Intellectual property is the incorporeal property which is invented or
created by human intellect, Trademark is one of the type of intellectual
property which is represented in form of recognizable logo, phrase, symbol, sign
It legally distinguishes one product from the other and creates a demarcation in
products of the same kind but from the different manufacturers in the market
making it more identifiable. Similarly, a mark used to identify and
differentiate services, and its source is called Service Mark, however, in
common practice, both marks are denoted as Trademark.
One of the major challenges which are faced by every product in the market is of
being identical, similar, or the presence of a better substitute. A trademark
helps to eliminate such issues and further pilot companies to develop trust,
confidence, and loyalty in its products.
In today's dynamic and competitive world every business has to develop and
maintain a distinct identity and deliver products that match the expectations of
the consumer and in return churns out profits for the company.
It happens quite often that some brand is known commonly by its logo such as
McDonald's has registered trademark of its logo 'M' written in specific font or
the title 'I'M LOVIN IT' and people recognize it through its logo placed on top
of its every outlet. Therefore, the protection and maintenance of such assets
Trademarks play a pivotal role in the progress of an organization and add a
subsequent amount of value to its assets portfolio. The most valuable trademark
is Google, worth $ 43.3 billion which is also 27 percent of the company's total
value, similarly, the trademark value of Microsoft is valued at $108.8 million.
It adds up to the total value of the company which forms a greater part of the
brand value of any company in the market. Also, in process of merger or
acquisition between the companies the valuation of such intangible assets act as
an important factor in determining the value of the company as a whole and
whether such a proposal should be accepted or not. It also facilitates the
marketing strategy in differentiating products or services from those of rivals
at a glance and enhances the brand value of a company in the market. It
facilitates companies in developing a long term and often emotional relationship
with customers and It exists as an identification mark for them.
In India, the trademarks act 1999 and the trademark rules 2017 are the statues
that govern the laws pertaining to trademarks. The registration of the
trademarks in India is non-mandatory, however, it is considered beneficial to
avoid conflicts in the future.
Rights And Protection Of Trademarks
The trademarks are considered to be the face value of a product or brand,
therefore their ownership and rights to use are in the constant threat of being
exploited by the competitors without vesting any authority. In order to protect
such valuable assets registration of trademarks becomes an important measure.
Although as India follows the first-to-use basis and not a first-to-file basis
in terms of ownership rights of trademarks, it gives a certain degree of
protection to the unregistered trademarks also.
The registered trademark in India is registered for a period of 10 years may be
renewed for a further period of ten years on payment of prescribed renewal fees.
A registered trademark is denoted by ® and is also denoted by TM if the person
is claiming a right to use its brand as a trademark, although it pending to be
registered with the prescribed IP office. The unregistered trademarks are
protected under the common law in India and can be protected in a passing suit
on a First-to-use basis.
Strategies To Protect And Maintain Trademarks
The Importance of trademark strategies
The trademarks protect brands and make them visible, therefore they should be
protected and maintained in a proper way. A well-planned strategy can help to
utilize the full potential of trademarks and also protect them from others
taking a free-ride on them. The trademarks involve a complicated and sometimes
lengthy process, therefore preparing for identification, registration,
maintenance, and protection strategy helps in the long run to avoid ambiguity.
As the products are not limited to one country and big scale companies such as
Google, IBM or Microsoft carry out their operations and market their products
throughout the world in different countries it makes their IP assets more
vulnerable to a global threat. This gives rise to a need to come up with
trademark strategies that are not limited to domestic or home countries but are
at the global level. It saves their overall cost of creating a separate strategy
for each country, the Rights are given recognition on a country by country basis
and the trademark is protected in different countries in terms of its ownership
There are no specific standard strategies that are adopted by the companies in
maintaining or protecting trademarks as these strategies changes as per
different needs and specifications of every company, however, there are certain
criteria which shall form part of every strategy that is being made for the
protection or maintenance of any trademark throughout the world.
Identification and selection of trademarks The trademark selected should be of such nature that it matches with the
product line and make it more identifiable in the market. No trademark
should be chosen which cannot be registered or is prohibited under the
statue. A specific strategy should be adopted in coordination with the
internal business and marketing teams to ensure that a consistent approach
is taken in selecting a trademark for a product. The trademark should not be
identical to any other one in the market and words that can confuse the
consumer with the other products in the market shall be avoided. The words
used for trademarks should be fanciful and arbitrary which makes it easier
for the consumers to remember. Any kind of generic or descriptive words
should be avoided as the trademark should be unique and attractive which
shall be able to grab the attention of the people.
Filing strategy The filing of a trademark can be a complicated and tricky field to work
with, the trademark should be filed as quickly as possible. As in many
countries, the first-to-file system is followed which provides ownership and
protection to the person who filed the trademark first. It shall also be
kept in mind that the trademark should be registered prior to discussing
anything with the potential partners as it can lead to an information leak.
The filing should be done with the utmost care and smartly by taking
advantage of priority or seniority wherever applicable. The time and moment
a chance of losing any trademark is noticed, first, its filing should be
done in order to save it from going to other competitors. These strategies
make a considerable difference in the adoption of a trademark because if the
trademark is registered and acquired by any other competitor before the
company intends ending to acquire it then it makes it very difficult to
avail ownership or rights to use.
Alignment with business strategies The trademarks are part of the IP asset portfolio of a company and therefore
it should be adopted taking into consideration the business model or the
business policies of the company. The goals and objectives of a company for
adopting a certain trademark should be predetermined. The purpose for which
the trademark has been taken should be aligned with the business the
strategy of the company and should be thoroughly investigated whether it
creates a profitable situation for the company or not.
Strategy for clearance searches of trademarks It is very important to conduct a clearance search of a trademark before it
is put to use. A clearance search is due diligence check which is conducted
to identify any identical or similar trademark which has been currently used
on any product in the market. It is crucial to determine it prior to its use
as it can create conflict as it becomes impossible for two identical
trademarks to co-exist. The clearance search is conducted for the registered
trademark as well as the unregistered trademark governed by the common law
of the country. The main searches which are conducted included to search any
trademark of same or similar nature to the mark you wish to use, any
trademark which is being used anywhere else in the country or other parts of
the world, any trademark is being used for similar product or service, and
if any trademark can cause any confusion in the mind of the customer.
Timespan for filing There is no specific timeline in which a trademark should be filed, however,
it is always advisable that the trademark should be filed for its
registration with the authorities as soon as it becomes identifiable and is
adopted for the new product. The delay in filing of a trademark makes it
vulnerable to be taken up by any other competitor in the market.
Cost considerations The registration of a trademark in one's own country may or may not be a
costly affair but registering the trademark in numerous countries can incur
a huge cost at initial stages where the product is newly launched in the
market. To avoid such discrepancy filing of trademarks should be prioritized
and should be filed in such order in which the most important assets should
be filed first in the most important countries. The priority order can also
be modified as per the leverage given by different countries as in case a
country is lenient in its laws for registering a trademark than a later
registration can be adopted.
A well-planned trademark portfolio can boost up the entire Intellectual property
asset portfolio of the company and create a substantial increase in goodwill and
brand value of the company. Therefore, a conscientious approach should be
adopted in creating a strategy to adopt a trademark.
Before adopting any trademark, a due diligence check should be done in order to
align it with the business model of the company and make sure that there are no
discrepancies or defects in that trademark. A trademark shall be filed at the
right time in consideration with the cost involved in adopting the trademark and
threat from the competitors to acquire it first.
In addition to this, a thorough investigation shall be performed to make sure
the trademark so adopted is not identical or similar to any other trademark in
the market and is not being used by any other competitor in similar product
lines or services.
A diligent consideration and execution of one's trademark strategy is crucial to
shape consumer perception of your business and brands. Further mere adoption or
acquirement of these assets is not enough, and proper policies shall be framed
by the management of the company to manage them and protect them from being a
freebee for the competitors in the market
These strategies assist to project future earning the capacity of these assets
and expedite the management to frame policies for growth and development of the
company. These assets nurture their fruits in the long run, which makes it
necessary for the management of the company to plan a strategic framework by
considering all the relevant factors in the adoption of a trademark and not
disturbing its other operations which shall have priority over these.
Written By: Anmol Mishra