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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
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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
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2012 © Intellectual Property Institute of Canada Company Introductions: Air Canada and Starbucks Coffee Company International business presence International portfolio Trademark Team/Management Model
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2012 © Intellectual Property Institute of Canada Brand expansion defined Industry Perspectives…..
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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:
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2012 © Intellectual Property Institute of Canada Brand expansion defined (Cont.) Geographic Expansion Core Brands/Products (classes) Product Line Expansion
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2012 © Intellectual Property Institute of Canada Brand expansion defined (Cont.) Sub-brands New Platforms Acquisitions
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2012 © Intellectual Property Institute of Canada Strategies to Secure and Enforce Trade Mark Protection in Different Markets
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2012 © Intellectual Property Institute of Canada Strategies to Secure and Enforce Trade Mark Protection in Different Markets (Cont.) Why it is important:
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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
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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
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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
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2012 © Intellectual Property Institute of Canada Strategies to Secure and Enforce Trade Mark Protection in Different Markets (Cont.) Cease and Desist/Undertakings Example:
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2012 © Intellectual Property Institute of Canada Strategies to Secure and Enforce Trade Mark Protection in Different Markets (Cont.) Lawsuits Criminal/Raids
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2012 © Intellectual Property Institute of Canada Interactions between outside and in-house counsel
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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
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2012 © Intellectual Property Institute of Canada Difficulties/Concerns when taking a brand into a new market “THINK GLOBAL, ACT LOCAL”
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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
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2012 © Intellectual Property Institute of Canada
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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
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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
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2012 © Intellectual Property Institute of Canada Questions?
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2012 © Intellectual Property Institute of Canada Closing Remarks
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