TopTop

Shadow

Search

advanced search
search help

 

ipHandbook Blog

Your source for expert commentary on IP management issues.
Go to the blog

 

About

Editor-in-Chief,   Anatole Krattiger

Editorial Board

Concept Foundation

PIPRA

Fiocruz, Brazil

bioDevelopments-   Institute

CHAPTER NO. 11.6   Use of Trademarks in a Plant-Licensing Program
Editor's Summary, Implications and Best Practices

Krattiger A, RT Mahoney, L Nelsen, JA Thomson, AB Bennett, K Satyanarayana, GD Graff, C Fernandez and SP Kowalski. 2007. Editor’s Summary, Implications and Best Practices (Chapter 11.6). From the online version of Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices. MIHR: Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org.

© 2007. A Krattiger et al. Sharing the Art of IP Management: Photocopying and distribution through the Internet for noncommercial purposes is permitted and encouraged.

Editor's Summary

When considering the forms of IP protection available for plants, what usually come to mind are plant patents, plant variety protection (PVP), and utility patents. But trade secrets and trademarks can also provide durable and significant IP rights protection. As this chapter points out, trademarks are an increasingly attractive form of IP protection for plants, either used alone or in combination with one or more other forms of IP rights protection. Furthermore, trademarks can be used to effectively protect IP rights for plant varieties internationally.

A trademark is a marking, sign, or designation identifying, distinguishing, and indicating the source/origin of goods and services. It is a valuable piece of information in the marketplace, one that consumers rely on when making selections. One advantage that trademarks have over the statutory forms of IP protection for plants (plant patents, PVP, utility patents) is that the rights endure as long as the product/service is marketed and the trademark is enforced.

The relative strength of trademarks is determined by how distinctive the mark is. When consumers see, hear, or smell the trademark, they are able to readily distinguish the goods or services of the trademark owner from the related goods or services of competitors. They are classified below according to their distinctiveness, from most protectable to non-protectable:

  1. Fanciful marks are the most distinctive and protectable. They are unique, nonsense words. Examples include “Clorox,” “Exxon,” and “Pepsi.”
  2. Arbitrary marks are real (not nonsense) words, but they have no readily apprehensible connection with the goods or services with which they are associated. Examples include “Apple Computers,” “Apple Records,” “Domino’s Pizza,” and “Sonic Restaurants.”
  3. Suggestive marks suggest, but do not explicitly describe, a characteristic of the goods or services. For example, the name “Holiday Inn and Suites” suggests that it is a “holiday” to stay in this guest residence.
  4. Descriptive marks refer to the purpose, function, quality, size, geographical origin, and so on, of a good or service. In order to qualify as “distinctive,” and therefore protectable, consumers should be able to associate such marks with a particular good or service. For example, Kentucky Fried Chicken means more to consumers than simply “chicken, fried in a style that is popular in Kentucky”. Rather, it indicates a place where customers can obtain a meal of known and predictable quality.
  5. Generic terms such as “soap”, “tomato,” or “car” are neither registrable nor protectable. Interestingly, and unfortunately for trademark owners, some trademarks have transformed from “fanciful” to “generic” over the years; examples include common words such as “linoleum,” “aspirin,” “kerosene,” and “escalator.”

Two international agreements, the Madrid Arrangement and the Madrid Protocol (of which the U.S. is a signatory) govern international trademark registration. For plant trademarks, understanding and utilizing their provisions will become increasingly important to developing countries. The tropical regions of these countries are rich sources of novel fruit products, and the owners of these varieties will want to adopt a strategy that both stimulates global demand for the product and maximizes commercial returns. Trademarks will be integral for such IP rights protection and global marketing strategies. In particular, four critical aspects should be considered if new branded fruit products are to be successfully launched from developing countries:

  1. Determine what is to be trademarked
    The owner should clearly define the registered product, as well as the standards and brand values he wishes to develop. It may be challenging for developing countries with variable agricultural practices to achieve product consistency.
  2. Register the trademark where it will be used
    The owner should have a well-developed commercialization plan with separate strategies for each country in which the fruit might be sold. It may be necessary to register the trademark at the local patent and trademark office in every country or territory in which the product will be marketed.
  3. Promptly register the trademark
    Trademarks should be filed in the early stages of product conceptualization, before competitors can do so.
  4. Enforce the trademark
    The owner will need to invest money to ensure that the trademark is used appropriately, and only by those with rights to do so. Fruit producers in developing countries may try to use a successful trademark (or a close copy) on their own products. Care should be taken to ensure that a trademark is not used so indiscriminately that it becomes a generic descriptor.

A successful global trademark program, built around exciting products, may be more achievable than a PVP-based strategy that relies on licensing alone for returns. Instead of managers and lawyers securing licensing deals, the market itself can fuel value creation in the trademark. If successful, the returns can be tremendous.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

  • For the benefit of their domestic agricultural industries, developing countries (and indeed any countries) have much to gain by adhering Madrid Protocol. As globalization continues, there will be large and lucrative international markets in fruits and vegetables from developing countries. International trademark registrations can help tap the full value of these emerging markets.

For Senior Management (university president, R&D manager, etc)

  • Be certain that your institution has a coherent trademark policy. For example, promising plant varieties, whether they are fruits, vegetables, or commodities, should be evaluated for prospective market potential, locally, nationally, regionally, and internationally. Trademarks should therefore be contemplated early in the development of new varieties, as an integral component of a successful market strategy.

For Scientists

  • As you develop new plant varieties in your program, keenly observe which lines and clones have the potential for commercialization. Relay this information to your technology transfer office quickly, so that you can both confer and ascertain which varieties are the most promising. Together, you can develop trademarks that will rapidly advance the commercial potential of your program’s varieties.

For Technology Transfer Officers

  • Understand that the registration of trademarks should be done in a timely manner, pursuant to the applicable international agreements implemented in your country (Madrid System or Madrid Protocol).
  • When contemplating trademark development, keep in mind that your market may be international. Therefore, create fanciful marks that have no inherent meaning in any language, but that immediately form a distinct impression in the mind of the consumer.
  • When contemplating a trademark, remember to do a thorough trademark search to check whether another party already owns the mark.
  • Work closely with your scientists, plant breeders, and other researchers to timely identify varieties with market potential.
  • Plant variety names are, by definition, generic and therefore cannot serve as trademarks. But a plant variety may have a name as well as a trademark.

Krattiger A, RT Mahoney, L Nelsen, JA Thomson, AB Bennett, K Satyanarayana, GD Graff, C Fernandez and SP Kowalski. 2007. Editor’s Summary, Implications and Best Practices (Chapter 11.6). From the online version of Intellectual Property Management in Health and Agricultural Innovation: A Handbook of Best Practices. MIHR: Oxford, U.K., and PIPRA: Davis, U.S.A. Available online at www.ipHandbook.org.

© 2007. A Krattiger et al. Sharing the Art of IP Management: Photocopying and distribution through the Internet for noncommercial purposes is permitted and encouraged.