INTERNATIONAL BRANDING STRATEGYTHE LEGAL INSIGHTS

By:

Nishant Kewalramani

Head- IP Consultation and Strategy

Brain League IP Services

AGENDA

Choosing a Mark

Global Branding- Constants & Variables

Trade dress

Factors Affecting Fame

Dilution- A Policing Strategy

WHAT IS A BRAND

Trading name/logo Identity Recognition Company Image

A source of promise to consumers. It promises relevant differentiated benefits.

- Brad VanAuken (Author- Brand Aid)

CHOOSING A MARK- THE PROTECTION LADDER

• Fanciful• Arbitrary• Suggestive• Descriptive• Generic

THINK OUT OF THE BOX

Shape

Sound-

Smell-Plumeria scent for sewing threads

BRANDING CONSTANTS

Basic Brand Identification - word mark/logo

Brand Promise

Corporate Slogan

BRANDING VARIABLES

Product names & related slogans

Positioning

Target Audience

Pricing

Association with parent mark- ideal

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

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

TRADEMARK TO TRADE DRESS

Trade Dress- Visual appearance of a product Size Shape Design Pattern Packaging

Generally acquired distinctiveness.

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

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

THANK YOUnishant@brainleague.com