The topic trademark and subsequently the various strategies related to trademark falls under the ambit of Intellectual Property Law. Before we take a detailed look at what are the various trademark strategies that can be incorporated by business houses, we shall first take a brief look at what is Intellectual Property Law in general.

Intellectual property is that creation of the mind that is unique to the creator/inventor. It can be anything such as an invention, an artistic creation, a literary work, or even a design or a symbol. It has to be something which is the creation of the person and claiming and not someone else’s[1].

The importance of Intellectual Property vis-à-vis a person’s own intellectual creation is immense in today’s competitive world. Hence, Intellectual Property is governed by a set of legislation that seeks to protect the creator and his creation. By striking the right balance between the innovator's own interest and the public interest at large, the IP framework seeks to foster the right kind of environment for creativity and innovation to flourish

In most countries around the world (including India), there are four main types of Intellectual Property (IP) that can be legally protected, namely Patents, trademarks, copyrights, and trade secrets, each exhibiting their own costs, attributes, and requirements. What is also essential to understand here is that none of the protections offered is mutually exclusive.

For the requirements of this article, we shall take a detailed look at Trademarks, one of the most important Intellectual Property Rights.

Trademark

It is commonly understood to be a sign capable of distinguishing goods and services produced by one enterprise from that of the others. They are exclusively protected by IP Rights[2]. Prior to the enactment of specific legislation to protect the trademark, the proprietary rights regarding the same were protected through common law principles of natural justice and equity. However, the need to have a specific law governing the trademark in India was ever-increasing.

Subsequently, the Trademark Act was passed in the year 1940 which was a basic mirror image of the UK trademark act. Unfortunately, though it was noticed that this act had a lot of loopholes that would not be capable of keeping up with the changes in the market. Keeping that in mind, the Trademark Act 1958 was passed which was further replaced by the Trademark Act of 1999 which at present governs all the activities related to Trademark in the Indian Market[3].

Some of the key inclusions of this act include

1. Provision made for getting trademark on services apart from goods as well.
2. Well-known trademarks get much required statutory protection
3. The scope and purview of the trademark in India were widened to a large extent.
4. A special incorporated provision to prevent the use of a trademark as a corporate or trade name by any third party.

One of the key essentials of the 1999 legislation was the extension of the definition of a trademark. In section 2, the Act defines a trademark as a mark capable of being represented graphically and which has the capability of distinguishing goods and services produced by one person from those of the other and it may include, packaging, shape, colour, etc. In sec 2(m), the act provides for the definition of ‘mark’, which includes anything between a brand, device, shape, colour, etc.

Further, there are two essential requirements of trademark registration, the nodal the process through which one can benefit from the provisions of the Trademark Act 1999. Firstly, the mark should be capable of being represented graphically, the specific provision of which is mentioned under Sec 2(k) of the Act. Secondly, that particular mark must be capable of (when in use) distinguishing one person’s goods from the other, i.e. successfully serve the purpose as to why they have been instilled in the first place[4].

Trademark strategies

One of the most important essentials of developing a business is to have a brand with which the consumers in the market can equate quality and satisfaction. However, even if such a brand were to be successfully established, it would be extremely vulnerable to infringement by competitors of the relevant market and hence creating a good trademark strategy that would resonate with the consumers and would be easy to market and disseminate becomes all the more important[5].

The essential chronology of establishing a successful trademark strategy is listed below;

1. Creating the Trademark:

   As they say, research is the key to everything. So is the case with the trademark. Thorough research has to be done during the brainstorming stages of creating the brand. It facilitates the search of existing trademarks within the relevant jurisdiction and determines and cancel any such already existing trademarks. Moreover, it isn’t always essential that the mark be entirely descriptive and laudatory of the brand. In many cases, the best option might be to come up with something unique in the meaning that it would evoke within the industry and the market. To facilitate this, it is essential to avoid words, letters, or slogans which could be commonly used in such a market. It has to be remembered that trademarks are given different levels or tiers of protection based on their inherent strength with the generic and descriptive ones being the weakest and the distinct ones being the strongest. With this in mind, emphasis must be laid on creating a unique and descriptive trademark which is not common in that market, so as to ensure the highest levels of protection[6].
   
   

2. Prioritizing the most valuable trademark:

   It is normal for most businesses to employ a plethora of trademarks across their products and services. To take a simple example, one may run a business under a particular name and title but that business itself may be dealing with a host of goods and services, each one of them having a specific name and logo, while all of them are marketed under different or same marketing slogans. Given the value of securing a trademark for the business, businessmen are often tempted to try and secure one for every entity of the marketing portfolio. However, getting a trademark for every logo or slogan could be a very precarious and expensive task, and hence does not make sense for commercial establishments (with special reference to those in the early stage of business). For example, for a new establishment, the brand name and tag itself becomes way more important than a short-term advertisement campaign. Here it becomes essential to identify those which have the highest value and focus all resources in securing a trademark for the same. Here it must be kept in mind that protection can even be obtained after a mark proves to be commercially viable and successful and hence trademark registration can be done at any point of time either before or after the product launch[7].
    

3. Registration:

   After having successfully identified what trademark to go ahead with, the next step is registration. Once the brand has been settled, the trademark has to be registered in the relevant jurisdiction. Here, it is often advised by industry experts to go ahead and register the trademark as early as possible so as to benefit from the advantages and enjoy the protection of registration[8]. When applying for the trademark, sufficient effort has to be taken to be as broad as possible in the description of the goods/services. It is also advised that if someone is filing a logo as a trademark then to do so without a colour claim so that all the varieties of that logo irrespective of the colour stand protected against infringement. If a particular colour is identified and claimed then the person will have no right against any person who uses the same logo but with a different colour combination.
    

4. Be aware of the future:

   Whatever be the trademark strategy, it must be kept in mind by the commercial establishment/entrepreneur that in most likeliness, the brand will grow and expand in the future. Hence while filing for the trademark, a reasonable foreseeing must be done with regards to the goods that might be produced in the near future by that establishment. This has to be kept in mind because once a certain list of goods and services have been trademarked, they can not be amended at a later stage[9]
    

5. Market Identification:

   One important aspect regarding trademarks that must be kept in mind is that most trademarks are country-specific meaning a brand that is protected within one country may not be protected in another country. Hence, what is advised is that apply for the trademark in that country also where you are planning to expand your business activities so that you are not forced to launch under a different brand name and end up losing the much valuable goodwill.
    

6. Marketing:

   The next important step would be the marketing of the trademark so that consumers can associate themselves with that brand and be assured of quality and satisfaction. For advertising in today’s digital world, it would be advised to register domain names in social media, similar to the trademark that has been registered. Even if immediate social media marketing isn’t on the firm’s radar, registration of the domain name would not allow the competitors to infringe the company’s image.
    

7. Ensure proper usage:

   One significant pitfall into which trademark owners fall is the improper usage of the trademark by influencers and consumers in society. To take a simple example, Google was originally trademarked as a searching engine but now it is almost synonymously used to indicate searching anything online. This is particularly harmful to small scale establishments because when a trademark starts to get associated with the genre of goods and services and not a specific one, it loses its distinctness.
    

8. Rivals watch:

   An essential part of developing a working trademark strategy is to ensure that the rival business house stands no chance to benefit from the goodwill of yours. It is vital to pre-empt trademark infringements and is advisable to send notices of such infringement with the trademark itself to give a clear indication to the other that that set of words is already someone’s legal right[10].

For most new commercial establishments, the people behind them put in a lifetime’s effort to make that a success. It generally includes a lot of wealth at stake and here small mistakes could end up deciding whether the business would run or not. Hence it becomes important to make trademark an important part of the business strategy because, without the same, the person’s investment in marketing a product would be wasted as a cunning rival company would use the same or a confusingly similar mark and produce almost identical services. In this way, that person would be ensuring that his goodwill is unscrupulously used by another in making a profit for himself. For this precise reason, trademark strategy is an unmissable aspect of modern-day business[11].

End-Notes:

1. Available at https://www.wipo.int/about-ip/en/
2. Available at https://www.wipo.int/trademarks/en/
3. Available at https://www.vakilno1.com/legal-news/trademark-law-in-india-in-a-nutshell.html
4. Supra footnote no 3
5. Available at https://www.heerlaw.com/developing-trademark-strategy
6. Supra footnote no 5
7. Available at https://www.jdsupra.com/legalnews/preparing-a-trademark-strategy-5-86829/
8. Available at https://www.legalzoom.com/articles/why-its-a-good-idea-to-register-your-trademark
9. Supra footnote no 7
10. Supra footnote no 5
11. Available at https://synchlaw.se/trademark-protection-as-a-strategic-tool/#:~:text=TRADEMARK%20PROTECTION%20AS%20A%20STRATEGIC%20TOOL,part%20of%20your%20business%20strategy.&text=Without%20a%20trademark%20registration%2C%20your,or%20similar%20products%20or%20services. By Mr. Rajat Nischal, B.A.LL.B. Student,

Written By: Mr. Rajat Nischal, Qualifications: Pursuing B.A.-L.L.B. (2nd year) - Symbiosis Law School-NGP (2019-24), Email: [email protected]