R OLE OF TRADEMARKS IN BRANDING PROTECTING TRADEMARKS AT HOME AND ABROAD SUNITA K. SREEDHARAN SKS LAW ASSOCIATES, NEW DELHI APRIL 5, 2010
SKS LAW ASSOCIATES © CONSUMERS B – 2 - B PRODUCT OR SERVICE MARKET REACH
INTELLECTUAL PROPERTY RIGHTS SKS LAW ASSOCIATES © 2008 Patent Trade Secret Trade Dress Design Trademark Copyright Product & / Services GI Plant Variety Biodiversity &TK Semiconductor
TRADEMARK Mark – includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combinations of colors or any combination thereof. Trademark – means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. SKS LAW ASSOCIATES © 2008
TRADEMARK IDENTIFICATION OF GOODS & SERVICES DIFFERENTIATION FROM THE COMPETITOR’S GOODS & SERVICES WITH / WITHOUT OTHER IPRs, TRADEMARKS ARE KEY TO BRAND BUILDING A SUCCESSFUL TM COMMUNICATES A COMPANY’S VALUES TO THE CONSUMER KEY TO SUCCESSFUL LICENCES FAR BEYOND THE PATENT TERM 5 SKS LAW ASSOCIATES © 2010
“BRAND” BUILDING THE BRAND IS NOT JUST THE TM, BUT THE COMPANY, THE PRODUCT OR SERVICE, THE COMPANY’S REPUTATION, THE COMPANY’S PHILOSOPHY, IT IS THE DISTINGUISHING FEATURE OF THE COMPANY AND ITS PRODUCTS IT IS THE COMPANY’S WEAPON AND SHIELD AGAINST OLD AND NEW COMPETITORS TO REACH LOYAL CONSUMERS !! 6 SKS LAW ASSOCIATES © 2010
PROTECTION IN INDIA FIRST STEPS: IDENTIFYING SUITABLE TM CHECKING ITS AVAILABILITY FOR TM REGISTRATION IN THE COUNTRY ADVISABLE TO CHECK THE TM SUITABILITY OF USE ACROSS BORDERS AS WELL! ADVISABLE TO CHECK DOMAIN NAME AVAILABILITY – AND IF AVAILABLE REGISTER IT IMMEDIATELY ! FOR USE AND TO PREVENT MISUSE ! STYLE, LOGO, CATCH PHRASE (IF ANY) 7 SKS LAW ASSOCIATES © 2010
PROTECTION IN INDIA USAGE FILING A TM APPLICATION TEST MARKET / PRODUCT ADVERTISEMENTS 8 SKS LAW ASSOCIATES © 2010
“SUITABLE” TM SUITABILITY FROM THE VARIOUS PERSPECTIVES: PRODUCT / SERVICES BEING OFFERED e.g. GENENTECH; EASY TO REMEMBER NAME / LOGO EASY TO GO GLOBAL WITH, IN THE FUTURE MARK AND LOGO WITH HIDDEN MEANINGS IN LANGUAGES / CULTURES OF YOUR TARGET MARKET ! e.g. 9 SKS LAW ASSOCIATES © 2010
T RADEMARK PROTECTION ABROAD FTO – SEARCH PROTECTION REGISTRATION / USAGE LOCAL LAWS – LOCAL ATTORNEY AVOID CULTURAL / LANGUAGE / TRANSLATION SNAGS IN TRADEMARK ADVERTISEMENT CATCH PHRASES LOGO 10 SKS LAW ASSOCIATES © 2010
BRINGING GOODS INTO MARKET …. SKS LAW ASSOCIATES © 2009 GOVERNMENT POLICIES SOCIO-ECONOMIC CONSIDERATIONS PREVAILING LAWS BUSINESS OPPORTUNITIES MARKET PARTNERSHIPS
THE COCA COLA EXPERIENCE IN CHINA….. …………..BITE THE WAX TADPOLE !!!!! 12 SKS LAW ASSOCIATES © 2010
THE CHALLENGE IT IS NOT ENOUGH TO MAKE OR DO THINGS THAT YOU CAN SELL YOU NEED TO MANAGE AND UTILIZE YOUR IP ASSETS IN CONJUNCTION WITH ALL OTHER ASSETS OF THE COMPANY SKS LAW ASSOCIATES © 2009
GOOD TM DRIVES BRAND VALUE 14 SKS LAW ASSOCIATES © 2010
PROMISES TO FULFIL IDENTIFIABLE PRODUCT / SERVICE DEPENDABLE PRODUCT / SERVICE PROMISE OF CONSISTENCY PROMISE OF QUALITY MARKET LOYALTY IMAGE 15 SKS LAW ASSOCIATES © 2010
IPR PORTFOLIO SKS LAW ASSOCIATES © 2009 OPTIMIZATION GENERATE REVENUE CREATE BENCHMARKS FORM MARKET PARTNERSHIPS
THE RELEVANT QUESTIONS SKS LAW ASSOCIATES © 2009 WHAT & HOW WHERE WHY WHEN WHO
SKS LAW ASSOCIATES © 2009 HOW WHY WHERE WHEN WHO WHAT WHICH JOINT VENTURE MERGER FRANCHISE LICENSING TECHNOLOGY TRANSFER IP AUDIT DUE DILIGENCE ACQUISITION
THANK YOU 19 SKS LAW ASSOCIATES © 2010