Technology and modern times, together with the COVID-19 pandemic, have seen a gradual shift to online shopping and e-commerce.
Brands in India are focusing more on their online presence. Brick-and-mortar stores, such as Walmart’s Best Price, increase their effort to offer online services and meet demand.
The shift in consumer behavior and sales to online channels calls for brands to devise an online brand protection strategy in India.
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Online use in India
Over the past years, Internet use has seen a dramatic increase in India.
It is estimated that India had close to 700 million internet users in 2020, and the numbers are expected to grow fast. Even now, India has ranked the second largest online market worldwide.
India offers many opportunities, but they do not come free from online threats.
Why online brand protection
India is a huge market, and it has extensive unregulated business activity. Taking this activity online makes it easier for counterfeiters to sell their illegal goods. In fact, it is often simple, low-risk, and inexpensive.
The rise in e-commerce channels, such as marketplaces, social commerce, and B2B exchanges, gives unscrupulous sellers many new opportunities to expand their activities.
When shopping online, consumers often buy counterfeit and pirated goods trusting they are genuine.
They are not easy to tell apart as illicit sellers frequently use pictures of authentic products. They can use keywords advertising and SEO to reach customers and sell their goods or services, just like the original brand.
The use of identical or similar keywords, images, and hashtags often confuses consumers.
Other shoppers may value lower prices more than authenticity. Counterfeiters can reach consumers and distribute their products through social media and mobile apps.
One common tactic is creating a group on WhatsApp that functions as a B2B marketplace or a B2C network in which the seller communicates with shoppers. Another tactic is to target consumers and then ask them to communicate via a messaging app.
No doubt brands need online brand protection.
Why online brand protection in India
India is one of the top five countries of origin for fake goods, as noted in the OECD’s Trends in Trade in Counterfeit and Pirated Goods (2019).
The status of India as one of the top five source-economies for fake goods highlights the issues of counterfeiting and level of enforcement.
Counterfeit goods do not only originate from India. Many of these goods end up on India’s domestic e-commerce sites.
India remains home to several marketplaces that facilitate counterfeiting and piracy, as identified in the 2020 Notorious Markets List. One such market is Snapdeal, one of India’s largest e-commerce platforms.
In 2018, as many as 37 percent of purchasers reported that they had received a counterfeit product from Snapdeal.
The 2020 Notorious Markets List notes that rights holders claim, “the volume of counterfeit products on this platform has increased over the past year.”
So what can you do to protect your brand? Take advantage of the opportunities while incorporating India into your online brand protection strategy.
IP protection in India
Your intellectual property, such as trademarks and patents, is a valuable asset, sometimes your most valuable one.
Brand protection provides IP protection and enforcement in all territories where you may have your products or services abused.
India has laws and legal mechanisms that grant intellectual property (IP) protection.
Yet, the USTR’s (Office of the United States Trade Representative) 2021 Special 301 Report concludes, “India remains one of the world’s most challenging major economies with respect to protection and enforcement of IP”.
Therefore, India remains on the U.S. 2021 Priority Watch List.
Brand protection in India
Brands can gain protection by registering intellectual property rights and proactively defending them.
India has a body of intellectual property laws, including patents and trademarks. India is also a signatory to international treaties that allow foreign brands and individuals to file for intellectual property protection in India.
To start, secure your domain names and register your trademarks.
Apply for registration of your name, symbol, logo, or a combination of these things as a trademark. If some of the brand’s products have unique, identifiable names, it may be worth registering each one as a separate trademark.
When applicable, register other intellectual property rights, including copyrights, India patents, and generally all your IP assets. Registered IP rights give the rights holder the exclusive right to use them in the territory.
Trademark registration in India
In India, trademarks are administered by the Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM), often known as the Indian Patent Office. This government agency administers the Indian law of patents, designs, and trademarks.
The Head Office of the Trade Marks Registry is located in Mumbai, and it currently has branches in four other big cities, including Delhi, Kolkata, Ahmedabad, and Chennai.
Trademarks are registered under the Trademark Act, 1999. A mark can be a brand, name, word, letter, logo, symbol, and other visual representations as defined under The Trade Marks Act, 1999.
Section 2 (zb) reads, ” ’trade mark’ means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.”
- Identifies the source of your goods or services.
- Provides protection for goods and services.
- Helps to prevent fraudulent use of the mark.
First-to-use trademark system
India uses a first-to-use trademark system. Trademarks can also be registered based on intent to use, but this requires an affidavit of use and limited time to provide evidence of use.
The priority of the first-to-use party means that unregistered trademarks with prior use can be protected under common law.
Passing off is a common law remedy for intellectual property protection against the unauthorized use of a trademark. An unregistered mark can be the basis for a passing off suit rather than infringement, and the burden of proof is more severe.
Once you register your trademark, it becomes an intangible asset. You gain the right to enforce it, and you can also trade, franchise or otherwise benefit from it.
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How to register a trademark in India
The first step in the trademark application and registration process is selecting a mark. When choosing your mark, make sure it can be registered and protected under law.
India currently follows the Nice Classification for the purpose of classification of goods and services. You can file your trademark application under one specific class of products or services or file for multiple classes.
You can file online or physically, by yourself or with the help of a professional.
After you file the trademark application, the Office of the Registrar of Trademarks (in the Controller General of Patents, Designs and Trademarks Office) reviews it. He has the discretion to accept or deny registration.
Before you apply for a trademark, check that it does not already exist and there are no registered marks that are similar.
Section 11 of the Trademarks Act does not allow the registration of a trademark if there is a “similarity of goods or services covered by the trade mark” or “a likelihood of confusion”.
You can start with an internet check to see if there is a similar company with a similar name and if the domain name is available or not.
Then look into the Public Search of Trade Marks database on the Office of the Controller General of Patents, Designs and Trademarks website. When you start the search, choose your class of products or services and search the database.
Remember that the database does not reflect unregistered trademark rights.
You can perform the search yourself, but we recommend you use a professional to conduct a comprehensive search. It can prevent future problems and save you time and money.
Intellectual property expert in India
Trademark protection is not always simple, and a professional may offer invaluable insights, such as regarding well-known trademarks.
A well-known status safeguards a mark against misuse on similar goods as well as different ones. Section 11 (2) gives relative ground for refusal for, “A trade mark which—
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.”
However, it is not clear if trademark owners can apply directly for recognition of well-known trademark status without Indian court decisions.
Madrid System trademarks
India is a signatory to the Madrid Protocol.
Through the Madrid Protocol, trademark owners can protect their trademark in foreign countries that are party to the treaty.
It provides efficient and cost-effective trademark protection in multiple countries under one application or allows the addition of countries after trademark registration.
To do so, file an international application at the Indian Trademark Office (“Office of Origin”), and it will certify it and forward it to WIPO.
Non-Indian brands can get protection in India for international applications and international registrations under the Madrid Protocol.
To utilize it, file for national trademark registration. This application or registration in your home territory is your “basic mark”. It can be used for filing internationally in Protocol member countries through WIPO, which administers the Madrid System.
From trademark application to registration
- Select a trademark and identify which class it belongs to out of the current classes of goods and services (see here)
- Perform a trademark search
- [Mainly for non-Indian brands: Decide if you want to apply in India directly or use the Madrid System]
- Prepare application
- Submit application and documents (e-filing or manual filing)
- The Registrar reviews the application and decides whether you are approved or denied. [In case of rejection due to none-approval of the name, you can re-file with no extra charges]
- After publication of the name in the Indian Trade Mark Journal, other parties have 90 days (or 120 days in some cases) to file an opposition to registration
- The Registrar issues the registration certificate
Now you can use the ® registered trademark symbol in India.
Digital brand protection after registration
Registration is the first step and should be followed by more proactive action, such as:
- Register with online platforms
- Detect online brand activity
- Enforce your IP rights
Wiser Market online brand protection services provide you with a complete IP protection suit.
Wiser online brand protection in India
IP rights are intangible, so you cannot lock them up in a safe. To guard them, you need IP protection.
IP protection defends against counterfeiting, trademark infringements, patent abuse, and other types of intellectual property infringement, such as copyrights.
Numerous e-commerce channels make it impossible to protect your intangible assets without the help of technology and expertise.
Wiser Market offers a comprehensive digital brand protection solution that is fast and cost-effective.
Our innovative monitoring system scans online channels, including websites, marketplaces, social commerce networks, and mobile apps, to detect IP infringements and enforce your IP rights 24/7/365.
Our team of experts works with you to tailor your brand protection strategy and offer unparalleled service. We are here to help you prevent loss of revenue, protect your brand’s reputation and maintain consumer trust.
With Wiser Market, your brand has a comprehensive IP protection solution, from detection to enforcement of your IP rights, allowing you to focus on growing your business.
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WiserTip: A trademark in use can be renewed indefinitely.
What are the advantages of online brand protection?
Online brand protection is a must-have in today’s digital, global economy.
- Protect your IP rights – They are your brand’s assets.
- Reduce production of counterfeit products – Eliminating counterfeit products on online platforms significantly reduces the motivation to produce them.
- Grow your profits – Fewer counterfeiters means more profits for your brand. It is almost impossible to compete with counterfeiters on pricing because they claim to offer “your” products or services at lower prices.
- Increase market share – A counterfeit seller is an unfair competitor for your market share. Dealing with counterfeiters will help you win back your market share.
- Decrease the costs of doing business – Marketing costs rise when illicit sellers bid up paid advertising costs and/or erode legitimate search engine optimization.
- Encourage investment in your brand – Perceived brand value rises when your brand is strong.
- Faster growth – Counterfeits are inhibiting your growth.
- Defend your reputation and customer trust – The sale of counterfeits damages hard-earned brand reputation. Brand dilution is caused by illegitimate use of any of the brand’s distinguishing features by others, resulting in confusion and jeopardizing the brand’s trustworthiness.
What law governs India’s trademarks?
The Trademark Act, 1999, governs the laws related to trademarks.
Is ownership of a trademark in India determined on a first-to-file or first-to-use basis?
Trademark ownership in India is determined on a first-to-use basis. As a result, an unregistered trademark with prior use can gain common law protection in India.
What are the benefits of registering a trademark in India?
The use of marks grants common law rights to unregistered trademarks. However, registration provides advantages. It serves as prima facie evidence of ownership by the registered rights holder, provides protection by law, and allows the rights holder to bring a suit for infringement.
Are trade secrets protected in India?
As of 2021, no law in India specifically provides protection for trade secrets.
What is online brand protection?
Digital brand protection services counter online threats and protect your intellectual property assets. Anytime, anywhere. Effective online brand protection protects your brand’s revenue, profitability, reputation, customer service and brand trust. Contact Wiser Market online brand protection services.
For more information, visit https://wisermarket.com/
Disclaimer: This information is intended to help the reader gain a basic understanding of the current trademark situation in India. It is NOT designed to provide legal, business, or other relevant professional advice.