 2001 147 Pages • Pub ID: DFMN734790 • US $: 6,100.00 Known as EMD Biosciences in North America and Merck Biosciences in all other countries • Product brands – Calbiochem® • Novabiochem® • Novagen®Through EMD Biosciences / Merck Biosciences, the product brands provide a single source for a broad range of optimum quality research products used worldwide in disease-related life science research. With more than 15,000 products in our portfolio, we offer innovative solutions to scientists at the cutting edge of research. • Calbiochem® Biochemicals offers a wide range of biochemicals and kits for the study of disease states, signal transduction, apoptosis, cell cycle and protein chemistry research. Calbiochem® Biochemicals also carries a comprehensive range of general biochemicals including detergents and proteases. • Calbiochem® Immunochemicals offers high quality immunochemical reagents. In January 2004, the immunochemical product lines of Calbiochem® and Oncogene Research Products™ were consolidated to form a broader immunochemical product line under the Calbiochem® Immunochemicals brand. The Oncogene Research Products™ brand has supplied innovative, high quality, application tested antibodies and assay kits in many research areas, including apoptosis, cancer, cell cycle and proliferation. • The Novabiochem® brand is the industry leader in the manufacture of innovative resins and reagents for peptide synthesis, solid phase organic chemistry and combinatorial chemistry. The Novabiochem® brand is highly respected worldwide for the wealth of technical information available in catalogs and online. • The Novagen® brand offers world-class protein expression and purification products. With the expansion in proteomics research, the Novagen® brand is well placed to support scientists with tools for sample preparation and high-throughput purification and expression systems. • http://www.merckbiosciences.co.uk/html/cnuk/about-us.html Completion of Acquisition of Boots Healthcare International • Reckitt Benckiser plc (RB.L) today announced that the acquisition of Boots Healthcare International (BHI) has been completed with effect from 1st February 2006. Bart Becht, Chief Executive Officer of Reckitt Benckiser, commented today:- ”We are excited at getting ownership of BHI. It will give us a platform for additional growth at very attractive margins. BHI brings three new Power Brands in Nurofen, Strepsils and Clearasil whose distribution can be substantially expanded over time. In 2006, our major focus for this business will be on successful integration and extracting the promised synergies while gradually preparing the business for growth.” • http://www.reckittbenckiser.com/newsroom/news_article1.cfm ?pressreleaseid=20050 Modern Medicines Vs Functional Foods and Alternative Medicines Functional Foods (or nutraceuticals as they are sometimes called) and alternative (natural) medicines have become immensely popular with consumers who attach a high importance to maintaining healthy lifestyles. A few years ago interest in such products, would have been regarded as faddish. Nowadays their use is considered perfectly normal – and indeed a very sensible alternative to a visit to the doctor‘s surgery. Both functional foods and alternative medicines are unrestricted in their availability, and the power of choice lies entirely with the consumer. ‗Conventional‘ medicine still dominates in the West, but such is the interest in natural remedies that it is not inconceivable that in many therapeutic areas they may come to dominate. Mature Products • When a marketing manager treats a mature product as a commodity, he or she may feel the only option is to compete on price. But if one examines the mature products in the Life Sciences market, it becomes apparent that there are wide discrepancies in prices, profit margins and market share. This would not occur in a true commodity market. In fact, what is being observed is brand equity at work. Some vendors are able to charge far higher prices than others, for essentially the same product, simply because of the perceptions, beliefs and behavior exhibited by their customer base. As products mature, effective marketing designed to build brand equity becomes all the more critical. • http://www.biotactics.com/Newsletter/v1i1/Brand2.htm 1961 Coca Cola original vintage advertisement. Features a Valentine's Day The Value of Brands Global Brand Scoreboard 1. Coca-cola 67.52$ billion 2. Microsoft 59.95$ billion 3. IBM 53.37$ billion 4. GE 46.99$ billion 5. Intel 35.58$ billion (German survey January 17, 2006) Branding As An Internal Competency In Pharma We are focusing on branding because it adds value to the organization. Schwarz Pharma is a company with an emerging pipeline that will drive our future. If each aspect of our organization does their part to help us properly brand and position these products, we will be able to leverage opportunity into market value. My best advice is to take branding seriously because it adds great value – not only to your products, but also to your company. We are not just talking about improving the bottom line, we are talking about a direct impact on shareholder value. I have seen the difference in company valuation between pharmaceutical firms that have built solid brands and those who have not. This is too important not to treat as a strategic issue. Thomas J. Willard, Vice President, Marketing, Schwarz Pharma Inc., Naming Drugs • Chemical Name: Nomenclature rules of the International Union of Pure and Applied Chemistry (IUPAC). • Nonproprietary Name: Official nonproprietary names given by national and international nomenclature bodies. Jointly with the World Health Organization’s (WHO) International Nonproprietary Name (INN) Committee: (PARACETAMOL) • Established Name: found in the official (e.g., The United States Pharmacopeia); or given by the regulatory agency • Proprietary Name: Trademark (CROCIN) • Trivial Name: coined for convenience such as ASA (acetylsalicylic acid), HCTZ (hydro- Drug chlorthiazide), or AZT (azidothymidine). • Pharmacy Equivalent Name (PEN): primarily recommended for combination products, for example, Co-triamterpharzide is a representation of the Combination of triamterene and hydrochlorothiazide. Paracetamol • Crocin® Other common brand names for it include Tylenol in the US and Canada, Panadol in the UK, Tachipirina and Efferalgan in Italy, Crocin in India, Gelocatil in Spain, Alvedon in Sweden, Panodil in Denmark and Iceland and Depon in Greece. • IUPAC Name: N-(4- hydroxyphenyl)ethanamide • Chemical Formula C8H9NO2 A Typical Primary Display Panel Brand Awareness in the Life Science Market • With fierce competition, industry consolidation and rapid technological changes, establishing a strong brand identity in the life sciences marketplace is more critical than ever. Designed to help you understand the role brand perceptions play in a scientist's decision to choose one supplier over another, this study examines the following ten product categories in one report (pdf): • Cell Biology Kits & Reagents • Cell Culture Media & Reagents • Chromatography Products & Supplies • Electrophoresis Products & Supplies • High Throughput Screening & Analysis Systems • Immunology Kits & Reagents • Molecular Biology Kits & Reagents • Protein Kits & Reagents • Scanners, Visualization & Image Analysis Systems • Sequencing Equipment & Instrumentation • Over 2,000 life scientists responded to our detailed questionnaire regarding their perceptions of the market's leaders and what drives their purchase decisions. • http://www.bioportfolio.com/reports/Brand%20Awareness%20in%20the%20Life% 20Science%20Market.htm Brand Engineers—The Positioning Agency Brand Engineers focuses exclusively on developing and validating highly focused and differentiated positioning for new and existing Brands in the pharmaceutical and biotechnology industries, with a particular emphasis in specialty care. http://www.brandengineers.com/about.html • Medibrand is a collaboration of: • Creative Group Members • Branding Strategists • Life Sciences Marketing Professionals • Attorneys/Legal Research staff and • Medical Consultants. • http://www.medibrand.com/ Branding Drugs for a Market of One • It becomes apparent that pharmacogenomics, somehow, will change the usual marketing rules. • How do you brand the same drug for three different diseases? Do you create three different identities (like GlaxoSmithKline has done for bupropion, which is branded as Wellbutrin for depression and Zyban for smoking cessation) or have a single, super brand? • "Branding will be more difficult because companies won't have the patient population to support heavy advertising," argued Nathan Dowden, a managing partner with the Frankel Group. However, he conceded that strong branding for smaller populations is not impossible and points to Gleevec, Novartis' cancer drug as an example. • Gleevec treats a subset of people with leukemia who have white bloods cells with a particular chromosome abnormality, easily identified with a microscope. The drug targets the genetic mechanism caused by the abnormality that leads to cancer. Since its launch, it has been highly successful. Every physician knows that if a leukemia patient has the Philadelphia chromosome, he needs Gleevec. • http://www.brandchannel.com/features_effect.asp?pf_id=131 WHAT IS A TRADEMARK? • Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. • Words including personal names, letters, numerals, figurative elements (logos), combination of colors, sounds, smells, etc • Visually perceptible; 2D or 3D (shape) GUIDE on TRADEMARKS Brand/Trademark •Trademark: Legal concept •Brand: Marketing concept •Registration of a brand adds value as it protects its other inherent assets •Brand profile and positioning may vary over time, but trademark protection remains the same Value of Strong Brand A Strong Brand brings with it the opportunity to raise the profile of a product and the company that sells it, setting them apart from rivals in the marketplace. Value of Strong Brand Contd... •A Strong Brand can also command a price premium for its producer, and can reduce the price elasticity, that is, soften consumer reaction to price increase/change Brand Equity (IBEF) Brand equity is defined as the customers' perception of a brand's value, and is generally considered to be composed of five major elements: • Brand awareness • Brand loyalty • Competitive advantage • Perceived quality/Value • Brand association Brand Identity • Mind share (cognitive level) • Heart Share (Emotional relationship) • Buying intention share • Self share (self-expression and self- design) • Legend Share (cultural-sociological proposition; legendary; mythological) Corporate Image, Product Positioning and Brand Equity • TRUST and RELATIONSHIPS are the bulwark of any enterprise, be it big or small, with a global or local ambit, having a traditional or modern management style, high tech or low tech, leader or follower, and irrespective of it being a part of the old world of ‗brick and mortar‘ or a rising star reliant on e-commerce •Credence Goods Brand Strategy • In recent years, the most successful pharmaceutical companies have been distinguished as much by their marketing clout as their scientific innovation. The growing importance of creating strong brands, supported by focused marketing plans, have prompted many pharmaceutical companies to adopt business plans that allocate more resources to brand building. • This competitive new business environment means increased risk - the launch of a lifestyle drug supported by direct-to-consumer advertising can cost hundreds of millions of dollars, with most of the cash spent before patients have even paid for their prescription. Auquisition of brands • Alliance Pharmaceuticals, a privately owned specialty pharmaceutical company based in Chippenham, UK, is one of the companies that successfully saw this opening – from start of trading in July 1998, Alliance now has 23 acquired brands, with turnover of around £10 million. The company specializes in acquiring brands in a range of therapeutic areas, which would benefit from some additional TLC, or have become surplus as the result of a merger. Andrew Dean, Business Development Director, describes this as ―repairing and polishing the family silver.‖ • The process of acquisition of established brands can involve developing new indications or doses, or simply improving supply and updating paperwork. An example of the development of new uses is amantadine – originally launched as Symmetrel for Parkinson‘s disease, Alliance is extending its use in Parkinson‘s disease and as an antiviral (Lysovir) for use in influenza. Alliance is the primary supplier of oxytocin in the UK, and supplies Nu-Seals (enteric-coated aspirin), one of the biggest brands in Ireland, for cardiovascular indications. Its most recent agreement was with Lilly for Nu-Seals – other partners include Procter & Gamble and Novartis. Investors and collaborators include well-known companies such as KPMG, Eversheds and the Bank of Scotland. • ―Established brand acquisition favors products which will otherwise fall by the wayside – these can provide good cash flow, which in turn both funds future development and gives investor and licensor companies confidence,‖ Mr Dean said. Advancis Pharmaceutical Acquires Keflex Brand From Lilly • GERMANTOWN, Md., July 1 /PRNewswire-FirstCall/ -- Advancis Pharmaceutical Corporation (Nasdaq: AVNC), a pharmaceutical company focused on developing and commercializing novel anti-infective products, today announced it has acquired the U.S. rights to the Keflex(R) brand of cephalexin from Eli Lilly and Company (Lilly) (NYSE: LLY). Under the terms of the agreement, Advancis paid Lilly $11 million for the exclusive rights to manufacture, market and sell Keflex (cephalexin capsules, USP) in the United States. With the acquisition, Advancis acquires Keflex trademarks, technology, and new drug applications (NDAs) supporting the approval of Keflex. • Following a transition period, Advancis will assume product inventory and begin marketing and distributing the Keflex brand. Cephalexin is the third most prescribed outpatient antibiotic in the United States, with over 24 million prescriptions written and sales of $140 million in 2003. Keflex is the most- recognized brand of cephalexin in the United States with more than 15 million prescriptions written each year. Although the majority of these prescriptions are substituted with generic cephalexin, Lilly's Keflex net sales in 2003 were approximately $4 million. First introduced in the 1970s, Keflex is most commonly prescribed for skin and skin structure infections. In addition to assuming sales and marketing responsibilities for Keflex, Advancis expects to begin clinical development of an enhanced cephalexin utilizing Advancis' proprietary once-a-day pulsatile dosing technology called PULSYS(TM). Trust is to Business What Trademark is to Brand •Brand Equity built on the foundation of a protected Trademark •Brand/Trademark can: (a) be disposed off separately from other company assets (Free-standing Institutions); and (b) give rights that can be legally protected Centrality of Knowledge KNOWLEDGE underpins PERFORMANCE But... Wolfgang Stofer, Director of BMW‘s Treasury Department: ―Whenever the technology becomes commoditized, we buy it from third parties‖. Role of Brands: For the Company In a highly competitive world where manufacturers are losing their pricing power, branding is seen as a way of clawing back some of the lost influence. Role of Brands: For the Company •Real and marketable asset •Higher profit margin (Price Premium) •Incremental cash flow •Reduces cash flow sustainability risk Role of Brands: For the Company •Accelerates speed of cash flow •Increases bonding and customer loyalty •Increased market share •Entry barrier •Limits growth of competitors Role of Brands: For the Company •Requires lower investment levels •Better negotiating position with trade and other suppliers •Facilitates higher product availability (better distribution coverage) •Dealers order what customers explicitly request Role of Brands: For the Company •Extends products‘ life cycle •Allows lower cost brand extensions •Can be the basis for international expansion •Provides legal protection; •Licensing; Franchising; Merchandising •Buffer to survive market or product problems Role of Brands: For the Company •Value of Brands is a key determinant of enterprise value and stock market capitalization •Financial markets reward consistently focussed brand strategies •Brand management a vital ingredient for success in corporate strategy But... •Brand Building Requires Time and Money; •Brand Nourishing Should be a Continuous Process; •Higher Profile/Exposure, Greater its Vulnerability; •Can be Target of Counterfeiting/Criminal Activities; Time required... ―It took seven years of marketing before car buyers began to recognize that the BMW brand was distinctive‖: Jorg Zintzmeyer, board member of Interbrand, p 33 of FORBES Global, July 22, 2002 in ―The best- driven brand‖ by Nigel Hollway So... The cost of building a brand can be very substantial over a period of time. That is why buying a brand sometimes makes sense to many companies. Creating/Designing a Trademark • Inherently distinctive • Easy to memorize and pronounce • Fit the product or image of the business • No legal restrictions • Positive connotation USING A TRADEMARK IN ADVERTISING • Shall be used exactly as registered • Protect TM from becoming generic – Set apart from surrounding text – Specify font, size, placement and colors – Use as an adjective not as noun or verb – Not plural, possessive or abbreviated form – Use a trademark notice in advertising and labeling ® • Monitor authorized users of the mark • Review portfolio of trademarks • An evolving trademark USING A TM ON THE INTERNET • Use of TM on internet may raise controversial legal problems • Conflict between trademarks and domain names(internet addresses) - cyber squatting • WIPO procedure for domain name dispute (http://arbiter.wipo.int.domains) USING A TRADEMARK AS A BUSINESS ASSET • Licensing: owner retains ownership and agrees to the use of the TM by other companies in exchange of royalties > licensing agreement (business expansion/diversification) • Franchising: licensing of a TM central to franchising agreement.The franchiser allows franchisee to use his way of doing business (TM, know-how, customer service, s/w, shop decoration, etc) • Selling/assigning TM to another company (merger & acquisitions/raising of cash) COMMON MISTAKES of High Technology Industries Promote their Brands based on a list of features or attributes COMMON MISTAKES of High Technology Industries contd.. Tend to think of Brand as a TECHNICAL FEATURE ―Brand‖ Companies Nike... Adidas... Reebok... Levi-Strauss… …Own No Factories Proactive Protection Program (1) •Trademark Search/Investigation •Domain Name Investigation/Internet Search •Counterfeiting Investigation •Grey Market Investigation •Market Evaluation Proactive Protection Program (2) •Market Evaluation •Factory/License audits •Consumer Agency Audit •Human Rights Audit Value of Strong Brand Contd... A Strong Brand can reduce the risk that new product launches will flop and can be used as a platform for successful brand stretching (including launching a completely new product segments or sector) AJI-NO-MOTO In 1908, Professor Kikunae Ikeda identified the source of the flavor of kelp, a common ingredient in Japanese food, as glutamic acid (monosodium glutamate or MSG), which is naturally present at high levels in kelp, tomatoes and parmesan cheese. Professor Ikeda discovered that soup stocks made from kelp contained high levels of this substance, a discovery forming the foundation of a major industry producing MSG from seaweed. It was introduced onto the market the following year under the brand AJI-NO-MOTO. Trademarks Vivalis The Company is developing Sulonex™ (sulodexide oral gelcap), previously referred to as KRX-101, as a treatment for diabetic nephropathy, a long-term complication of diabetes in which the kidneys are progressively damaged. Sulonex™ belongs to a proposed new class of nephroprotective, or kidney protecting, drugs, known as the glycosaminoglycans. The CoroWise™ line of plant sterols can be incorporated into a variety of food and beverage applications. Plant sterols are an important functional food ingredient and are eligible for an approved FDA heart health claim. • The Oliggo-Fiber® range of natural soluble fibers, extracted from chicory roots, have a number of health and functional benefits. In particular, this range of natural fibers may help to promote bone health by boosting calcium absorption. • Oliggo-Fiber® may also promote a healthy digestive system by stimulating the growth of beneficial bifidobacteria. Our new proprietary technology for producing Prolísse® soy protein isolate has created a bland-flavored isolate that creates better-tasting products compared to other isolates on the market. Accelerating Health Innovation™ Cargill HFT collaborates with customers to create sophisticated food solutions demanded by consumers. Our world class ingredient brands create distinct value and marketplace differentiation while addressing customer concerns regarding: Heart Health Joint & Bone Health Health & Wellness Aminogen® Aminogen, a vital ingredient in high-quality protein supplements, is clinically proven to increase amino acid levels and boost nitrogen retention. Developed by Triarco Industries, Aminogen is a patented, designer enzyme which breaks down protein and improves amino acid absorption. A natural, plant-derived enzyme, Aminogen is ideal for increasing lean body mass and strength and promoting deep muscle recovery. And Aminogen does all this while supporting protein digestion and reducing or eliminating the gas, bloating and constipation protein can sometimes cause. Get more out of your protein and get bigger, stronger…faster™ with Aminogen. Demand Your Aminogen! Examples of Ingredient Brands • Please select one logo and click to get more information about our brands. • This web page mentions filed and/or registered trademarks of the company. However, the absence of an according designation by ® or TM should be regarded as not effecting the legal status of any of those trademarks and can not be interpreted as not existing trademark rights. http://www.bioactives.de/bioactives/html/e/products/brands/brands.htm Successful Ingredient Brands Most successful ingredient brands have used a symbol — such as the Nutrasweet swirl; and the Dolby ―double D‖ Ingredient brands ADM: www.admhealth.com Cargill: www.cargillnutraceuticals.com Degussa: www.bioactives.de DuPont Protein Technologies: www.dupont.com Inter-Cal: www.esterc.com/index2.html Kemin: www.kemin.com Martek: www.martekbio.com sigma-tau: www.biosintcarnitines.com Triarco: www.triarco.com Wennstrom: www.wennstrom-integrated.com Is Collective Branding the Answer? • ISHS Acta Horticulturae 570: VIII International Symposium on Flowerbulbs BENEFIT SHARING FROM FLOWERING BULB - IS IT STILL POSSIBLE? • Author: J.H. CoetzeeKeywords: benefit sharing, genetic resources, indigenous bulbous plants, Southern AfricaAbstract: Genetic material from Africa, but more specifically from Southern Africa, was used to develop a large number of the world's most popular cut flowers and other ornamental plants. The most well known bulbous plants originating from genetic material from Southern Africa are Agapanthus, Amaryllis, Begonia, Clivia, Freesia, Gladiolus, Ixia, Nerine, Ornithogalum, Sandersonia, Watsonia and Zantedeschia. Two of the ten best sellers on the Dutch flower auctions in 1999 were originally developed out of genetic material from South Africa namely Gerbera and Freesia. A total of $ 143 million was earned from the sale of these two products on the Dutch auctions. A general statement can be made that the Netherlands earns more from South African flowers than South Africa earns from its gold. Does a mechanism exist whereby African countries can share in the profits from indigenous genetic material? Is the concept of benefit sharing viable for ornamental bulbous plants? According to the clauses of the Convention on Bio-diversity (CBD) it is theoretically possible, but in practice it is fraught with difficulties. The main reason why benefit sharing is not an option is that all the best bulbous genetic material has, for centuries been in the public domain. The original custodians of the genetic material cannot claim ownership according to the international treaties. Benefit sharing in the form of intellectual property rights is only possible if genetic material is improved to cultivar level through breeding and selection. In most African countries the necessary expertise and research funds do not exist to develop cultivars on which plant breeder's rights or patents can be registered. The only realistic option for benefit sharing is to go into agreements with international organizations. An alternative is to promote cultivation of indigenous bulbs that can be exported as cut flowers or bulbs from the country of origin. This humble approach gives the lawful owners a small share in the financial benefit. Is Collective Branding the Answer? • ISHS Acta Horticulturae 630: XXVI International Horticultural Congress: Nursery Crops; Development, Evaluation, Production and Use SUSTAINABLE TRADE IN ORNAMENTAL HORTICULTURE • Author: B. JørgensenKeywords: Fair trade, benefit sharing, new ornamental plantsAbstract: A large proportion of ornamental potted plants produced in developed countries are based on import of plant material from less developed countries, and most "potted plant species" originate in less developed countries. There are, however, an increasing awareness and concern about the intellectual property rights on native plant species and about economic sustainability at the grower and, particularly, at consumer level. Sustainable or "fair trade" is an alternative approach to conventional international trade. It is a trading partnership which aims at sustainable development for disadvantaged producers. Fair trade is well established within a range of edible horticultural products (coffee, tea and cocoa) and has been adapted to a range of other products but, as yet, not to ornamental horticultural products. It is obvious that fair trade, if adapted to ornamental horticulture, will not only create a whole new product line but may also create a new niche in the global potted plant market. Ornamental horticulture is an industry with great job opportunities and with a great potential for generating much needed export income. It is, however, difficult for small and medium sized businesses in developing countries to enter the export market for horticultural products, especially because the demands to the transport chain are high for horticultural products. It is evident that fair trade of ornamental plants will be a viable and sustainable business on a longer term, but this will require training and education and increased research into the practical aspects of plant export and reestablishment. • Origin function – allows identification of the enterprise offering a good or service Functions of Marks • Quality function – consumers associate certain quality with a Art. 15(1) TRIPS: mark – encourages the holder “…capable of distinguishing to maintain the quality the goods or services of one standard undertaking from those of other undertakings…” • Communication function – can become a carrier of additional information – “mark image” What is a Collective Mark? • Individual mark holder: individual person » focus on the enterprise as the source of the good or service • Collective mark holder: association » focus on the good or service geographical origin other characteristics specific nature specific quality Montréal InVivo : Metro Montréal Life Sciences Cluster adopts a branding strategy to better meet international competition Montréal, March 30, 2005 – Metropolitan Montréal’s life sciences cluster is adopting an international branding strategy in order to take its rightful place among sector leaders. The cluster’s name, Montréal InVivo, and logo were unveiled as a headliner at the launch of the Biomedex forum this morning in Montréal. The branding strategy, developed under the stewardship of the Metropolitan Montréal Life Sciences Committee (MMLSC), is part of a concerted effort to strengthen the cluster’s positioning among local and foreign investors and increase its attractiveness to researchers and venture capital specialists. What is a Certification Mark? • Certification mark holder: control institution » focus on specific characteristics specific functions: control concerning: – distinction function? – geographical origin – guarantee function – production process – securing quality – specific nature – informing consumers – other characteristics Examples Origin Examples Geographical Origin Examples Nature Examples Quality Collective Marks What are the different forms of use? • use by the members of the association • use by the association itself • use by both the association and its members • use by third parties • use by third parties as well as the association and/or its members Collective Mark Regulations - for what purposes? internal relations: external relations: – clarifying the relationship – informing the public between the association about the association and its members and its members – clarifying the relationship – ensuring transparency of members to each as to the conditions of other use of the collective mark Collective Marks Regulations - what contents? • association: • use authorization: – name and – criteria headquarters – all members? – purpose – third parties? – representation • conditions of use: • membership: – term – requirements – form – obligatory admission? – nature of goods/services – quality standard – specific region? Collective Marks Is a change in ownership possible? • in principle: not precluded • same organizational structure required – collective mark: association – certification mark: control institution • changes to the regulations? • conditions of use to be observed – quality standard – nature of goods/services Conclusion Business approach to individual and collective marks Individual marks Collective marks • full direct control • no direct control • reflects “goodwill” of an • forms rather an additional individual enterprise marketing instrument • subject of direct • not necessarily subject of investment direct investment • becomes individual asset • useful starting point when of an enterprise setting up a business • no limits to assignment • specific rules for assignment and licensing and licensing Certification Marks Example: VIDALIA for onions “The certification mark is intended to be used by persons authorized by certifier, and will certify that the goods in connection with which it is used are yellow Granex type onions and are grown by authorized growers within the Vidalia onion production area in Georgia as defined in the Georgia Vidalia Onion Act of 1986.” Certification Mark v. Collective Mark Certification Mark Collective Mark • Generally used by trade • Used only by members of associations or other an organization to identify commercial groups to goods or services and identify a particular type of goods. distinguish them from – e.g. “UV” - Ultra-Violet those of nonmembers. protection for sunglasses; “Intel Inside”. • The collective itself does • Serve to certify conformity not sell goods or perform with centralized standards. services. • Meant to bear the “seal of • Sole purpose is to approval” of a central indicate membership. organization. The Case of ROQUEFORT CHEESE Some aspects of the cheese- making process used in the Roquefort district are protected as trade secrets Importance of GIs GIs provide added value to our producers. French GI cheeses are sold at a premium of 2 euro. Italian ―Toscano‖ oil is sold at a premium of 20% since it has been registered as a GI in 1998. Many of these products whose names are protected, are exported. 85% of French wine exports use GIs. 80% of EU exported spirits use GIs. GIs are the lifeline for 138000 farms in France and 300000 Italian employees. Trade Issues, EU Commission, 30 July 2003 http://europa.eu.int/ comm/trade/issues/sectoral/ intell_property/argu_en.htm Trademarks and Geographic Indications The rights to control trademarks and geographic indications can be maintained in perpetuity, and they do not confer a monopoly right over the use of certain information, but simply limit the class of people who can use a certain symbol. Importance of GIs for TK Geographic indications are based upon collective traditions and a collective decision- making process; they protect and reward traditions while allowing evolution; they emphasize the relationships between human cultures and their local land and environment; and they are not freely transferable from one owner to another; and they can be maintained as long as the collective tradition is maintained. GIs and the Community • Geographical indications lend themselves better to communal organization than do other IPRs. • A producer qualifies to use a geographical indication according to its location and method of production. • It is immaterial whether the producer is an individual, family, partnership, corporation, voluntary association or municipal corporation. • Typically, the producers based in the relevant region work cooperatively to establish, maintain and enforce guidelines for production of the good subject to the geographical indication. The Roquefort Societe des Caves was established in 1842, a company formed by local producers, and it registered a distinctive oval trade mark in 1863. Protected Appellation of Origin The French Government, in 1924, gave formal recognition to the term ‗Roquefort‘ as a protected appellation of origin (a form of geographical indication). Similar protection has been gained overseas. For example, the Community of Roquefort registered the word Roquefort as a certification trade mark for cheese in the United States in 1952, with the condition that: THE CERTIFICATION MARK IS USED UPON THE GOODS TO INDICATE THAT THE SAME HAS BEEN MANUFACTURED FROM SHEEP'S MILK ONLY, AND HAS BEEN CURED IN THE NATURAL CAVES OF THE COMMUNITY OF ROQUEFORT, DEPARTMENT OF AVEYRON, FRANCE. Geographical Indication A geographical indication is an 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 attributable to its geographical origin. (TRIPS-Agreement) Council Regulation (EEC) No. 2081/92 (Scope: limited to certain agricultural products for which a link between product or foodstuff characteristics and geographical origin exists) Protected Designation of Protected Geographical Origin (PDO) Indication (PGI) Product must be Product must be produced and produced or processed and processed or prepared prepared in geographical area in geographical area PDO/PGI registrations under Reg. (EEC) No. 2081/92 (cheeses) Sweden 1 Ireland 1 total 154 Belgium 1 Denmark 2 (2004) Netherlands 4 Germany 4 Austria 6 UK 11 Portugal 12 Spain 19 Greece 20 Italy 31 France 42 0 5 10 15 20 25 30 35 40 45 PDO / PGI Share of cheese production 55 % 60% 50% 40% 30% ?% 20 % 20% < 0,5 % 10% 0% EU 25 Germany France Italy German GI cheeses Allgäuer Bergkäse Allgäuer Emmentaler Altenburger Ziegenkäse Odenwälder Frühstückskäse Generic Cheeses Emmental, Cheddar, Gouda, Edam, Camembert, Brie, Provolone, Mozzarella... Feta (C-465/02), Parmesan (C-132/05) GIs in India • Geographical Indication of Goods (Registration and Protection) Act, adopted in 2000 • Examples of Geographical Indications in India: Darjeeling Tea, Kanchipuram Silk Saree, Alphonso Mango, Nagpur Orange, Kolhapuri Chappal, Bikaneri Bhujia, etc Peru seeks geographical indication protection for Pisco in India • This is the first such application filed by a foreign country after the GI Registry started receiving applications in September 2003. The Registry has issued the examination report and the application is in an advanced stage of prosecution. • A product or good can claim protection as a GI in another country only after securing protection in the country of its origin. Pisco has secured GI protection not only in Peru but also in a few Latin American countries. • Peruvian national pride Pisco, a clear, strong, aromatic brandy distilled from fermented black grapes of Quebranta variety, derives its name from the 'Pisco Valley' and now known as the city of Pisco, 300 km to the south of Peru's capital Lima from where it has been produced since the 16th Century. Its name also comes from the port town of Pisco from where it has been shipped to markets worldwide. Pisco has been a part of Peruvian culture for over 400 years and its production has been passed from generation to generation and is a ritual in many families. Indian geographical indication "Darjeeling" being misused by tea from Nepal Tea grown in Nepal is reportedly being passed off in Indian markets as "Darjeeling" tea which takes its name from the sub-Himalayan district in the east Indian state of West Bengal. "Darjeeling" tea is protected as a certification mark and may be applied to the tea variety grown in the aforesaid geographical region only. Nepalese varieties are similar in appearance to Darjeeling tea and have some of the flavour too, as they too are grown in sub-Himalayan regions. However, the mark "Darjeeling" and logo can be used only by tea that has been purely grown in the Darjeeling district. Tea from Nepal is freely importable into India after the payment of the necessary import duty. 90 per cent of the 97 privately owned tea gardens in Nepal are owned by Indian businessmen.