BRAND EXPANSION INTO FOREIGN MARKETS October 11, 2012 Kim Teraberry, Director, Corporate Counsel at Starbucks Coffee Company Julianna Fox, Counsel, Litigation & Regulatory Law at Air Canada

2012 © Intellectual Property Institute of Canada Brand Expansion into Foreign Markets Overview of presentation Company Introductions Definitions / Explanation Filing and Enforcement Strategies Working with Outside Counsel Difficulties and Concerns Q & A

2012 © Intellectual Property Institute of Canada Company Introductions: Air Canada and Starbucks Coffee Company International business presence International portfolio Trademark Team/Management Model

2012 © Intellectual Property Institute of Canada Brand expansion defined Industry Perspectives…..

2012 © Intellectual Property Institute of Canada Brand expansion defined (Cont.) Geographic Expansion  Airline perspective  China has been attracting brands over the past couple of years.  Current examples:

2012 © Intellectual Property Institute of Canada Brand expansion defined (Cont.) Geographic Expansion Core Brands/Products (classes) Product Line Expansion

2012 © Intellectual Property Institute of Canada Brand expansion defined (Cont.) Sub-brands New Platforms Acquisitions

2012 © Intellectual Property Institute of Canada Strategies to Secure and Enforce Trade Mark Protection in Different Markets

2012 © Intellectual Property Institute of Canada Strategies to Secure and Enforce Trade Mark Protection in Different Markets (Cont.) Why it is important:

2012 © Intellectual Property Institute of Canada Strategies to Secure and Enforce Trade Mark Protection in Different Markets (Cont.) Working with business and marketing teams Use and Registration Availability Clearance  Searches (Preliminary/Comprehensive) Registrations  Offensive/Defensive filing  First-to-File  International Conventions  Register updated trademark versions/Vulnerability  Docketing

2012 © Intellectual Property Institute of Canada Strategies to Secure and Enforce Trade Mark Protection in Different Markets (Cont.) Proper/Consistent Use Employee Training Legal Review Register modified versions of the trademark, if used License – Quality Control Customs Recordation Copyright Registration

2012 © Intellectual Property Institute of Canada Strategies to Secure and Enforce Trade Mark Protection in Different Markets (Cont.) Enforcement Strategies Reporting mechanisms Investigations Oppositions/Cancellations

2012 © Intellectual Property Institute of Canada Strategies to Secure and Enforce Trade Mark Protection in Different Markets (Cont.) Cease and Desist/Undertakings  Example:

2012 © Intellectual Property Institute of Canada Strategies to Secure and Enforce Trade Mark Protection in Different Markets (Cont.) Lawsuits Criminal/Raids

2012 © Intellectual Property Institute of Canada Interactions between outside and in-house counsel

2012 © Intellectual Property Institute of Canada Interactions between outside and in-house counsel (Cont.) Communications Roles and responsibilities Expectations Knowledge of business/philosophy Docketing Billing

2012 © Intellectual Property Institute of Canada Difficulties/Concerns when taking a brand into a new market “THINK GLOBAL, ACT LOCAL”

2012 © Intellectual Property Institute of Canada Difficulties/Concerns when taking a brand into a new market (Cont.) Issues with regional brands  Airline Perspective  Marketing adaptation  Target local consumers  Partnership in alliances  Sales channels, including different points of sales  Ensure compliance with local laws/regulations

2012 © Intellectual Property Institute of Canada

Difficulties/Concerns when taking a brand into a new market (Cont.) Culture Relevance  Examples  Tea Culture /Coffee Culture  Marketing/Taglines Demographics Translation/Transliteration  (Examples - lu jian pi = green arrow brand; san hua niu nai = three flowers milk; lao ren pai = old man brand; Ferragamo = fei lat gai mo = fly off the chicken feather

2012 © Intellectual Property Institute of Canada Difficulties/Concerns when taking a brand into a new market (Cont.) Negative Connotation  Examples:  Nike’s Black & Tan  Other examples  TIAZZI

2012 © Intellectual Property Institute of Canada Questions?

2012 © Intellectual Property Institute of Canada Closing Remarks