Trade mark strategies

Transcription

1 Trade mark strategies Advantages and disadvantages of using the national, Community or International route An industry point of view on the way forward CLO Merja Karhapää Sanoma Corporation 1

2 Sanoma Strong European Media Company Operating in diverse fields of media in over 20 countries The leading media group in Finland One of Europe s largest magazine publishers One of the largest learning material publishers in Europe International chain expert in kiosk operations and press distribution Majoroperator operator in digital media in Finland, the Netherlands, Hungary and Bulgaria Net sales EUR 2,767.9 million, 16,723 employees (FTE) Listed on Nasdaq OMX Helsinki 2

3 Sanoma Market Leader In Chosen Segments Magazine publishing Fi l d Finland Newspaper publishing Estonia Learning Online operations Latvia Television Press distribution and retail UK Russia Lithuania The Netherlands Market leader Poland Belgium Ukraine The Czech Republic Hungary Slovenia Romania Croatia Serbia Bulgaria In addition addition, Esmerk operates in Finland Finland, France France, Germany, Germany Malaysia, Malaysia Russia, Russia Sweden and the United Kingdom. AAC operates in China, Denmark, Finland, Norway, Sweden and the United Kingdom and Russia, and Bertmark in Norway and Sweden. 3

4 Sanoma Diversified Media Portfolio Net sales M 2,768 EBIT M 230 Personnel 16,723 Net sales M 1,111 EBIT M 113 Personnel 5,191 Net sales M 429 EBIT M 41 Personnel 2,306 Net sales M 157 EBIT M 21 Personnel 458 Net sales M 345 EBIT M 43 Personnel 2,745 Net sales M 828 EBIT M 28 Personnel 5,943 Magazines Consumer magazines Niche publishing Custom publishing Digital media Newspapers Helsingin Sanomat Ilta-Sanomat Taloussanomat.fi Local and regional newspapers Free sheets Digital media TV and radio Nelonen Jim Liv Radio Rock Radio Aalto Online casual gaming Learning Malmberg Nowa Era NTK Perfekt WSOYpro Van In Young Digital Planet Language services AAC Global Literature & other WSOY Bertmark WS Bookwell Kiosks In: Finland, Estonia, Latvia, Lithuania, Romania and Russia Trade services In: the Netherlands, Finland, Estonia, Latvia, Lithuania, Romania and Russia Bookstores In: Finland and Estonia Movie operations In: Finland, Estonia, Latvia and Lithuania EBIT excluding non-recurring items. Number of employees at the end of the period (full-time equivalents). 4

5 Brand Hierarchy of Sanoma 5

6 Trade marks at Sanoma Trade mark strategy of Sanoma covers key principles for protection, exploitation and enforcement Targets: 1. Strong brands as barriers to entry to our markets in view of both own use and licensing 2. Cost efficiency in decision making 3. Cost control lin protection ti 4. Avoiding disputes and litigations by respecting IPRs of third parties 5. Consistency in enforcement 6

7 Trade mark strategies: Protection The IPRs are protected based on short and long term targets of each business of Sanomain itspresent and potentialmarkets As to trade marks, protection strategy has been created in cooperation with businesses Implementation takes place by using specific tools describing different value levels of brands and corresponding suggestions for trade mark protection 7

8 Criteria for brand protection categories Financialorimageimportance image importance for Sanomaandand itsstrategy, Geographical dimension Life cycle of the respective product/service Future profit expectations and investments of new launches Future expansion potential (geographical, line extensions) Etc. 8

9 1 # Category: House brand Extensive International registration complemented by national registrations SANOMA SANOMA is protected, in addition to the operating countries, also in almost all the countries in Europe, Asia, North and South America and also in Australia, with Cyrillic letters in Russia and Chinese letters in China The trade mark portfolio consists of international trade mark registration (based on a Finnish national registration) complemented by some national registrations in those countries that are not included in Madrid protocol or Madrid agreement The trade mark registration covers 3 11 classes that are considered the most important for Sanoma Group 9

10 2 # Category : Most valuable brands CTM or international registration in addition to a national registration Examples: NELONEN Less than 5% of the total number of brands owned by Sanoma Group belong to this category Either CTM registration or international trade mark registration covering at least the operating countries where the respective brand is exploited by Sanoma (use or license) Usuallythese brands have originallybeen protected by first filing for a national trade mark registration application, and then widening the level of protection when the brand has increased in value In some cases a new brand has been considered to possess such value potential that the level 2 protection is a justified already before the product/service is launched 10

11 3 # Category: Brands as usual Examples: OIKOTIE WSOY National registration A majority of Sanoma s brands are local: products and services published in local languages Local brands are registered by national registrations The linguistic origin of word marks and slogans is typically Finnish, Flemish, Polish, Lithuanian etc. If a brand becomes more valuable, its protection is strengthened by applying the protection strategy of 2 # Categorybrands; i.e. extending the protection by CTM or international registration 11

12 Pros & cons of using national trade mark registration Pros: Cost effective and easy way to apply a trade mark protection for a multi brand Group to protect its local brands For example, in Finland, the national trade mark offices examine whether there are any prior national, or internationalregistrations registrations, orctms CTMs, when a new nationaltrade trade mark is applied the protection of the marks is on a solid basis, and monitoring is the responsibility bl of the national authority Cons: Since the nationalsearch reports becameoptionalin in OHIM, it is more likely that CTMs, identical or confusingly similar to existing national trade marks, are registered 12

13 Pros & cons using CTM / international trade mark registration Pros: Cost effective and easy ways to apply for a trade mark protection for multi national products and services (more than two countries) or when European wide protection is needed In addition to the lower costs of the applications, also the renewals of the registrations are less expensive and easier to managethan separate registrations inseveral countries (one renewal application, one renewal date) 13

14 Pros & cons using CTM / international trade mark registration Cons: The costs of CTM and international registration are considerably higher than the cost of a national registration too high for protecting local brands in one country by a CTM or by an international registration As opposed to an international registration, an opposition against a CTM application can be filed based on a prior registered trade mark in any of the EU member state a confusingly similar mark in one state can disqualify the entire application Enforceability of the CTM has been questioned (e.g. case Leno Merken BV B.V. VS Hagelkruis Bh Beheer bv): is the use of a CTM in only one Member State sufficient to constitute genuine use in the entire EU? 14

15 Should the scope of OHIM s examination be broadened? OHIM does not examine whether the applied trade mark is identical or similar to any existing registered trade marks unless a third party opposition is filed Especially after national search reports became optional in OHIM, the CTM examination has not covered national registrations in the EU countries at all, and this may lead to CTM registrations that are even identical to the existing national registrations new need of more efficient in house monitoring additional costs for trade mark owners 15

16 Inspires, Informs and Connects 16