TRADEMARKS & BRANDING STRATEGY

LEGAL INSIGHTS

By: Nishant Kewalramani Partner & Head- IP Consultation and Strategy Brain League IP Services

AGENDA

Choosing a Mark Trade dress

Factors Affecting Fame

Dilution- A Policing Strategy

WHAT IS A TRADEMARK
A mark Capable of being represented graphically Capable of distinguishing the goods and services of one person from another

Mark
Shape of goods Packaging of goods Color combinations

THINK OUT OF THE BOX

Shape

Sound- Yahoo Yodel

Smell- Plumeria scent for sewing threads

WHAT IS DISTINCTIVENESS

Inherent Distinctiveness

By Virtue of the mark itself Nature of the mark Capability of identifying source when newly adopted

Acquired Distinctiveness
Market acceptability Association with source Incontestability

CHOOSING A MARKTHE PROTECTION LADDER

Fanciful Arbitrary Suggestive Descriptive Generic

TRADEMARK FILING STRATEGY

Word marks offer broadest protection Logos ensure better connection with consumers and easy recognition of brand Black & white logo ensures broad protection over all color combinations Colored logo- closer association towards building a stronger brand

Filing in allied classes

INTERNATIONAL PROTECTION

Registration in country of origin (persuasive value) Six month window- claim priority from national filing (Paris Convention) Keep an eye on Madrid Protocol File Smart- CTM, Aripo etc.

Domain name same as/derivative of corporate name- may build common law rights world wide without registration

LIKELIHOOD OF CONFUSION

Similar marks (phonetic/visual similarity) Similar goods or services

No side by side comparison

Comparing parts of marks not permissible

PERSON OF

Average Intelligence Imperfect Recollection

PHARMA BRANDS
Meronem (Astrazeneca) Meromer (Orchid Chemicals)

Derived from chemical name Meropenem

Falcigo Falcitab

Schedule L Drug

Niftran (Ranbaxy) Niftas (Intas Pharma)

Schedule H drugs- chemist will not cheat the customer

TRADEMARK TO TRADE DRESS

Trade Dress- Visual appearance of a product

Size Shape Design Pattern Packaging

Generally acquired distinctiveness. Increasingly used to differentiate between products.

HEINZ V. DABUR

FACTORS AFFECTING FAME

Knowledge or recognition in relevant section of public Duration extent and geographical area of of use

Duration, extent and geographical area of promotion

Duration of registration Record of successful enforcement

INFRINGEMENT V. DILUTION
Infringement Dilution

Similarity of marks Similar goods and services Likelihood of confusion Tests of judging similarity comparatively strict

Similarity of marks Goods/services may be dissimilar No confusion Presumed element of bad faith if any similarity found

Mercedez Benz Benz Underwear

ITC Welcome Group-

Phillip Morris

DILUTION- THE POLICING STRATEGY

Planned strategy towards acquiring fame Continuous look out for similar marks Policing- even if dissimilar goods or services

Blurring- use on dissimilar products Tarnishment- use on unsavory products

CROSS BORDER REPUTATION

MilmetOftho Industries v. Allergen

Ocuflox "OCU" from "OCULAR" and "FLOX" from "CIPROFLOXACIN

Blenders Pride Whisky

THANK YOU
nishant@brainleague.com