Trade mark strategies

(1)

d

k

i

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

j

Karhapää

p

Sanoma

Corporation

(2)

Sanoma

– Strong

European

d

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

• Major operator in digital media in Finland the Netherlands

• Major operator in digital media in Finland, the Netherlands,

Hungary and Bulgaria

• Net sales EUR 2,767.9, million,, 16,723, employeesp y (FTE)( )

(3)

Sanoma

–

Market

Leader

In

Chosen

Segments

Fi l d Magazine publishing Finland Estonia Latvia Learning Newspaper publishing Online operations Russia The Netherlands Lithuania Latvia UK Television Press distribution and retail Market leader Belgium Poland The Czech Republic Ukraine Market leader Hungary Romania Slovenia Croatia Bulgaria Croatia Serbia

(4)

Sanoma Diversified Media Portfolio

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 Magazines Net sales M€ 429 EBIT M€ 41 Personnel 2,306 Newspapers Net sales M€ 828 EBIT M€ 28 Personnel 5,943 Kiosks Net sales M€ 157 EBIT M€ 21 Personnel 458 TV and radio Net sales M€ 345 EBIT M€ 43 Personnel 2,745 Learning •Consumer magazines •Niche publishing •Custom publishing Digital media •Helsingin Sanomat •Ilta-Sanomat •Taloussanomat.fi

•Local and regional newspapers F h t

•In: Finland, Estonia, Latvia, Lithuania, Romania and Russia

Trade services

•In: the Netherlands, Finland Estonia •Nelonen •Jim •Liv •Radio Rock •Radio Aalto •Malmberg •Nowa Era •NTK–Perfekt •WSOYpro •Van In •Free sheets Digital media Finland, Estonia, Latvia, Lithuania, Romania and Russia

Bookstores

•In: Finland and Estonia

M i ti Online casual gaming •Young Digital Planet

Language services

•AAC Global

Literature & other

•WSOY

•Bertmark _{Movie operations}

•In: Finland, Estonia, Latvia and Lithuania

•Bertmark

•WS Bookwell

(5)

(6)

Trade marks at Sanoma

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 both own use and licensing

2. Cost‐efficiency in decision‐making

3 C t t l i t ti

3. Cost control in protection

4. Avoiding disputes and litigations by respecting IPRs of third

parties parties

(7)

Trade mark strategies: Protection

Trade

mark

strategies:

Protection

• The IPRs are protected based on short and long term targets of

each business of Sanoma in its present and potential markets each business of Sanoma in its present and potential markets

• As to trade marks, protection strategy has been created in co‐

operationp with businesses

• Implementation takes place by using specific tools describing

different “value” levels of brands and corresponding

(8)

Criteria for brand protection categories

Criteria

for

brand

protection

1 #

Category:

House

brand

Extensive International registration

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 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 that are not included in Madrid protocol or Madrid agreement

• The trade mark registration covers 3−11 classes that are

(10)

2 #

:

Most

valuable

brands

CTM or international registration in addition to

CTM

or

international

registration

in

addition

to

a

national

registration

• Examples: NELONEN

• Less than 5% of the total number of brands owned by SanomaLess 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)

• Usually these brands have originally been 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 value potential that the level 2 protection is a justified already

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3 #

Category:

Brands

“as

usual”

National

registration

• Examples: OIKOTIE

WSOY

• A majority of Sanoma’s brands are local: products and services

• A majority of Sanoma s brands are local: products and services

published in local languages

• Local brands are registeredg byy national registrationsg

• 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 #

Category brands; i e extending the protection by CTM or Category brands; i.e. extending the protection by CTM or

(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 inter‐

national registrations or CTMs when a new national trade national registrations, or CTMs, when a new national trade

mark is applied

– the protection of the marks is on a solid basis, and monitoring is the

b l f h l h

responsibility of the national authority

Cons:

• Since the national search reports became optional in OHIM it

• Since the national search reports became optional in OHIM, it

is more likely that CTMs, identical or confusingly similar to

(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 Europeanp ‐wide protectionp is needed

• In addition to the lower costs of the applications, also the

renewals of the registrations are less expensive and easier to

manage than separate registrations in several countries (one manage than separate registrations in several countries (one

(14)

Pros

&

cons

using

CTM

/

international

trade

mark

registration

C

Cons:

• The costs of CTM and international registration are

considerablyy g higher than the cost of a national registrationg – 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

• 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 confusingly similar mark in one state can disqualify the entire