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 elseís.
The importance of Intellectual Property vis-ŗ-vis a personís own intellectual
creation is immense in todayís 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.
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. 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
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.
Some of the key inclusions of this act include
- Provision made for getting trademark on services apart from goods as
- Well-known trademarks get much required statutory protection
- The scope and purview of the trademark in India were widened to a large
- 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 Ďmarkí, 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 personís goods from the other, i.e. successfully serve the
purpose as to why they have been instilled in the first place.
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.
The essential chronology of establishing a successful trademark strategy is
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 isnít 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.
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.
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. 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
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
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
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 todayís 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 isnít on
the firmís radar, registration of the domain name would not allow the
competitors to infringe the companyís image.
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.
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 someoneís
For most new commercial establishments, the people behind them put in a
lifetimeís 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 personís 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.
Written By: Mr. Rajat Nischal,
- Available at https://www.wipo.int/about-ip/en/
- Available at https://www.wipo.int/trademarks/en/
- Available at https://www.vakilno1.com/legal-news/trademark-law-in-india-in-a-nutshell.html
- Supra footnote no 3
- Available at https://www.heerlaw.com/developing-trademark-strategy
- Supra footnote no 5
- Available at
- Available at https://www.legalzoom.com/articles/why-its-a-good-idea-to-register-your-trademark
- Supra footnote no 7
- Supra footnote no 5
- 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,
Qualifications: Pursuing B.A.-L.L.B.
(2nd year) - Symbiosis Law School-NGP (2019-24), Email: [email protected]