TRADEMARKS & BRANDING STRATEGY
LEGAL INSIGHTS
BananaIP Counsels
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 MARK- THE 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)
Falcigo Falcitab
Niftran (Ranbaxy) Niftas (Intas Pharma)
Derived from chemical name Meropenem
Schedule H drugs- chemist will not cheat the customer
Schedule L Drug
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
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
Infringement Dilution
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 [email protected]