How long have you been with the company?
I am in charge of the legal department of the STAEDTLER Group, being responsible inter alia for all matters relating to trademarks and also to technical IP rights.
I started at this company in 1991, and in 1995 I was appointed as the head of the legal department. Since 2007 I have also been in charge of technical IP rights. We have very interesting products; you can actually feel them and take them in your hands. Unfortunately we are confronted with a lot of fakes and therefore have to find effective answers to defend our original products, especially by means of IP protection. It is a very dynamic and international business, since our products are sold in over 150 countries. The job is very interesting and requires a very broad knowledge.
What are the main brands you have?
The two main companies of the STAEDTLER Group are Staedtler and Eberhard Faber and they have various products under them.
Staedtler has a wide range of products corresponding to eight product lines. All products of Staedtler bear the brand STAEDTLER and the company’s logo—the so-called MARSHEAD, recalling the Roman god of war. In the 1970s the MARSHEAD was given an abstracted form, but in 2001 it was redesigned and given a much more naturalistic form.
One of the oldest brands of the product lines is MARS: its first trademark application was filed in 1900. Then we have the NORIS products and its first trademark application was filed in 1901. Characteristic of the NORIS products is the yellow and black design for pencils, pens and other stationery products. NORIS CLUB is the brand for a range of products intended to be used by pupils. Then we have LUMOCOLOR for a wide range of markers. LUMOCOLOR was first used in the 1950s as brand for an overhead pen. TRIPLUS is the brand for a product range of triangular pens in a unified design, started in 2001. The design features allow all products to be recognized as one unique range. ERGOSOFT is the brand for a range of wood-cased pencils with a specific smooth surface, which enables a better handling of these pencils. Then we have KARAT for high-quality water pencils.
Eberhard Faber has its own product assortment, containing inter alia modeling clays. All products bear the brand EBERHARD FABER, which is the name of the company. One of the most famous brands of EBERHARD FABER is FIMO, which is the market leader in the sale of oven hardening modelling clays. Eberhard Faber has also developed a product assortment of clays for disabled and elderly people to improve their mobility, which started this year in Germany.
What is the business model?
The STAEDTLER Group is owned by the STAEDTLER foundation. The profit mainly goes to scientific research in German polytechnics and universities. The STAEDTLER Group is a very international-oriented organization. Staedtler has subsidiaries in 23 countries and 85% of our turnover is in exports. We deal with our own subsidiaries, distributors and some sales companies all around the world and the distribution is made B2B.
The target for the STAEDTLER products is to be market leader in quality in the range of products they belong to. All STAEDTLER products should offer the user a unique feature in application.
Tell me some facts about the brand.
The first person to be found as pencil maker with the family name Staedtler was Friedrich Staedtler in 1662, who is related to the founders of our company. The company was founded in 1835 by Johann Sebastian Staedtler, and the first trademark approved was J. S. STAEDTLER in 1896, which is still valid. Then in 1896 two other trademarks were registered which are still alive: one is the ATLAS mark and secondly, the MINERVA trademark. At the end of the 1990s we filed trademarks for our new product lines like TRIPLUS and ERGOSOFT.
We recently filed an event trademark for the World Kids Coloring Day which is on May 6 and will start for the first time this year. It is intended to ask children to use their creative ability and to sell and display their artwork. An advertisement campaign is made in newspapers, media and the internet. We cooperate with Save the Children. The proceeds will go to children in developing countries to fund their education.
What are the strengths and weaknesses of the brands?
The strength comes through a billion of our products sold every year. Some of our brands have a history of more than a hundred years. Some products and some specific product designs have been known in business for decades. This intensive use gives our brands a very high reputation and awareness worldwide. The awareness could still be improved concerning the end consumer. Secondly, I think it is very complicated to make consumers aware of the wide range of brands, since consumers do not check this kind of writing instruments and their brands very carefully at the point of sale.
How do you maintain control of the brands?
By registering them wherever they are being sold and distributed. We also rely on a worldwide survey of our brands for information. We have a good structure by which our sales organizations notify us of any infringement. They keep us well informed about the developments and we have a system in place where we get the information quickly. The worldwide communication within the STAEDTLER Group and the cooperation with a network of external investigation and law agencies allows us to react effectively to infringements.
Do you use design rights to protect brands, packaging etc?
Yes. We have design rights for pencils with specific color designs and we also have a trademark for an innovative sort of packaging which is the STAEDTLER Box.
How many countries do you protect the trademarks in and how many trademark registrations do you have?
We have approximately 1,500 registered trademarks in over 110 countries.
How has the brand changed since you’ve been there?
As I mentioned earlier the logo has been made more naturalistic. It was during my tenure that the ERGOSOFT and TRIPLUS ranges were launched. The territorial scope of protection of these trademarks was clearly defined. Any territorial expansion of our sales activities requires an examination of the territorial scope of protection.
We have developed the Umbrella concept. The first point is protection, and we go through an analysis in line with the sales department to identify key areas. Second is enforcement, we need qualified lawyers all around the world especially where fakes could be found. For key products we try to prepare all necessary information and documents in advance. For example, for our innovative STAEDTLER Box we made a CD which contains the description of the products and of the different forms, how the design works, the awards granted, the IP rights registered and sales figures as well as a summary of enforcement actions. Third, we try to integrate within the product or the respective package security features to allow the distinguishing of our original products from fakes. Fourth, we inform our organization, our staff, of new developments, the latest enforcement cases etc.
What has been the most challenging aspect in maintaining your brand in today’s global environment?
It is a challenge to protect not only trademarks but also other IP rights like patents and utility models in time and to develop a concept before the product is launched. The territorial scope of protection has to be defined as early as possible and to the extent necessary. Since IP protection costs a lot, we have to bear the economic side in mind. Therefore we have to live with certain gaps in protection. Concerning trademark protection it is necessary to predict some developments of the range of products as well. Article indexes could be limited but not extended.
Another challenge is that nowadays manufacturers of fakes are acting globally and they are even using IP rights to protect their fakes. In China we were confronted with utility model registration of a fake manufacturer, which only copied our patent registration in Germany filed five years in advance. The cancellation of these kinds of IP rights is not only expensive but the long duration of these procedures allows the infringers to keep their business alive for a longer period of time.
The third challenge is registering new forms of trademarks in time because we have no unified legislation of trademarks all over the world so the demands vary from country to country on whether you can get trademarks for the form of products, colors etc.
What measures do you take to police your brands?
In China we do conduct trade fair monitoring and carry out investigations if needed. There are a lot of confiscations carried out by the public authorities on our behalf. We also ask for Customs control if needed in some countries.
We feel it is important to find economical solutions and avoid court proceedings if possible. We always try to come to innovative solutions in order to work effectively with a limited budget.
What do you like most about working in trademarks?
I like that it is an international business with really dynamic developments. We develop assets even for the next generation since trademarks could have an unlimited period of protection. Some of our trademarks have been protected and used now for more than 100 years and they are still alive and are state of the art. We are also able to give interviews like this and go to the INTA Annual Meetings. Public relations is also very important to make people aware of the developments in protection and of successful enforcement matters.
Background: the STAEDTLER pencil
On October 3, 1835, Johan Sebastian Staedtler founded his own pencil manufacturing plant in Nuremberg. Johan Sebastian transferred the experience and expertise he had gathered in the traditional craft of pencil making in the workshop of his father Paulus Staedtler to the new, industrial factory—officially recognized and certified by Nuremberg’s city council.
He went on to create the colored pencil, which was similar to a black lead pencil and could be sharpened to a fine point, and offered superb writing performance. They would not change their color and they maintained a consistent degree of hardness.
By 1840, he was manufacturing 63 different kinds of pencils and, from 1856, he was producing both round and hexagonal cedar wood pencils, each in 48 different colors. By 1866, he was employing a workforce of 54 and boasted an annual production volume of 2 million pencils.
Now Staedtler employs over 3,000 people and it is Europe’s largest manufacturer of black-lead and colored pencils. It is still in Nuremberg, where STAEDTLER produces 80% of its writing instruments.
Eberhard Faber and INTA
Staedtler’s Eberhard Faber group has an important place in INTA history. The Faber family began manufacturing pencils in Germany in the eighteenth century. In the mid-1800s, John Eberhard Faber moved to New York, where he founded the first pencil factory in the United States. Faber was one of a small group of businessmen who met in New York in 1878 to organize the United States Trademark Association (as INTA was formerly known).
When Faber died the following year, his son Eberhard took over the Eberhard Faber Pencil Company, which quickly developed into an international organization with operations in more than 60 countries. The Eberhard Faber Rubber Company was founded in 1896, and it became the world’s largest producer of erasers.
The younger Eberhard Faber served on USTA’s Board of Directors from 1890 to his death in 1946, and was Association President from 1904 to 1945. His obituary in the May 1946 issue of The Trademark Reporter stated in part:
[Eberhard Faber] had to his credit 56 years of continuous service to the Association, a record probably unmatched in trade association annuals.... The leading part taken by Mr. Faber in guiding the Association, and his careful and unremitting attention to the larger aspects of its work, has greatly enhanced its growth and effectiveness.
