BRANDING FOR THE

INTERNATIONAL
MARKET
KNOWLEDGENTIA CONSULTANTS

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.

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.

BREAKING DOWN BRAND

A brand is seen as one of its company's most valuableassets.

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.

EVOLUTION OF
BRANDING
Initially: It was
synonymous with the
visual interpretation or
representation of a
business.
Branding
included
symbols or logos only.

NOW, branding has grown to include the entire

development process of creating a brand, brand
name, brand identity, and in some cases, brand
advertising.

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.

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.

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.

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.

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

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.

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.

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.

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.

INDIA AS THE OFFICE OF ORIGIN

India has ratified and implemented Madrid Protocol recently.

Criteria:
1. The applicant should be a national of India, or
2. The applicant should be domiciled in India, or
3. 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.

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.

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

ENFORCEMENT OF IP

CAUTION NOTICE

CEASE & DESIST NOTICES TO MANUFACTURERS, DEALERS AND

SELLERS

LITIGATION

CUSTOMS ACT NOTIFICATION, 2007

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

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.

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.

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:

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.

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.

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.

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

'drreddyslab.com' for operating business on the internet.

name

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

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'.

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

Pharmaceutical launched Falcitab.

Falcigo

and

Cadila

SUIT:

So, Cadila Healthcare filed for injunction on the ground of

similar/identical trademark.

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

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.

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.

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.

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.

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

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.

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.

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.

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.

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.

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.

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

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.

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