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 [email protected]