Intellectual Property Branding in the Developing World

A New Approach to Non-Technological Innovations

Tshimanga Kongolo

• Publisher: Routledge
• Year: 2019
• ISBN:
  9781000008739
• Edition: 1
• Topic: Diritto
• Subtopic: Diritto sulla proprietà intellettuale

Intellectual Property Branding in the Developing World identifies success stories in the areas of intellectual property (IP) and branding for non-technological innovation in the developing world. The author examines the relationship between IP, branding and innovation to demonstrate that innovation, in general, and non-technological innovation, in particular, must go hand in hand with branding. Branding of non-technological innovations should be a good strategic tool to be used by countries in the developing world mainly in the areas where they have competitive advantages.

This book will assist scholars and academics dealing with innovation, branding, and IP issues, providing context and guidance to policymakers from the developing world. It is also relevant to researchers and students in the fields of intellectual property law, commercial law, international law, management, and innovation.

1 Conceptual framework

Intellectual property landscape

Within the IP landscape, trademarks, designs, and geographical indications play a significant role in identifying and distinguishing products (goods and services). Traditional knowledge, which is considered a newcomer in the IP field, has contributed tremendously to the global value chain, which should not be underestimated or overlooked.

Role of trademarks in identifying products (goods and services)

The conventional trademark system encompasses some well-established general principles that most national laws provide in conformity with international trademark norms.¹ There is no doubt that trademarks are the most visible IP subject matter. A trademark may be any sign, any combination of signs, colors, symbols, letters, words, and drawing, capable of distinguishing the goods or services of one undertaking from those of the other.

To be eligible for protection, the principle is that the sign should be inherently distinctive enough to enable consumers to make the choice, with the aim of not misleading them or creating a likelihood of confusion. Actually, some countries have agreed to provide protection to signs that have acquired distinctiveness through use, creating a second meaning to these signs to be identified as such by consumers.

A trademark enables consumers to differentiate the products of one enterprise from those of the other. It provides exclusive right to its owner to prevent competitors from using the protected mark in the course of commerce. It is a very useful tool used in business to identify the origin of products as well as their quality, empowering consumers to make a trustworthy decision either to purchase the products or not to do so. Thus, a trademark is a source of valuable information on the products and conveys a message about the quality of the products to the consumers. The uniqueness of the products is perceived through the distinctive character of the trademark. Through a trusting and faithful relationship, consumers will no longer question the qualities embodied in the products. A trademark allows a consumer to save a search cost. It provides information to potential consumers and allows them to mentally compare products in order to decide within seconds without using complex search tools.

A trademark, being the most tangible intangible property, is easily identifiable by consumers. In the past, consumers were deemed to be laymen who had no knowledge of the products they intended to purchase. As a matter of fact, they were less demanding. Nowadays, things have changed, and consumers are very knowledgeable, and they know exactly what they intend to purchase. This has led producers to level up the quality of their products to meet consumers’ demands and needs, and at the same time to compete against other competitors. In the past, consumers’ needs were limited territorially, so the satisfaction effort and assessments from entrepreneurs were limited to a defined location.

Currently, with the globalization of the world, producers have to satisfy the needs and expectations of a large number of consumers spread all over the world. Consequently, the behavior of customers is well scrutinized before any investment in the product is made in order to respond effectively to their expectations. Consumers from the developing world are as demanding as consumers from the developed world. The main difference may reside in the fact that those of the developing world have two coexisting and complementary markets: formal markets and informal markets. A consumer may opt for the first or second market depending on his/her purchasing power.

Trademark data may reflect the trend in trademark applications and registrations in the developing world. This goes together with business activities. Trademarks are in principle registered or protected where business activities are to be carried out or for strategic competition purposes. So, data on trademark registration is nowadays a very good indicator of both innovation and business activities.²

It should be underlined that two new factors have changed the current trademark landscape: namely, the Internet and the increased uses of human senses for business purposes to create new distinct signs which were not considered as such before, known as non-traditional marks or non-conventional marks.

Internet, being the new commercial platform, has enhanced e-commerce and generated new issues relating to the use of trademarks on the internet, including online infringement acts, on the one hand, and those pertaining to the potential liability of Internet intermediaries, on the other hand. Presence on the internet for any enterprise or firm is not an option but essential. It is a must, leading to the visibility of its products in a wide sphere. This assertion is valid in both developed and developing worlds. Lawful uses and unlawful uses of trademarks both coexist on the internet. It may be difficult in some instances to separate the two. The geographical delimitation of the use of a trademark on the Internet is a big challenge, given its global nature. In addition, it should be underlined that, in business, the use of a trademark to maintain registration is required prior to renewing the protection period. Nowadays, more businesses take place on the Internet. Given the global nature of the internet, it is not always easy to prove the territorial uses of trademarks on the internet to maintain registration. Legislations different from one country to another and components considered to determine the use are not necessarily similar.

The second current issue brought out by the internet pertains to the potential liability of intermediaries, including the liability of search engines for the sale of trademarks as keywords (e.g. Google), the liability of Internet auction sites for trademark infringement (e.g. eBay), and trademark infringement in social media and virtual worlds (e.g. Facebook). The main question is “who is liable?” Is it the intermediary (e.g. Internet providers) or the owners of the sites or users? Under the current perspectives, two schools of thought exist: (1) to consider online intermediaries as secondary trademark liable (safe harbor) and (2) to strengthen the liability of online intermediaries by taking into consideration their state of mind and the necessity of anti-counterfeit measures. Meaning that the online intermediaries must prove that they took reasonable steps to prevent the unlawful behavior.

The third issue generated by the internet in the context of trademarks pertains to the combination of the first and second issues: namely, the question of the use of keywords that are supposed to belong to a competitor as metatags in advertising and whether this amounts to an infringement. In other words, does the use of keywords for search purposes qualify as the use of a trademark? In most jurisdictions, an act is deemed as an infringing act only if it qualifies or is considered the “use of a trademark.” The question may be extended to other stakeholders in the Internet auction sites and in social media.

Nowadays, enterprises knowing the positive effects of trademarks in the minds of consumers have set up distinct signs which did not exist before, using more and more of the five human senses. The aim is to attract consumers and enable them to differentiate between products based on their color, smell, touch/feel, taste, and sound. The new category of marks is called non-traditional or non-conventional marks. Within the non-traditional marks, signs are grouped into visible signs and non-visible signs. Visible signs include three-dimensional marks, color marks, position marks, gesture marks, motion or multimedia signs, holograms, slogans, and titles of films and books. Non-visible signs comprise olfactory marks (smell marks), sound marks, taste marks, and texture or feel marks.

It is well recognized that to be protected, a trademark must be distinct. The challenge is how the new category of marks would meet this requirement. It is likewise agreed that non-traditional marks should not be descriptive. Meaning that, in principle, smell marks should not be used for perfume nor taste marks for drinks or foods, etc. Under the same perspectives, the unsettled question is whether a single color may be distinct enough to qualify as a trademark. In some legislation, some types of non-visible signs are provided protection, provided that the distinctiveness is acquired through use. A distinctiveness test is still challenging for most non-traditional marks.

How do you prove that consumers purchase your products because of the secondary meaning or distinctiveness that they have acquired on the market? How do you prove that consumers have purchased your tires because they smell like rose? Is the smell the first distinctive sign that consumers assess to buy your products? The same questions may be asked for sound, single color, texture, and taste marks. Other issues relate to the representation of those non-visible signs as a large number of legislations require that a mark be graphically represented for the registration purposes. To overcome the representation issue, a number of countries have opted for a description of the mark. The latter does not adequately solve this issue as in most of the cases defining a smell or sound by a description generate further issues on the interpretation and delimitation of the scope.

There is still a long way to go as many countries are still reluctant to provide full trademark protection for non-traditional marks, mainly for the non-visible signs. Meanwhile, it is true that if all the five senses of a human being become the hostage of business and trade, concerns over the availability of marks as well as other issues pertaining to public interest and public domain may come to light. The developing world is likewise divided. Some countries from the developing world have amended their trademark laws to provide protection to some non-traditional marks, such as single colors, smells, sounds, and 3D objects.

Importance of designs in the modern world

In the current world, designs have gained more and more notoriety in trade by offering additional useful information on the products that may not be provided by trademarks. In the area of industrial designs, for instance, as prescribed under international norms,³ the aesthetic aspect and the shape of the products are the key features that attract the eyes of consumers and make them purchase the products. People buy with their eyes. An industrial design makes the product appealing vis-à-vis consumers and increases its marketability and its commercial value. When selecting between a diversity of products of the same nature, the visual appeal of a product plays a great role in its choice by consumers.

Currently, a design is an important tool for business the same way as trademarks. Designs influence very much the judgment of consumers. Designs may relate to the automobile industry, the fashion industry, architecture, the aircraft industry, sports equipment, furniture, heavy equipment, cosmetics, electronics, telephones, etc. The aim is to make the product appealing and marketable. As for trademarks, consumers will associate the product quality with its design or look. The relationship between consumers and producers is built on trust. The appealing aspect of the design will be the decisive factor inducing a consumer to buy a product.

Design is an area of IP whereby consumers may easily be grouped into two categories: namely, skilled or informed consumers and unskilled consumers. The knowledge of a consumer may be limited to the category of product he/she is interested in. Outside the area of his/her interest or expertise, the same consumer may have no ability to make a well-informed decision. A skilled/informed consumer in the fashion industry may be an outsider in the automobile industries, and vice versa. The same may be observed, even in some sectors that may be deemed related, such as cosmetics and fashion. A skilled or skillful consumer in the fashion industry may not be knowledgeable in the perfume or cosmetics industry.

The role of designs in the modern world is significant. In the developing world, in many countries, traditional designs are products of culture, and each design may have a specific meaning. Traditional designs are more and more used in the fashion industry. The visual appearance of the product is a determinant. Even in ancient times, the shape of the product was valuable vis-à-vis consumers. In the modern age, designs go along with investments. Enterprises being aware of the design importance have invested in the presentation and packaging of the products they sell to their clients.

In the area of design, another new component that will change the design industry is the so-called artificial intelligence (AI). The author prefers the term digital intelligence (DI), reflecting well the environment or platform where the creation takes place. The two terms will be used concurrently where appropriate. AI/DI encompasses both the technical part protectable under patents and the shape...

Table of contents

• Cover
• Half Title
• Series Page
• Title Page
• Copyright Page
• Dedication Page
• Table of Contents
• Preface
• Acknowledgements
• List of abbreviations and acronyms
• General introduction
• 1 Conceptual framework
• 2 Intellectual property trends in the developing world from 2011 to 2016 based on income status
• 3 Non-technological innovations and intellectual property in the developing world
• 4 Branding of local products in diverse industries in the developing world
• 5 Branding innovations in the developing world
• 6 General conclusions
• Index