Brands are very valuable to a company, do you have them protected so they are not usurped by someone? Read through the nuances

Protecting your Brand

One of the main legal ways of protecting a brand is by trademark registration. But not everything one might think of using as a brand is registrable as a trademark. The requirements of the current Trade Marks Act 1999 mean that in the right circumstances the shapes of packaging colors as well as the more conventional words and logos may be registered as trademarks. This amounts to recognition by the legal system of something you probably knew already - that all of these things could function as brands. But the crucial thing to remember is, the more unusual, the more distinctive a brand is, the easier it is to legally protect.

Why register? What is registration? How does that protect your branding efforts?

Registering a trademark means going through the formal procedures, which result in your trademark being officially recorded as belonging to your business. Registration gives you the exclusive right to use that mark and to sue anyone else using that mark or something similar to it on the same or similar products. Ultimately, trademark registration is a legally protected version of what your branding efforts are all about - recognition and exclusivity. The following benefits accrue to a registered trademark:

a. The exclusive right to use the trade mark in relation to the goods for which it is registered

b. The right to take legal action against others who may infringe the registered trade mark or one resembling it in relation to similar goods.

c. In case the trade mark is unregistered, the onus to prove that somebody is infringing on that trade mark is on the owner of the trade mark, whereas in case of a registered trade mark, the onus is on the alleged infringer to prove that he has not infringed the registered trade mark.

d. Without registration, the owner of a trade mark cannot bring an action for infringement to protect the mark if it is copied by others. Suing for infringment of a trade mark is much simpler than launching a common law action for passing off to protect any unregistered trade mark.

Legal Points

There are legal points to be considered at two different stages in the brand management process. The first stage is in the process of creation of a new brand, the second is the management of existing brands, especially during company transformations.

From a legal point of view, there are two main questions to ask when a new brand is being created and defined –

1. Can you use it safely without infringing the right of another existing brand?

2. Can you protect it adequately, thereafter?

These questions are, or should be, central to any brand development. Yet it is surprising how often they seem to get overlooked, especially in the rush of enthusiasm for some new concept. “Can you use” can be rephrased as “are we going to step on anyone else’s toes with this new brand, angle, packaging line, strategy?” This question in itself can rise in two different ways; Does your branding or brand, make your product stand out and create a clear position in the market? Or are you trying to cash in on some other brand’s success. Naturally, from a legal point of view, the second objective is more risky.

Brand Vision

Make sure you communicate lucidly and vividly, the vision you have for the brand in your legal brief, so that the first key question - can you use it?, could be answered. The marketplace and the Trade Marks Register are full of other people’s attempts to obtain exclusivity in all kinds of brands and aspects of brands. Because of this, one job that has to be done as part of the brand creation and definition process is searching - seeing what else is protected and making sure you’re not too close to it. Because the definition of exclusivity embraces not only identical marks but similar marks and not just the same goods and services but similar ones and because a mark can be registered or at least applied for and yet not be on the market, searching of official records is crucial - and for those of you looking beyond these shores, international searching will be crucial. Incidentally, one useful spin-off of searching the Trade Marks Register will be to give you a handle on what your competitors are doing, or perhaps planning.

Protecting your Brand Investment

If you’ve done all your checking and you’re as confident as you can be that you’re not going to be sued the first week your product hits the market, the next question has to be:

Can you put yourself in a position to protect that investment that you’re going to put into the brand? Or, what can you do to stop your competitors from illegally profiteering off the look, the sound, the smell, the colour, the theme or the language of your brand? Broadly speaking, you get rights in your brand, that is, the power to use the law to stop someone else from

getting too close to it, in two main ways. One is by using it to such an extent that you can convince a court that the infringer or copycat will cause significant confusion, especially amongst consumers. Two, by registration under the Trade Marks Act 1999. The common theme though is that if you lean on to a brand which is too commonplace, too descriptive, too much like other brands already in the market, like the packaged coconut hair oil market, a court is much less likely to listen to an argument from your business that someone else should be stopped from using the same kind of words, picture or package.

The legal aspects of creating and defining a new brand are really issues, which should concern any marketer or agency. Can you use it? Can you stop other people from using it? It pays to check and get advice before that big launch.

Ask any infringer or fly by night operator and he will tell you that it is cheaper to trade off the established reputation of someone else ’s brand than to spend money and time in trying to establish a reputation of his own. It is not uncommon to find the market littered with all kinds of infringer’s goods be it consumer durable, consumables any thing is either counterfeited or being passed off as genuine. For this reason, the Courts have recognised and prescribed many types of unauthorised brand usage, including:

a) the non-approved use of a company, business or domain name, or a confusingly similar name;

b) cyber-squatting;

c) using highly similar product advertising themes and

get-up of product or packaging;

1 using a closely similar advertising slogan; and

2 trading off a well known person ’s likeness, image or personality (Amitabh Bacchan).

Brand Piracy

One of the most immediately damaging forms of unauthorised brand association is brand piracy. Brand Piracy is a very broad term that refers to a range of acts, most notably the manufacture, importation, sale, distribution and advertising of counterfeit branded goods.

Counterfeit goods are goods that are produced using someone else’s trade mark, copyright work, registered design or other intellectual property rights without the brand owner ’s permission, to deliberately create a look-alike spurious product or a pirated copy.

Almost every kind of product is liable to be counterfeited with the most common items being clothing, perfumes, leather goods, sunglasses, watches, toys and other merchandising items, computer hardware and software, computer games, sound recordings (on CD and audio tape), Films (on DVD and video), mechanical components and spare parts, pharmaceuticals and foodstuff packaging.

In fact, it is estimated that between 5%to 8%of all goods and services sold world-wide are counterfeit. The effect of piracy can be very serious for your business. First short-term financial losses can be great. For example the Indian IT industry loses around an estimated 900 –1000 crores annually, a loss shared between developers, publishers, manufacturers, resellers and retailers.

Secondly, counterfeiting can cause serious damage to your brand name since the availability of the inferior pirated product affects consumer confidence in the quality of the genuine article.

Thirdly allowing counterfeit copies of your product to stay on the market can ultimately erode your rights in your own brand. If, for example, a pirate can demonstrate that the average consumer would associate particular features of your brand with a range of goods manufactured without your licence, then you may lose the right to use those particular brand features on an exclusive basis. It is essential to be vigilant in protecting your valuable brand assets.

THE LEGAL OPTIONS

Fortunately, there is a range of legal remedies to help you restrain the pirates from trading off your hard- earned brand reputation.

1 The Trade Marks Act 1999 allows you to register the distinctive words, slogans, logos, graphic designs, pictures and shapes that define your goods or services in the market, thus preventing other people from using them in relation to their products.

2 The Copyright Act 1957 seeks to protect the creator ’s rights in artistic, musical and literary works as well as sound recordings and Films and can therefore be employed to protect various aspects of your product and its marketing.

3 The Designs Act 2000 allows you to register and thus protect the visually distinctive shape, pattern or configuration of your goods.

4 The Patents Act can be used to protect new innovations in manufacture which may be important to the unique ‘look ’ of your product.

The common-law remedy of passing off is also regularly invoked in a similar fashion.

The problems of brand protection are practical as well as legal. Clients regularly ask us what it the best course of action would be to deal with infringers. Ideally one should resort to :

1. Labelling : Label your product clearly and distinctively to ensure consumers can tell the difference between a genuine and a fake, or if need be, to ensure a Court can tell the difference.

2. Identification: A range of means can be employed to monitor and track the sale of goods which infringe your brand-related rights. However, since every business is different, an anti-piracy strategy should be tailored to suit your particular circumstances. These can mean such steps as monitoring outlets that pirates frequently use to advertise and sell their goods (such as classifieds, trade papers, markets, fairs, discount stores and home delivery services); engaging Private Inquiry Agents to collect evidence through surveillance and trap purchases; and focusing on identifying the manufacturers and suppliers of counterfeit goods.

3.Enforcement : Once the pirates are identified, you may want to take legal action. Using the legal solutions referred to above, this can take a variety of forms, from issuing warning letters, to commencing civil proceedings or criminal action, through to a variety of options in between. To this end, it is also important to liaise regularly with Jurisdictional Police and a range of other investigative and enforcement bodies.

In conclusion, it is abundantly clear that a strong brand requires a strong legal foundation to fathom its way along the minefield littered with also rans and make its presence felt. More attention to legal aspects will save companies a lot of legal fees and time in Court and at the end of the day, communication between marketing and lawyers will get each of you what you want - a powerful, defendable brand.

(Chandrapal Singh, the author of the article, is a leading legal professional who specializes in trademarks among other areas. Feedback can be mailed to This e-mail address is being protected from spam bots, you need JavaScript enabled to view it )\n This e-mail address is being protected from spam bots, you need JavaScript enabled to view it )"

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