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 consumer’s

mind to quality expectation.
 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.
 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 IP’s 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 Hon’ble 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 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 DRD’s 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 Healthcare’s product was Falcigo and Cadila
Pharmaceutical launched Falcitab.
SUIT:
 So, Cadila Healthcare filed for injunction on the ground of
similar/identical trademark.
 JUDGEMENT

 The Hon’ble 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 defendant’s 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 H’s 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 Hon’ble 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