Manage Your Brand

The brand owners need to protect their brand and look at all the aspects of brand protection and growth which is vital to increase any business

With the current political scenario in India undergoing a change due to elections in four big state assemblies and the general elections due in 6 months for lower house of Indian parliament, the political climate in India is edging towards vibrancy and hope for brighter future riding on the wave of populism and electoral rethinking on the issue of corruption and rightful governance. The outcome of the assembly election results in Delhi has already sent pointers in this regard to the major political establishments to set their house in order. In such a scenario the economic situation of the country, which has taken a beating in the past few years due to policy reforms starvation, seems to be heading towards a change for future growth and betterment as is indicative from Sensex already touching a high after the election results in Delhi and other 4 States.

At this stage India seems to be ripe for investment - be it from the foreign or domestic players as there are factors which are in favour such as: a falling rupee, relaxed rules on Foreign Direct Investment (FDI) in some sectors and continued strong consumer growth in India and a stable political set up which is expected in the coming year. All these factors combine together with burgeoning middle class makes the country a dream destination for companies to tap the demand for branded goods in every sector of the economy. With the investment climate improving and the companies looking to expand their marketing and distribution network they are faced with challenge to protect the businesses and their intellectual property.

Protecting your brand names

Trademark/s is undoubtedly an important asset of a company or any organisation which has commercial goals to fulfil as it clearly indicates the source or origin of goods or services in a particular trade or business. Thus it is widely accepted to be important tool to bring in recognition and revenues for any commercial set up. The Companies or commercial set ups in India have realised the importance of a brand and are now making a concerted effort towards not only developing their brands but also seeking to protect them through attaining both statutory and common law rights.

From the figures that are available on Intellectual Property office's website and which are also tabulated below, it can be clearly seen that there has been a double digit growth annually in the number of trademarks applications that are filed in India. This is despite the fact that registering a mark is not compulsory though it is advisable to register it as such registration does add value to overall portfolio and increases the assets value of any commercial establishment.

One fact which is clear from the data, India is the second largest in Asia in terms of trademarks applications filed in a year. This is interesting as it would show the growth potential of India and rising consumption for branded goods.

Recently, with the introduction of Madrid System coming into place on July 8, 2013 India has joined the group of nations which acknowledge and recognise Madrid system and by virtue of which an entity or individual can attain registration protection in 93 countries by way of filing a single application. It is a low cost and effective system to facilitate trademark protection in export markets. There is a growing awareness on the benefits of the system among the industry and various stakeholders.

Statutory Protection of brands

• One of the important advantages that ensue from registration of a mark is for the owner to assert its statutory rights by way of civil or criminal action in case a third party was to use/copy any identical or deceptively similar mark without the authorisation of the owner.
• The owner of a registered mark can also stop use of its registered mark by a third party as part of corporate name/ trading style. Both civil action for trademark infringement and/ or administrative remedy under the Indian Companies Act is available.
• If a brand name is used as domain name or part of domain name, the registered owner of a brand can stop such use relying upon dispute resolution policies. Most of ccTLDS and gTLDS have elaborate dispute resolution policy on the lines of ICANN http://www.icann.org/ Uniform Dispute Resolution policy (UDRP). The INDRP policy for .in domain names (modelled on the lines of UDRP) provides an efficient mechanism for resolution of disputes relating to copying of a registered mark as domain name.
• The registered owner of a trademark can also invoke criminal remedy for violation of its brand name on account of sale of counterfeit goods. The offence is punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and fine which shall not be less than INR 50,000 but may extend to INR 200,000.

Protection of marks by way of common law remedy of passing off

In some cases it is possible that a company or a commercial establishment may not have obtained registration of its brand name. In such cases the companies can rely upon their reputation and goodwill earned by way of use of the mark to stop a third party from copying its brand name or other elements of brand. In a passing off action the priority in adoption and use of a trade mark is given importance over priority in registration.

The passing off remedy is also available to foreign brand owners, on the basis of awareness of their brand in India. Indian courts recognize the concept of trans-border reputation and have protected trademarks in cases where one tries to derive economic benefit from the reputation established in a particular trademark.

Licensing of Trade mark

Another benefit of registration of trademark for brand owner is to licence their mark to leverage its popularity. Thus licensing presents an opportunity for brand owners to create additional revenue stream without having to invest in infrastructure for manufacturing or marketing the product. In many cases, this means that the brand owner can reap the benefits of its brand to venture into territories where it may not have a core presence or competencies. One of the most relevant aspects of licensing involves quality control over use of the licensed mark by a third party and the extent of such control. The absence of quality control provisions can lead to mitigation of the distinctive value attached to a particular mark.

Brands in Digital Environment

With the growing young and urban population in India, brand owners should become familiar with the issues inherent to the online sale of products bearing their trademarks. When setting up an online store or entering into an agreement to distribute its branded goods through an online retailer, the companies should clearly understand both commercial and legal issues including:

• the domain name to be used for such store;
• who owns the data of customers visiting the store;
• representation of brand and use of colours, fonts etc complies with brand guidelines of the owner;
• terms and conditions of sale and delivery mechanism is clear.

Brands on the Social media

Social Media is often used by brands these days to understand people and have a closer relationship with them and to promote their products without any hassle. However, despite its easy reach and convenience for the company or to the people maximizing social media's capabilities, this could also bring destructive results. Thus the companies must have a clear guideline in place to monitor and address any negative comments and well thought strategy (both internal and external) before they use social media to advertise their products or services. It should not be expected that all sentiments towards the products would be generally positive which is why companies should not be dismayed when negative comments arise rather they should take corrective action in those circumstances. In addition brand owners should also be vigilant about the generic use of their brands by social-media users and should look to prevent their trademarks losing distinctiveness and therefore legal protection. Brand owners should also keep a careful eye on infringers on social networks, in particular the use of fake pages and usernames

Conclusion

The Indian economy has strong fundamentals and is set to take off once the stable government is in place after the general elections in June 2014. This is the time for brand owners to set their house in order and invest in its protection. The brand owners need to consider that their brand may have started as a name and a product or service but over time it becomes a business identity and may include a logo, mascot, slogan, color scheme, phone number, jingle and even a smell. Thus they need to look at all aspects of brand management to grow and maintain their market.

Disclaimer - Though every effort has been made to correctly present the information contained in the article, the authors accept no liability for such information provided or for it being correct, complete or up to date. Also, the article is for information purposes only and it should not be taken as an advice from the authors. Authors can be contacted at info@indiaiprights.com