Branding for the international market

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BRANDING FOR THE INTERNATIONAL MARKET

• KNOWLEDGENTIA CONSULTANTS

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WHAT IS A BRAND?

• A brand is a distinguishing symbol,
  mark, artistic logo, name, word, sentence or a
  combination of these items that companies use to
  distinguish their product or services from others
  in the market.
• Legal protection provided to a brand is termed as
  TRADEMARK or COPYRIGHT.

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• Trade Marks are distinctive symbols, signs, logos
  that help consumer to distinguish between
  competing goods or services.
• Copyright is the artistic work/logo or
  combination of artistic work with data on
  websites or compilation of data in the form of
  software.
• Brands are legally not linked to quality. But,
  linked in consumers mind to quality expectation.
  

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BREAKING DOWN BRAND

• A brand is seen as one of its company's most
  valuable assets.
• It represents the face of the company, the
  recognizable logo, slogan, or mark that the
  public associates with the company.
• The company is often referred to by its brand,
  and they become one and the same.

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EVOLUTION OF BRANDING

• NOW, branding has grown to include the entire
  development process of creating a brand, brand
  name, brand identity, and in some cases, brand
  advertising.

• Initially It was synonymous with the visual
  interpretation or representation of a business.
• Branding included symbols or logos only.

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THE BRAND IDENTITY

• Can also be called CORPORATE IDENTITY or VISUAL
  IDENTITY.
• Meaning how you want your customers to perceive
  your business.
• It may include your brand name, packaging,
  artistic logo or your website.
• Important Brand Identity must match your brand
  image.
• Examples Apple, Nike, Reebok, McDonalds.

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BRAND PORTFOLIO

• Meaning Large business operating under multiple
  different brands or services use brand portfolio
  to encompass these entities into one.
• Each mark or brand can be registered.
• Objective To lessen consumer confusion via
• efficient marketing.

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INTERNATIONAL BUSINESS AND BRANDING

• Business across borders is spread over various
  parameters
• (a) Territory for Export
• (b) Demand of Product
• (c) Partners
• (d) Pricing
• (e) Marketing
• (f) Packaging
• (g) Transportation.

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• All these parameters are interlinked to
  protection of brand through Intellectual property
  registrations
• For Example Products having high enforcement
  of IP shall prefer to do business with strong IP
  protection countries
• Demand for Products shall depend upon whether the
  trademark is registered and well known in that
  territory and accordingly the Pricing can be
  negotiated
• Partners The expansion and partnering for
  business shall be dependent upon how strong is
  the IP and accordingly Franchisee, License,
  Exclusive Distribution Agreements can be entered
  into amongst businesses.

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• Thus, Intellectual Property is one of the
  paramount issue while commencing business of
  exports or preparing export plans.
• Branding covers mainly IPs i.e. Trademark
  Copyright

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TRADEMARK REGISTRATION IN INDIA

• Laws Trade Marks Act, 1999 and Trade Mark Rules,
  2002
• Benefit Gives the owner an exclusive right to
  use the mark or logo on its products or services.
  
• Mark or Logo may include distinctive symbols,
  signs or tag lines that help consumers to
  distinguish between other goods or services.
• Period 10 years renewal.

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IMPORTANCE OF TRADEMARK/BRAND PROTECTION

• Promotes fair and efficient Commerce.
• Regulates Competition.
• Protects Exclusivity of Owner
• Promotes product Quality Consistency.
• Prevents Unfair Competition.
• Enhances quality products in market.
• Builds reputation and goodwill of the
  product/brand and the owner company.
• Excludes others from using similar/identical
  trade mark.

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COPYRIGHT

• Laws Copyright Act, 1957 and Copyright Rules
  2013
• Benefit Gives the creative author/owner an
  exclusive right to use the logo/work
  internationally.
• Work - Artistic, musical, dramatic, literary,
  cinematographic, creative works of the authors,
  software.
• Period Protection period - Life of author 60
  years.
• Berne Convention - India is a signatory so
  copyright registration in India gives protection
  in all member countries.
• Enforcement Efficient criminal and civil
  remedies.

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HOW TO PROTECT BRANDS INTERNATIONALLY?

• Solution The Madrid system for the
  International Registration of Trademarks.
• Benefits
• Bundle of national rights capable of being
  administered centrally.
• One Language/One Fee.
• Cost Effective.
• Simpler Renewable and Registration process.
• Indian Attorney can be one point of contact.

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INDIA AS THE OFFICE OF ORIGIN

• India has ratified and implemented Madrid
  Protocol recently.
• Criteria
• The applicant should be a national of India, or
• The applicant should be domiciled in India, or
• The applicant should have a real and effective
  business or commercial establishment in India
• Registration of Trademark with Indian Trade Marks
  Registry is necessary.
• Applicant can designate one or more member
  countries for protecting the mark.

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COPYRIGHT REGISTRATION

• Artistic work/logo of the Brand can be accorded
  protection through Copyright Registration.
• Copyright Registration is legally valid and
  enforceable in all member countries.
• Indian registration gives international
  protection.
• Cost effective and efficacious remedy.
• Registration is within a span of 1 year.

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ADVANTAGES OF BRANDING THROUGH IP ACROSS BORDERS

• Exclusivity
• IP is Territorial
• IP Laws and Procedures are Different
• Enforcement of IP Border Measures
• Avenues for partnering Licensing, Joint
  Ventures, Exclusive Distributorship Agreements
• IP in brands gives an edge

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ENFORCEMENT OF IP

• CAUTION NOTICE
• CEASE DESIST NOTICES TO MANUFACTURERS, DEALERS
  AND SELLERS
• LITIGATION
• CUSTOMS ACT NOTIFICATION, 2007

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INTELLECTUAL PROPERTY RIGHTS (IMPORTED GOODS)
ENFORCEMENT RULES, 2007

• Customs Act has notified specifically crafted IP
  enforcement rules, 2007 to curb infringing goods
  entering into Indian territory
• These rules are Intellectual Property Rights
  (Imported Goods) Enforcement Rules, 2007
• Owner of IP Right Holder Can give notice to
  Commissioner of Customs in the prescribed format
  for reporting that infringing goods are being
  imported in India

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• Commissioner of Customs after verifying the
  details will prohibit the clearance of those
  goods Deemed to be Prohibited as per Section 11
  or Suspend the clearance
• On taking order of suspension of
  clearance/prohibition the Customs department
  shall send notice to the right holder as well as
  importer to join proceedings within stipulated
  time period, failing which the Customs
  authorities shall take appropriate action for
  release or disposal of goods as required.

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REAL TIME CASES

• Synopsis
• Trademarks and brand names go hand in hand.
• Trademark infringement cases which have left
  brands, both domestic and international, in
  jeopardy.

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Ellora Industries v. Banarsi Das Goela Ors.,
Delhi High Court AIR 1980 Delhi 254

• FACTS
• Plaintiffs were the registered owners of the
  trade mark 'ELORA' in respect of watches,
  time-pieces, clocks and their parts. And have
  been selling clocks with the trade mark 'ELORA'
  since 1955.
• Later in October 1962 they found an advertisement
  issued by the defendants "ELLORA INDUSTRIES" with
  'ELLORA' as the trademark for their time-pieces. 
• SUIT Plaintiffs filed a suit 1964 to restrain
  the defendants from carrying out their business
  under the trademark "Ellora". The allegations
  made by the plaintiffs were as follows
• .

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JUDGEMENT

• Defendants were restrained from using the
  trademark ELLORA for clocks and wrist watches by
  the Honble High Court.
• Plaintiffs registration of the mark, use and its
  reputation were upheld.

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N.R. Dongre And Ors. vs Whirlpool Corporation And
Another, Supreme Court of India 1996 (2) ARBLR
488 SC

• Trans-border reputation and good will.
• FACTS
• The Indian company filed for the trademark
  Whirlpool which was opposed by the MNC. Whirlpool
  corporation then filed a suit for permanent
  injunction which was allowed and N.R. Dongre was
  restrained.
• The Apex Court while adjudicating the appeal,
  interpreted the concept of trans border
  reputation of a well known trademark.
• The importance of a trademark across borders was
  found to be within ambit of a trademark.
  Whirlpool established its right on basis of being
  well known worldwide.

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JUDGEMENT

• The court ruled in favour of the corporation and
  held that they were already indulged in selling
  their products to the U.S embassy in India. And
  further that were advertisements in various
  international magazines being circulated in India
  about the products sold by the corporation
  bearing the trademark and name Whirlpool.
• Granted a temporary injunction in favour of the
  corporation stating that there were no reliable
  and conclusive evidence of defendants having
  carried out marketing of their washing machines
  bearing the trademark 'Whirlpool' for any
  considerable time prior to the date of grant of
  injunction.
• An appeal before the high court saw the judgement
  being upheld. Special Leave Petition was filed
  before the Supreme Court, the court finally
  upheld the decision of the Learned Single Judge
  as well as that of the Division Bench and
  reaffirmed the decision granted by the Single
  Judge bench of the Delhi High Court.

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Dr. Reddy's Laboratories Limited v. Manu Kosuri
And Another, Delhi High Court 2001 (58) DRJ 241

• FACTS
• DRD is the original registered owner of the
  trademark 'DR. REDDY'S' and has been using the
  trademark along with its subsidiary companies for
  an extensively long time.
• However, at the time of filing the suit, the
  application for registration of trademark DR.
  REDDY'S was pending and the company had a
  registered domain name "drreddys.com
• Defendant Mr. Manu Kosuri registered a domain
  name 'drreddyslab.com' for operating business on
  the internet.
• SUIT DRD filed a suit seeking permanent
  injunction restraining defendant from using the
  domain name drreddyslab.com or any other domain
  name which is similar or identical to DRDs
  trademark

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JUDGEMENT

• DRD is the original registered owner of the
  trademark 'DR. REDDY'S.
• Court restrained the defendant by a permanent
  injunction from registering a domain name or
  operating any business on the internet and
  elsewhere under the domain name 'drreddyslab.com'
  or any other domain name which is identical and
  similar to DRD's trademark 'DR. REDDY'S'.

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Cadila Healthcare Limited vs. Cadila
Pharmaceuticals Limited, Supreme Court of India
(2001) 5 SCC 73

• FACTS
• Cadila Healthcare Limited and Cadila
  Pharmaceuticals Limited were both pharmaceutical
  giants. Both companies got supplemental right to
  use the mark/logo CADILA as part of merger.
• Cadila Healthcares product was Falcigo and
  Cadila Pharmaceutical launched Falcitab.
• SUIT
• So, Cadila Healthcare filed for injunction on the
  ground of similar/identical trademark.

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JUDGEMENT

• The Honble Apex Court held since the products in
  question were medicinal products there was a
  greater risk of confusion compared to
  non-medicinal products.
• And it could have fatal and disastrous effects on
  the buyers. Thus, Cadila Pharmaceutical was
  restrained from using a similar trademark

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Playboy Enterprises v. Bharat Malik Another,
Delhi High Court 2001 PTC (21) 328

• Infringement of foreign trademark
• FACTS
• Playboy Enterprises Incorporation has been the
  publisher of the widely known magazine PLAYBOY
  filed for restraining an Indian publisher Mr.
  Bharat Malick, who launched PLAYWAY.
• Plaintiff contended that the adoption of the word
  'PLAY' by the defendant was ill motivated and
  illegal. And that the word was phonetically
  similar to the mark PLAYBOY. Hence, there was a
  clear case of infringement of the registered
  trademark of the plaintiff with the intention of
  selling the defendants magazine using the
  goodwill and reputation of the plaintiff.

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JUDGEMENT

• Court held that long and continuous user by
  Plaintiff of the mark PLAYBOY has given it a
  global reputation of being well known in that
  content. Thus, use of mark PLAYWAY for similar
  content amounts to infringement and passing off.
• Defendants were restrained from printing and
  publishing the magazine under the name PLAYWAY.

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Horlicks Ltd. Ors. V. Kartick Sadhukan, Delhi
High Court 2002 (25) PTC 126 Del

• FACTS
• Plaintiff HORLICKS Ltd. is a foreign company
  engaged in manufacturing of wide range of food
  products.
• Defendants Kartick Confectionery started
  manufacturing a similar look-alike product,
  namely, toffees under the trademark HORLIKS
  infringing the trademark rights enjoyed by
  'HORLICKS.
• SUIT HORLICKS filed for a suit seeking to
  permanently restrain KARTICK CONFECTIONERY from
  infringing the trademark HORLICKS and also its
  copyrights which it enjoyed over the product.

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JUDGEMENT

• The court ruled that use of the label and
  trademark HORLIKS by defendants in respect of
  toffees is very likely to cause confusion among
  the people. It would thereby lead to deception,
  majorly because Kartick confectionary have
  copied the trademark HORLICKS and also its label
  as and how it appears on the products
  manufactured and marketed by them.
• Court restrained defendants from manufacturing
  and selling toffees or reproducing, printing or
  publishing any label or other related goods under
  the trademark/copyright HORLIKS or under any
  other name that is similar in expression to Hs
  trademark HORLICKS.

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ICC Development International v. Arvee
Enterprises Another, Delhi High Court 2003 PTC
(26) 228

• FACTS
• ICC Development (International) Ltd. a company
  formed by the members of the International
  Cricket Council to own and control its commercial
  rights which included media, sponsorship and
  other intellectual property rights relating to
  their events.
• Arvee Enterprises was an authorized dealer of
  Philips India Ltd. Launched a Promotional
  campaign with slogan - "Philips Diwali Manao
  World Cup Jao" and "Buy a Philips Audio System
  win a ticket to the World Cup". They even
  inserted a pictorial representation of a ticket
  with an imaginative seat and gate number saying
  "Cricket World Cup 2003.
• SUIT
• ICC approached the Delhi High Court for restrain
  against the Defendant on the averment of ambush
  marketing

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JUDGEMENT

• But, the same was dismissed by the Honble Delhi
  High Court as neither it was an Unfair trade
  practice nor misuse of brand of World Cup.
• Court upheld that World Cup is a sporting event
  and not a trademark upon which exclusive rights
  would vest with Plaintiffs as claimed.

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Satyam Infoway Ltd. v. Sifynet Solutions Pvt.
Ltd., Supreme Court of India AIR 2004 SC 3540

• FACTS
• Satyam Infoway had registered several domain
  names pertaining to its business sifynet.com,
  sifymall.com, sifyrealestate.com, in the year
  1999. It averred that the word "Sify" had become
  a distinctive and well known mark.
• Meanwhile, Sifynet Solutions started using the
  word "Siffy" as part of the domain names and
  claims to have registered in the year 2001.
• SUIT
• Trademark protection was extended to Domain Name
  by Apex Court in 2004.

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JUDGEMENT

• Apex court held that Domain name protection falls
  within the ambit of Trademark.
• Thus, prior user, registration and probability of
  confusion in public were the parameters for
  restraining the defendants from using similar
  domain names.

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Colgate Palmolive Co. Ltd Another. vs. Mr.
Patel Others., Delhi High Court 2005 PTC (31)
583

• FACTS
• Colgate Palmolive Co. Limited filed a suit
  against Mr. Patel on the ground that they were
  imitating the trade dress/packaging of their
  product. The packaging of their AJANTA toothpaste
  was infringing the trademark and copyright as
  vested in COLGATE.
• JUDGEMENT
• Court held that there is resemblance and
  imitation and infringement by Defendants. If the
  packaging is changed then their would not be any
  cause of confusion amongst public at large.

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Wipro Cyprus Private Limited v. Zeetel
Electronics, Madras High Court 2010 (44) PTC 307
(Mad)

• FACTS
• Wipro Cyprus Private Ltd acquired the trademark
  Yardley and all its variants thereupon from
  Lornamaed Group Ltd including its Indian
  registrations.
• Zeetel Electronics attempted to import talcum
  powder and body sprays having the same trademark
  Yardley from Singapore.
• SUIT
• Wipro filed for a suit of permanent injunction
  against Zeetel.

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JUDGEMENT

• Madras High Court restrained Zeetel from
  importing the goods in India thereby it upheld
  the exclusive right of Wipro on acquisition of
  brands for India.
• Thus, on the basis of registered Trademarks
  competitor was curbed from doing business of
  goods under that trademark.

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H M CASE

• Hennes Mauritz (H M) recently launched its
  stores in India in October, 2015
• Issued Cease Desist notice to Mumbai based
  retailed HM Mega Brands for trademark
  infringement of logo and colour
• No case has been filed so far by the MNC

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BURGER KING

• Launching its operations in India, almost a year
  ago Burger King is entangled in a few trademark
  litigations. Whilst some companies have
  acknowledged its well known trademark and changed
  their names, the others are fighting against the
  MNC and keeping their stance strong.
• Burger King Corporation is rampantly enforcing
  its trademarks in India along with expanding its
  outlets and reaching to the public at large.

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CONCLUSION

• Exports and IP Compliance/Awareness is essential
• Saves Cost
• Ensures healthy competition
• IP registration would give exclusive rights, if
  protected territorially
• IP registration would add more value to your
  products which can be encashed by License
  agreements, exclusive distribution agreements,
  franchisees, etc.
• Awareness shall reduce chances of getting
  entangled in Litigation in legal jurisdictions
  abroad