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

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