IPR and branding

Patents and trade marks

A company in Honduras has a good market share with a branded product in the local market.

The company is considering the EU market for international expansion.

The company has some options

1. Find a buyer in the EU that has a trade mark/brand and manufacture the product for this buyer
2. Sell the product to the EU under its own brand Give some good reasons for both options and explain the consequences for option 2.

Intellectual Property Rights

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Intellectual Property Rights

Patents Trade marks Geographical denominations Industrial designs Copyright

Intellectual Property Rights

Exclusive rights granted by the State for inventions, new and original designs, trademarks, new plant varieties and artistic and literary works.

Industrial Property Rights

The right to prevent others from using manufacturing distributing products processes applications trade names geographical names ideas designs

PATENT

TRADE MARK

Validity of protection
Refers to Criteria

EU registration
Website Duration

when and where registered products processes applications novelty, level of inventiveness EU patent office Munich, Germany
www.epo.org

20 years, not renewable

when and where registered names, logo, shape, symbol, color, domain no confusion, generic name OHIM Alicante Spain http://oami.europ a.eu 6-10 years, renewable

Duration of protection

YEARS

RENEWABLE

Patents Trade marks Designs Copyright

20 (6) 6-10 6-10 70 after death

No Yes Yes No

Trade marks
Name Logotype Symbol

Slogan
Shape Color

Registration of trade marks

NATIONAL
Each country where you seek protection National fees for each country Translation into national languages May be convenient if limited number of countries or no alternative

REGIONAL
EU: OHIM, Alicante, Spain National fees for each country or EU fees One language

INTERNATIONAL
WIPO system for 77 countries One fee

WHERE FEES LANGUAGE WHEN

One language

For EU market

If protection in more countries is needed.

Not allowed / not valid

Violation of public order and morale Copy of earlier registration (bad faith) Withdrawal from register Not in use ( 5 years) Evolution into generic name Formica, cellophane, compact disc

Common mistakes
Believing that trademark protection is universal Using a trademark that is already registered or is being used by competitors in export market (Nike, Olympics 1992) Using a trademark that conflicts with a protected geographical indication (South African winegrowers Champagne Leaving the sign on a product even when exported into a country where it has not yet been registered

Patents
The right to exclusively produce, use and/or market a Product Process Application Registration in EU : Patent office, Munich, Germany http://www.epo.org

Patent legislation
Extremely complex because of its criteria,

Result of too many funny/weird applications :

Novelty, not publicly known Product/process/application Boomerang Aspirine

Industrial, not software:

Level of inventiveness

Copyright
Cashmere brush

Applicability

Mars-shoes

Registration of patents
NATIONAL REGIONAL

WHERE FEES LANGUAGE WHEN

Each country where you seek protection (through EPO website) or through national patent office in your country
National fees for each country Translation into national languages

European Patent Office www.epo.org US Patent Office www.uspto.gov

National fees for each country excl. Benelux One language

May be convenient if limited number of countries or no alternative

For EU market For US market

In a nut shell
Patents product, process, applications Registration :difficult to prove novelty limited duration
Trade mark name, symbol, shape Registration : do not create confusion renewable IPR : only protection when registered (excl. copyrights)