ROLE OF TRADEMARKS IN BRANDING
PROTECTING TRADEMARKS AT
HOME AND ABROAD
SUNITA K. SREEDHARAN
SKS LAW ASSOCIATES, NEW DELHI
APRIL 5, 2010
B–2-B
MARKET REACH
CONSUMERS
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PRODUCT
OR
SERVICE
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INTELLECTUAL PROPERTY RIGHTS
Semiconductor
Copyright
GI
Trade Dress
Product & /
Services
Trademark
Plant Variety
Trade Secret
Patent
SKS LAW ASSOCIATES © 2008
Design
Biodiversity
&TK
TRADEMARK
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.
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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
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

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FAR BEYOND THE PATENT TERM
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“BRAND” BUILDING

THE BRAND IS NOT JUST THE TM, BUT
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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 !!
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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 !
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SKS LAW ASSOCIATES © 2010
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FOR USE AND TO PREVENT MISUSE !
STYLE, LOGO, CATCH PHRASE (IF ANY)
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PROTECTION IN INDIA
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USAGE
FILING A TM APPLICATION
TEST MARKET / PRODUCT
ADVERTISEMENTS
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“SUITABLE” TM

SUITABILITY FROM THE VARIOUS
PERSPECTIVES:
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
PRODUCT / SERVICES BEING OFFERED

e.g. GENENTECH; www.gene.com
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.
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TRADEMARK PROTECTION ABROAD
FTO – SEARCH
 PROTECTION REGISTRATION / USAGE
 LOCAL LAWS – LOCAL ATTORNEY
 AVOID CULTURAL / LANGUAGE /
TRANSLATION SNAGS IN

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TRADEMARK
 ADVERTISEMENT
 CATCH PHRASES
 LOGO
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BRINGING GOODS INTO MARKET ….
GOVERNMENT
POLICIES
MARKET
PARTNERSHIPS
SOCIO-ECONOMIC
CONSIDERATIONS
PREVAILING
LAWS
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BUSINESS
OPPORTUNITIES
THE COCA COLA EXPERIENCE IN CHINA…..
…………..BITE THE WAX TADPOLE !!!!!
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
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THE CHALLENGE
YOU NEED TO MANAGE AND UTILIZE
YOUR IP ASSETS IN CONJUNCTION
WITH ALL OTHER ASSETS OF THE
COMPANY
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IT IS NOT ENOUGH TO MAKE OR DO
THINGS THAT YOU CAN SELL
GOOD TM DRIVES BRAND VALUE
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BRAND
VALUE
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PROMISES TO FULFIL
IDENTIFIABLE PRODUCT / SERVICE

DEPENDABLE PRODUCT / SERVICE

PROMISE OF CONSISTENCY

PROMISE OF QUALITY

MARKET LOYALTY

IMAGE
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IPR PORTFOLIO
OPTIMIZATION
CREATE BENCHMARKS
FORM MARKET PARTNERSHIPS
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GENERATE REVENUE
THE RELEVANT QUESTIONS
WHO
WHAT
&
HOW
WHEN
WHERE
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WHY
HOW
WHEN
JOINT VENTURE
WHAT
FRANCHISE
WHO
ACQUISITION
WHICH
LICENSING
WHERE
TECHNOLOGY TRANSFER
WHY
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MERGER
sunita@skslaw.org
SKS LAW ASSOCIATES © 2010
THANK YOU
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