KEY ASPECTS ON IMPROVING IP
AWARENESS BY BRAZILIAN
MSME’s: THE ROLE OF IP
OFFICE
Differentiation Strategies: Role of
IP in Building Trust and Branding
by MSMEs
Rome, Dec 2009
Objectives
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To present the Brazilian IP Office point of
view regarding MSME’s issues;
To discuss some aspects of the relationship
between TM system and MSME’s;
To present some measures taken to enhance
IP access by MSME’s
Role of IP in Branding by MSME’s:
the importance of IP offices
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In the knowledge society, intangible assets give
MSME’s the opportunity of being more competitive
and innovative;
Intellectual property rights, like trademarks and
patents, configure crucial strategies for economic
growth, mainly in the peripherical countries;
Trademarks, given the fact that they can be
renewed indefinitely, are a very attractive mode of
boosting profits and the reputation of companies;
So, the reflection about a system that enables
MSME’s to participate on this scenario, in fair
conditions, must be part of the IP offices agenda.
Role of IP in Branding by MSME’s:
the importance of IP offices
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Any branding strategy taken by a small company is
not complete if legal aspects are not observed;
Since trust and reputation come together with a
name, branding strategies must be concerned with
the appropriability of a name, which is capital for
creating value from the feelings, ideas and images
born from a sign;
So, the role of IP offices ,as a key part of IP policymaking, is crucial for garantee equal access to TM
system and the awareness of the importance of
registering trademarks.
Brazilian MSME’s: some data
and features
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98% of Brazilian enterprises are MSME’s;
The mortality of MSME’s is around 22%, in
average;
Low capital intensity;
High birth and mortality rates;
Low investment on innovation;
Brazilian TM system in a
glance
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It’s a first-to-file system;
120.000 applications last year in a single
class system;
Opposition period comes after initial TM
publication and before examination;
Registered TM to be renewed every 10
years;
Still some backlog, but totally managed
Brazilian TM system in a
glance
TM Applications - 2000 to 2009
140.000
120.000
100.000
80.000
TM Applications
20
09
20
08
20
07
20
06
20
05
20
04
20
03
20
02
20
01
20
00
60.000
40.000
20.000
0
MSME’s and the TM system: a
short diagnosis
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In Brazil, 87% of TM applicants are small
enterprises;
In general, they have lack of IPR’s expertise;
High quantity of rejected Trademarks;
When approved, their trademarks are considered to
be “weak”ones;
Very often, they simply lose their trademarks by not
observing legal deadlines
Increasingly number of legal disputes on IP subject;
Sometimes, the registration of a commercial name is
seen as much more important than a registered
trademark;
MSME’s and the TM system
Users of TM system , by the size of the com pany (2000 to 2008)
13%
MSME's
Big Companies
87%
MSME’s and the TM system
Applicants (% of total) by number of TM's filed during a year - 2000 a
2008
100%
80%
7 files or more
60%
2 to 6 files
40%
1 file
20%
0%
2000
2001
2002
2003
2004
2005
2006
2007
2008
What do the MSME’s want
from IP offices?
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Simple and user-friendly systems
Predictable and uniform results
Responsiveness
Legal certainty
Focus on the small: tensions
to be solved by IP offices
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To organize competition x To let the market
regulate itself;
Public interest x Market interest
Staying reactive x going proactive
Risky scenario for MSME’s: poor
expertise + Superpopulation of
trademarks
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We receive a huge number of TM applications every year
– So, nowadays, we have a very populated database,
organized in 45 Nice Classes, some of them extremely
populated – e.g. class 35 (business management)
"Living" and "Dead" TM's
1.144.094
1.062.978
Living TM
Dead TM
Risky scenario for MSME’s: poor
expertise + Superpopulation of
trademarks
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Since our examiners do ex-officio searches,
more than 1 million of trademarks can be
considered impeditive for a new application;
Considering that MSME’s have a slightly poor
knowledge of the system, the likelihood of
getting a TM denied is very high;
It means less profits and probable damage
for previous investments on product
development.
Risky scenario for MSME’s: poor
expertise + Superpopulation of
trademarks
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Given this scenario, it’s important to
think about a new pattern for the
services offered to the MSME’s by IP
offices
Emerging Trends on TM Management
by IP office: disseminating IP culture
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Since 2004, Brazilian IP office provides training on IP
themes for academics, lawyers and entrepreneurs;
Topics like trademarks, patents, designs and
geographical indications are discussed, always aiming at
regional reality and local needs;
6,000 people have been trained, in basic, intermediary
and advanced modules;
In this sense, believing on the multiplication power of
such training sessions, the dissemination of IP culture
can be considered as a first action towards a closer
relationship between IP office and the small companies.
Emerging Trends on TM Management
by IP office: less oppositions
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Oppositions triplicate the waiting time for the
examination;
Today, 20% of the applications are opposed by thrid
parties;
Oppositions make the whole process more costly:
it’s tough for the opponent, the applicant and the
office;
When a SME is suffering an opposition, they barely
can response adequately. It’s hard for big
companies, and it’s even hard for the small ones;
So, why can’t we ask both parts to give up, in order
to cancel the opposition procedure?
Emerging Trends on TM Management
by IP office: clustering examination
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Our work procedures have led us to take a linear examination,
making us dependent on bad routines, often useless and
irrational
We have already realized that by clustering the demand flux,
dividing it into specific categories of requests, we could increase
efficiency and the consistency of examination results ;
Making teams to deal with specific demands: in general, small
companies need permanent care, especially in the initial steps of
dealing with the system;
So, with a non-linear work strategy, it will be possible to group
the requests of various small companies in order to allow the
examiner a better knowledge of their reality;
Clustering examination process will reduce random results and,
somehow, make examiners acquainted to the companies behind
the brands.
Emerging Trends on TM Management
by IP office: previous TM assesment
for MSME’s
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It is really necessary a better frame for processing
MSME’s demands, since they represent almost 90%
of our users;
Many IP offices have already realized that a
previous assesment program, demand driven, is the
best way of avoiding bad applications;
So, if we could offer them more than previous
search records, it would be a powerful tool for
branding process as a whole;
Results: less TM applications denied, less needless
conflicts and more legal certainty.
Emerging Trends on TM Management
by IP office: making simple systems
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A simple system is an appealing step to narrow
distances between the companies and the office;
Since 2006, we have offered a total paperless
system which provides electronic forms for any kind
of service at TM office;
It became succesful because it was a system
planned for small companies: in 10 minutes, a nonexperienced user can file an on-line TM application;
Nowadays, 70% of applications are done
ellectronically; and the number of applications done
without a legal agent increased 15% since then.
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Thanks!
Vinicius Bogéa Câmara
Brazilian National Institute of Industrial Property
Advisor, Trademark Office
[email protected]