julian nolan – [email protected] the role of ip and trademarks, and other distinctive signs, in...
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Julian Nolan – [email protected]
The Role of IP and Trademarks, and Other Distinctive Signs, in Enhancing the
Competitiveness of Business
Julian Nolan
9th June 2010
Julian Nolan – [email protected]
Agenda
– The business of trademarks• BMW vs VW case study• Fashion industry case studies
– IP and product development• Processes and good business practice• Unreasonable inventor case study• Product line licensing case study
9th June 2010
Julian Nolan – [email protected]
... “any sign capable of being represented graphically whichis capable of distinguishing goods or services of one undertaking from those of another”...
- words- shape of goods- sounds- smells- get-up of goods
Definition
Registerable
Trademarks
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Non-registerable
- signs which do not satisfy the definition- trade marks devoid of any distinctive character
- trade marks which consist exclusively of signs or indications which may serve in trade to designate:
- kind- quality or quantity- intended purpose- value- geographical origin/the time of production of goods
or rendering services- other characteristics of goods or services
- trade marks which have become customary in the language or established practices of the trade
Trademarks
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Exploiting trademarks
• Brand licensing– globalisation– extend to adjacent markets
• Business advantages– “Try before you buy”
• Test out new markets and territories– Identify acquisition targets or alliance partners– Time limited deals– Contractual reporting provisions
– Income– Increase brand equity etc.
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The trademark licensing deal
• Usually exclusive for product category territory• Usually time bound
– 3 to 8 years• Licensee has to comply with strict brand usage
guidelines– usually as set out in a 'brand manual'
• Agreement terminates if strict guidelines are broken
• Commercial structures vary but– upfront fee, percentage of product revenues typical
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Deals that go bad
– 1973• RR trademark becomes owned by RR aircraft• Bentley trademark still owned by RR cars
– 1998• BMW offers $575M for RR cars• VW outbids BMW with an offer of $795M – for RR Cars• BMW acquires the RR trademark for $65M from RR aircraft
Vs
The prize
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Case studies Designs and trademarks
Fashion industry
These case studies based on material from :
Chander M. [email protected] LALL & SETHI AdvocatesNew Delhi - 110 049
Julian Nolan – [email protected]
Fashion case study (1)
IP confrontation to cost New Look £80,000
Fashion retailer New Look has withdrawn more than 1,000 pairs of its Bonbon shoe after designer footwear brand Jimmy Choo threatened the young fashion group with legal action.
9th June 2010
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Fashion case Study (2)
Louis Vuitton Malletier v. Dooney & Bourke, Inc.
Louis Vuitton sued Dooney & Bourke for trademark infringement of its Multicolore patterned
pocketbook.
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Fashion case study (3)
Chloé vs Kookai
Chloé, the luxury French fashion house, is taking legal action against Kookai, the high street chain, over a bag which it claims has been copied and sold at a fraction of the cost.
Top: ChloéBottom: Kookai
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- Is there a project plan?
- does it cover - product/service required - market - technical - competition - resources - activities/timescale
- unique advantage against competition? - how to protect and enhance?? - Intellectual Property Rights
Product development - capturing IP!
Source: Stephen Potter
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- lab notebooks: correctly managed/signed-off
- Non-Disclosure Agreements with all third parties
- clearance procedures/sign-offs for external disclosures
- employment contracts
- third party work/subcontracting - contracts
- IP training and encouragement
IP management processes
Source: Stephen Potter
9th June 2010
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- project strategy: “make/buy” - generate/acquire (license in) - competitive advantage
- audit: - existing IP (in company!) - explicit/implicit - IP survey -
generic/competition
- IP intelligence - generic/competition
- active IP audit: identify/protect - developer + IP expert + manager
- IP encouragement - proactive from developers
Initiation
Operations
New product development (1)
Source: Stephen Potter9th June 2010
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- enrichment required? - generate/acquire/bundle
- portfolio management - core/support/non-core
- regular audits- defence/attack - cross-licensing/litigation
- generate new revenue - sell/license out
- cut costs: - cull: technology/geography- convert to Licence of Right
Completion
Generate added value
New product development (2)
Source: Stephen Potter
9th June 2010
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- try to understand and protect the IP in your new products
- ensure you have an IP strategy and management processes
- be prepared to seek professional advice
- talk about your developments publically before they’re protected!
- consider licensing rather than producing to lower your risk
DO
DON’T
Tips
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Product line licensing case study (1)
• Divest– Non-strategic products
• Expand– New territories
• Overcome– Capacity limitations
• Delay obsolescence
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Product line licensing case study (2)
• Avionics system– mature product– commitment to support customers
• high cost to change
– still profitable, but none core• Licensed to main customer
– Deal structure– NPV increased, GNPV – Regain strategic focus
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What is your company?
IP strength
IP centricrevenues
Low HighLow
High
The target
The shark
The whale
The minnow
Based on BCG concept9th June 2010
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Fin
anc
ial
per
spec
tive
Operational perspective
Revenue
Cost
Sustaining profits Increasing profits
Entrepreneurial modelIP is a product and the objective is to create new revenue streams by licensing IP to other companies (e.g. IBM, Texas Instruments, P&G)
Enterprise modelIP is regarded as a tradable asset and used to gain access to new/alternative technologies or JV/partnerships. (e.g. Philips/Sony)
Monopolistic modelIP, in particular patents, is a means to create a monopoly position and hence useful in stifling competition (e.g. Gillette, drug companies, Dyson)
Defensive modelIP is used in a passive defensive manner ensuring any infringement threats can be counteracted. (e.g. x-licensing)
IP Management models
Delivering strategy and value from IP
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OrganisationalIssues
Defensivemodel
Entrepreneurialmodel
Monopolisticmodel
Enterprisemodel
Culture Administrative Entrepreneurial Corporate Technology driven
ManagementControl
Budgetary or resource control
Project management
Task orientated management
Management through ‘Expert Knowledge’
Operational style TechnocraticReactive Deal brokering Legalistic
Performancemetrics
Number of dealsCost Revenue/Profit Successful litigation
Relationship with other BU’s
Support function Competitive tension
Support serviceDominant
How IP is viewed All IPR is useful, the portfolio is managed on cost
IP regarded as valuable (deal potential) or non- valuable
Strategic asset IP categorised as strategic, supporting & surplus
Financing / Budget
Cost centre Investment criteria
Corporate overhead
R&D or M&A budget
IP and the organisation
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Understanding patent value
Step change? Legally Validated?
Market need? Cost and performance? Tech transfer support? Market ready, value chain complete? Know-how, proof of principle available?
Infringement? Detectable? Legal clarity? Funds? Tech support?
Assertion ? Tech transfer ?Or
Or ...
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- novel sensor
- poor IP: rectified by patent firm
- initial successful trial
- refuses to license to biggest user of these sensors - “they only have 30% of the market”
- ...”I’ve literally been working out of my garage for the last five years and I’ll be bankrupt next month if nothing comes up - I know it’s a World beater but they tell me I’m dreaming when I say I want $500K up front, 20% royalties and fees of $25K/month for the next five years”...
- goes bankrupt!
- IP is all the receivers have – patent firm will try to exploit
Unreasonable inventor case study
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Recap
• Trademarks can have huge value• Trademarks can be licensed
– In or out– Use to extend business to adjacent markets– Or to access existing brand
• Care needed with IP development• Overall IP strategy needed !
9th June 2010
Julian Nolan – [email protected]
Thank-you
9th June 2010
Julian NolanPatriousAvenue des Alpes, 4PullySwitzerland
E-mail : [email protected] Column : http://news.bbc.co.uk/2/hi/business/8551808.stm