Claus Lauter [00:00:00]:
Welcome to episode 299 of the ecommerce Coffee Break podcast. In today's episode, we discuss intellectual property, trademarks and copyrights. We're going to find out why trademarks are essential for any online business and how to protect your e commerce brand legally. Joining me on the show is Guido Laredo, a swiss argentine attorney specializing in IP law. So let's get started.
Voice over [00:00:24]:
This is the e commerce Coffee Break, a top rated Shopify growth podcast dedicated to shopify merchants and business owners looking to grow their online stores. Learn how to survive in the fast changing e commerce world with your host Claus Lauter, and get marketing advice you can't find on Google. Welcome.
Claus Lauter [00:00:49]:
Welcome to the show. Hello, welcome to another episode of the ecommerce Coffee Break podcast. Today we want to talk about a topic that we never had in 300 episodes on the podcast. And I think it's particularly important if you're a solopreneur, an entrepreneur, a startup founder to talk about it's intellectual property and trademark laws. If you're not clued up when it comes to trademark laws and intellectual property, you might be in hot water relatively quickly, specifically if you just have started a business. And we want to find out what is the best way to deal with that and learn a little bit more about on how to put this in place into your business. With me on the show today, I have Guido Laredo. Guido is a swiss argentine attorney specializing in IP law, especially trademark law, and with additional expertise in brand management.
Claus Lauter [00:01:34]:
Guido has advised luxury and sports industry clients on counterfeit issues, contract management and negotiations, as well as other event elaboration, commercialization and implementation. Guido's passion for brands and commitment to ongoing education led him to complete the executive master in luxury Management at EsSec Business School and SDA Bodocki School of Management. So let's welcome Guido to the show. Hi Guido, how are you today?
Guido Laredo [00:01:57]:
Thank you very much for this flattering introduction and I'm very pleased and thankful to be in your show.
Claus Lauter [00:02:04]:
Let's dive right into it. Trademark law, IP copyrights, all of that is on a legal side. And a startup founder, an entrepreneur is not necessarily a lawyer, an attorney or well versed when it comes to law. Now, both of these things are very, very important. And just give me a definition between the differences of IP and trademarks and copyrights so that people get an idea what we're talking about.
Guido Laredo [00:02:30]:
From the legal side of the things of trademarks. You have to differentiate, as you, as you named it, between trademark law and other IP laws like copyright law, patent law, which are covering different areas. Trademark law is the area where you want to make sure that your brand is protected and not copied or used by others by certain people who are not authorized to use your brand. So that is one area. Patents, on the other hand, it depends on which country we are referring to. But patents in Europe for instance, and Switzerland also is the protection of an invention which is applicable in life. So it's more on a scientific area. And copyright is more about works and creations with a certain quality that you are the author of.
Guido Laredo [00:03:32]:
So we are talking about works of literature, of music and other arts. So trademarks and brands are more to be situated into the commercial context, are more about protection of your, of your identity, of your company. And of course you want to have it. That all the efforts you put into your company and into your products and services, you want to make sure that all the efforts are on your plate and not getting used by third parties. So that's, from the legal point of view, the main idea of brand protection and trademark law.
Claus Lauter [00:04:21]:
I think that was a very good explanation. And as you already mentioned, it's kind of a two sided sword. It's your trademark, it's your invention. But on the other end, you don't want to misuse someone else's trademark intentionally or unintentionally. Now, what do you see happen most with brands when they get started, when they start to think about trademark? Obviously, you have to register a trademark first, and that's a complicated process. What's the thought process behind that? How does that work?
Guido Laredo [00:04:50]:
First of all, we have to distinguish the legal side and the brand management side of an initial sort. If you are a startup company from the legal side, you need to do some homework, some research, and you need to know a bit what your story is, what your background is. So now we are shifting a bit into the strategic brand management side of this phase, of an initial phase. You need to think, okay, where am I standing right now? What is my history? Where do I come from and where do I want to evolve? So this is the point. You need to be clear. You need to have some clearance about that. What is the promise my brands will carry? My brand will carry, what is the quality I want to deliver? What is the identity I want to display? And at the end of the day, you want to have as much congruency between your brand identity and the brand image you want to create in your consumers and your clients heads. So that is the first point.
Guido Laredo [00:06:15]:
And then you need to be aware that once a client or a consumer buys or uses your brand, you become a community, you form a relationship. Your consumer, your customer, appreciates the reputation that your brand conveys. He values your brand and he decides to be part of that. I mean, we understand that very easily. As an example, if you want to buy a new car, it carries different layers. The decision making to which community, to which family you want to belong to and why. And all this information is a bit concentrated and conveyed and transported through the brand. And the legal part of it is you want to be the guard keeper of all this information.
Guido Laredo [00:07:16]:
You don't want anybody else to get hold of. In German, you would say to, to be Tritbredfaler, in German, a free rider of your brand identity, of your ideas. So this is where these two areas, the legal part and the strategic brand management part, come together.
Claus Lauter [00:07:38]:
I think what's very important that you explained there is a branding size to it or a branding part to it, and there's a legal part to it. Then obviously, if you register a trademark, that's a long term marriage, you cannot change it every three months. And it's a complex process. So you want to make sure that the message to branding is right before you register your trademark. Now, the trademark register process, as far as I remember, is on a country based level, is that right? How does that work?
Guido Laredo [00:08:07]:
That is correct. The system is on a territorial principle. Based on that principle. However, there are some multinational treaties, the Paris treaty, the classification is also unified, the NHTSA classification. So that helps if you want to expand your business into different countries and markets. However, you need to be clear at the very beginning of your business. Okay, in which or which countries I want to develop my business. Is it a national, is it a national business? Is it an international business? On.
Guido Laredo [00:08:51]:
Based on that question and answer, you will register your brand, your trademark in those countries, of course. Now we have community brand, community system, the EU brand, which the base is in Alicante in Spain, you can register the trademark there. You can have a basis in one of those countries and then expand also to other countries. You can do that via the WIPO office in Geneva, and most of the countries are affiliated with that system. And from there you can expand your brand and the protection of your brand to different countries. Be aware that the more countries, the more the fee will cost you. Of course.
Claus Lauter [00:09:47]:
Hey, Claus. Here, just a quick one. If you like the content of this episode, subscribe to the weekly newsletter at newsletter Dot ecommerce coffeebreak.com. I score and create 50 news sources so you don't have to saving your hours of research. Grow your revenue with ecommerce news, marketing strategies, tools, podcast interviews and more, all in a quick three minute read. So head over to newsletter dot e commercecoffeebreak.com to subscribe. As said, 100% free. Also, you will find the link in the show notes.
Claus Lauter [00:10:11]:
And now back to the show. I think good point there. At what point do you think should a company really look into registering their trademark, their brand? Because as I said, it can be quite labor intensive time, extensive, and at the end of the day, it can be quite costly to go through that process. So if you have just started your business and you're four weeks in or you have sold your first ten products, it might be a little bit too early in the story of your business. What's the process there? When would you recommend to start looking into trademark registration?
Guido Laredo [00:10:48]:
If you are a hairdresser in a small village and the next village is like 100 km away, do you need your brand and protect your brand as a hairdresser or as a barber? In that village, you are the only one and nobody else will enter your market. So probably there is no need for you to come up with a fancy brand and even to protect your brand because you are the only one delivering that service. However, these days we all know there is a huge amount of services and products that more or less are competing with you and you want to make sure that your service is recognized, your product will distinguish itself from other products. So the answer to your question is yeah, if you are in competition with other services and with other products, it's very advisable and I would recommend to protect your brand in an early stage. And once you decided, okay, now I am evolving. I am addressing to a certain public, now I want to protect it. And when you answered the question in which country you are active, in which country you will be active maybe in two to five years, then you know which countries you are. You want to protect your brand and certainly you need to.
Guido Laredo [00:12:34]:
You need to do some research. Are there once you came up with a name, maybe also a logo, you need to do a research. Okay, is there any other using a similar or similar name or logo? You don't want to start with a legal issue that's not very advisable and also from a legal point of view, you might get into trouble after your brand is registered at the office IPO office. The older owner have three months time to file an opposition to your brand deposition. So you need to do some legal research. But also not only legal research, but also from a strategic point of view, you need to answer the question, okay, where is my service or where is my product placed in the market? Which consumers, which buyers do I want to address? And you need to also answer the question of your pricing. Of course, that goes hand in hand with the positioning and where do you see your brand in the future? Where does it evolve? Again, we come back to the question of the countries you want to to be active in. And yeah, these are the main questions you need to answer for yourself as a startup company or as an entrepreneur.
Claus Lauter [00:14:27]:
Now, as a trademark, obviously, you protect yourself getting sued. You build up your brand and with that you create an asset, you create a value. Specifically, if we want to sell your company, at some point in time, having a trademark might be a huge asset that influences the sales price. What's your take on how important is the trademark in trying to sell a business?
Guido Laredo [00:14:53]:
I'd like to come up with a short story or a quote of a CEO of a very well known and famous company who was asked, what is his most important asset? And he answered, if I would have the choice of keeping all the manufacturing devices, all the fabrics or the brand, I would keep the brand. The brand is far more important with the brand, he said, I can start all over again. I need to have investors, but I need to have the people who know how to produce the product. But when you have the brand, you have such an important asset because the public knows your brand, the public knows the quality of what you have done in the past. It's like condensed, condensed value. And it also, of course, in an m and a procedure. The brand is very often very, if not the most valuable asset of a company. So you better treat and protect and lead your brand very carefully.
Guido Laredo [00:16:25]:
I like to see brands as a person. It has a history, it has a business history, it has a present and it has a future. And the brand needs to be guided, it needs to be placed in the right market, in the right place, needs to have their, the congruent visibility, own communication. If you respect all that, your brand will become a very, very valuable asset that protects you from unfriendly takeovers, for instance, but also gives you a very strong negotiation position if you are in an m and a transaction.
Claus Lauter [00:17:23]:
Specifically in the e commerce sector, companies tend to grow very, very quickly if they're lucky. And then obviously a strong brand name that is registered will help a lot in finding a buyer. Now I want to have a look or talk about the other side. You are running a business and unintentionally you violate the trademark of someone else unknowingly, that can happen. Just a simple wording might happen, must not necessarily be a logo. And you get a letter from a lawyer. And what happens then? How do we react on that?
Guido Laredo [00:17:56]:
Well, yes, it can happen. It should not, but it can happen. Of course, we are now in a very specific case of so called trademark infringement case. First of all, you need to evaluate, is this a serious case or is it just somebody trying to force you to do something or you are not willing to, or even to get money out of it. So if it's seriously based and there is like a similarity between the two involved brands, or if the third party is holder of a famous trademark and you are maybe using the reputation or the name and the well known name, and you want to profit to have a publicity effect, then you could be willingly or unwillingly a free rider. And you need to be very careful because the next steps, or the threats that are in, in the room right here and right now for you is that let's assume you made some investments in your products, in your presentation, packaging, online investments. Of course, if the third party has the stronger right, the older right, and is holder of a famous trademark, he can force you to destroy all packaging and all products and all activities that are similar or are entrenching the reputation of his trademark. So it's very important before you go out to the market or while you are planning a new campaign to make sure you are within good rights and you are acting in good faith and also within your own trademark rights and not infringing anybody else's trademark rights, it.
Claus Lauter [00:20:34]:
Can become very seriously, very quickly. And if you have a bigger business, there might be a lot of money involved. And obviously you don't want to have your products destroyed by simply not having done your homework in the first place. Now, what I like on your profile, you come from the law perspective, but also from the branding perspective. And that's a combination that's not around that often. How do you help your clients through the process? What steps are involved?
Guido Laredo [00:21:01]:
I like to combine these two areas. As a lawyer, as a trademark lawyer, you are, let's say, the guardian of your, of your work, of your brand. You make sure that nobody else uses the reputation, the name that carries your brand. And on the other hand, as a brand manager, you can see yourself as an architect of the future of your brand. You help your clients that their brand identity evolves, that there is an evolution. But maybe you want to make a brand extension, maybe product line extension, or maybe to enter new markets with your existing background. So that's my role. I am very passionate about it.
Guido Laredo [00:22:09]:
I like it very much. I like also the fact that I'm not limited only to the legal protection to be the guardian, but also to be an architect of a brand, to make sure that all efforts and all communication activities are aligned with your brand identity and with your goals and with your goals and with the actual, actual position and the actual goals of your, of your brands. So I try to, for the benefit of my clients and my contacts, to combine these two areas.
Claus Lauter [00:22:59]:
Who is your perfect customer? So what kind of industries or niche or verticals are you working with?
Guido Laredo [00:23:06]:
Yeah, well in the past I had contacts with the swiss watchmaking industry, which is a very fascinating industry, and they're mainly in the legal protection, so counterfeiting and piracy issues. And in the last years I did some additional training and formation in brand management and there especially in the luxury brand management. So if I say luxury, it's not necessarily my idea. Client, let's say, or the client, it doesn't need to be in the luxury segment. Because if we talk about luxury brand management, it's like talking about a certain technique. We all know the cues before these famous brands that people that don't care how much it costs and they simply want to have that product and to be part of that and to, because of course there is an image transferred to the holder of a certain bag or a certain watch, we are all aware of that. And this scarcity and this atrocious image that comes back to the buyer. This is a result of a lot of work and a lot of history.
Guido Laredo [00:24:39]:
And you can, as a non, not being a luxury product, you can adopt certain techniques so that your product or your service is considered very valuable. So you can adopt certain techniques to enhance, to evaluate, to evaluate your product or service, to make it in the eyes of your consumer, more value. So that's the whole idea behind it. So it's not necessarily the customer that needs to be from the luxury sector, but it's to learn and to apply certain techniques that can help you grow and help you. That your brand and your product or service is regarded in a very precious and valuable way makes perfect sense.
Claus Lauter [00:25:50]:
I think it's not only the legal aspect of having a trademark and having the little tm behind your company name, there's so much more involved and we did not even talk about privacy and quantified products. I mean, that would be an episode on its own, I reckon. But this just should give a quick overview and I think you gave a lot of gold nuggets away there. Why it is important to have a trademark now, before our coffee break comes to an end today, what is a final thought that you want to leave our listeners with?
Guido Laredo [00:26:18]:
Well, as a final thought, maybe again, the importance of trademarks in today's world. If you are at the beginning of your journey, of your business journey, you are faced with many, with many questions and challenges, daily challenges that you need to solve, of course. But sooner or later, sooner or later, you will be faced with some strategic and legal brand challenges. And as a final thought, I would like you to embrace those thoughts because you are investing in your business's future if you are making these thoughts, protecting your brand and making sure that your brand carries a clear image and has a clear vision, who your brand is and where he is moving to. So this would be my final thought.
Claus Lauter [00:27:34]:
Yeah, very true. I have been in contact over the last 25 years with a couple of trademarks lawyer to protect our assets, our name, our brand for different businesses and I thought it's always a very important exercise to do. So. Where can people find out more about you?
Guido Laredo [00:27:52]:
Well, thank you for that question. I have a website which is www dot laredo branding.com but maybe more easily on LinkedIn. My name is Guido Laredo and you will easily find me there. I try to be active on that platform and I post about trademarks like once or twice a week.
Claus Lauter [00:28:17]:
Excellent. I will put the links in the show notes, then you're just one click away. Guido, thanks so much for giving us an overview. I think it was very insightful. I hope a lot of striving businesses will reach out to you and do it the right way. Thanks so much.
Guido Laredo [00:28:30]:
Thank you very much. All the best for you and your business as well.
Claus Lauter [00:28:35]:
Hey Klaus here. Thanks for joining me on another episode of the ecommerce Coffee Break podcast. Before you go, I'd like to ask two things from you. First, please help me with the algorithm so I can bring more impactful guests on the show. It will make it also easier for others to discover the podcast, simply like comment and subscribe in the app you're using to listen to the podcast and even better if you could leave a rating. Thanks again and I catch you in the next episode. Have a good one.