"I wanted to buy a bottle of coke but ended up buying club-cola because they looked the same" is a common love hate experience in Nepal when we are deceived or scammed to buy fake products. As a consumer, I am worried about the growing counterfeit products in the market. But as a lawyer, I see a discernible lack of awareness of intellectual property, consumer protection laws among people in Nepal.
If you have come this long, ask yourself and answer honestly, if you have ever sung "Never mind, I'll find something like you?” when you either could not find or afford your dream product or service. If you think that I am leading you to you are the one responsible for increment in counterfeit products in our country, then you are wrong. The question was not to ask to put your moral conscience in dilemma, it was to reflect on the fact that the consumers in Nepal have a lot of product options. The problem, however, is finding its identity and place in the market. Having worked in the IP sector of Nepal for almost five years now, I will try my best to narrate few common legal strategies for the emerging brands in Nepal's competitive market.
What's in a name? Everything!
Would you as a consumer want to buy a very comfortable shoe with a tempting design that is tagged as abibas alongside the logo of adidas or, would you settle to buy a locally manufactured comfortable shoe without any brand name or trademark in its product instead? Personally, I would go for the second option to avoid choosing a copycat like many others who are aware of adidas.
On a second thought, would I go for abibas shoes if it identified itself under a different brand name instead of abibas and the copied adidas logo?
With the affordable price, comfort, and accessible reach, maybe I would, like many of you. "What's in a name?" you might ask. Well, everything, of course!
When you apply for a trademark at the Industrial Property Section of the Department of Industry, it investigates the applied name and rejects the name of the applicant if it deems the applied trademark is similar to the trademark/s whose status is active or applied in the same class. While selecting wordmark, if you opt for "I'll have what she has", chances are that your name will get rejected and the time you used to apply for the mark gets wasted.
Generally, trademark names are categorized as descriptive, suggestive, arbitrary, or fanciful. The most distinctive marks are those that are 'arbitrary', i.e., the words that have meanings but are not related in any way to identify the product or services it is used for. For example, "Apple" for gadgets and software. Similarly, other most distinctive marks are those that are fanciful and have no meanings, for example, "Xerox". These two kinds or names are observed to be more distinctive than suggestive or descriptive ones, which people struggle to remember. Thus, choosing a name to brand your company is not only a necessity, it is essential that you choose a distinctive mark to identify yourself in the market.
Put a ring on your mark, get set and go
In a trendy market where you will find every other person is trying to copy the latest trend, you who recently started up and let us assume branded yourself as "zoot" cannot be surprised if all your customers are pulled by a business with same business and model, selling at much more affordable price than yours and with a similar trademark branding itself as "loot".
Humor yourself as much as you want, but you will not have your weapon to shoot your damsel poacher here, i.e., without the registration of your trademark, you will struggle to file an infringement suit against “loot” or seek injunctive relief for the damages your brand will bear. Fortunately, we live in a country where our jurisdiction prioritizes 'first to file' over 'first to use'. Therefore, emerging brands should be aware enough to file its trademark application as soon as they start building their brands.
Who is the jealous copycat?
"Copycats" in the realm of trademark law and practice is inferred as a cheap copy of a product that are designed, branded or packaged to look exactly like that of its established competitor.
Before you get set and go with your mark to the Department of Industry for trademark registration, it is important that you do a legal due diligence and trademark search. You can seek legal counseling on this part for a reliable analysis. If you cannot afford to hire a legal counselor, you can get a trademark search done from the Industrial Property Section of the Department of Industry and seek a general counseling from the class officers there. This would allow you to analyze if your logos and names are in fact, distinct, does not violate public order or previously registered trademark's rights and are registrable.
In an interconnected world, the wordmark you think is unique might just be your assumption. Lots of times, applicants are disappointed to know that there are hundreds of other "maila dai ko hans ko chhoila" that they wanted to apply for. A prior trademark search and due diligence will not only save you from potential risk of rejection, it will also save you from being harshly treated as a jealous copycat of your competition by your consumers.
However, it is important to note that having a distinct trademark would not exempt you from being tagged as a copycat, if your designs, labels, logo and other aspects of the product are copied from another brand that sets it apart from its competitive products and distinguishes it to be "distinct". Therefore, it is wise for you to select a unique name, design and packaging to silence those people who allege your innovative business is a copycat.
Setting boundaries?
Your trademark must be classified under a specific class. Each class is representative of the specific products or services and to be categorized under such a class that would mean your trademark is related to at least one of the items enlisted in the selected class. In other words, the class helps the trademark officers and consumers to categorize the objective of your brand under one broad umbrella. Finding the right class for your mark requires a legal strategy. Normative practice is that the trademark should go for the class classification based on the major objective of the brand. However, businesses find it confusing when there are multiple objectives, and all of them are not enlisted in the same class. In such a case, one should opt for the class that the major objective of the brand is enlisted in. If there are multiple major objectives, the trademark might need to seek protection in multiple classes.
The significance of class is not just to give identification to the marks in their application, it is to limit their protection within the boundaries of the applied class. For example if your company producing cosmetic products in Nepal has its trademark "X" registered under class 3 which is a class relevant for cosmetic related business protection among others, another Nepali company with the trademark name "X" with different logo, business objectives and business area, seeking a trademark application under class 4 or 5 cannot be denied and will likely be registered, if it is deemed to be distinct and new in referred class 4 or 5. Thus, it is important for you to understand that the trademark protection you are granted is limited to the class your trademark has been classified in.
Alternatively, well-known brands are known to register in as many classes as possible to secure their interests in various jurisdictions to secure the power to oppose any trademark application in any class, where applicable. However, it should be noted that, well-known marks are well-established and mature brands who have access, resources, power, and necessity to seek protection in as many classes as they can. Keeping technicalities aside, what matters the most for an emerging brand is setting its boundaries right so it can proliferate, seek protection, and make its mark within such specific area.
In contrast to class classification, description of the mark is usually drafted with a wider scope at a preliminary stage to grant wider scope of protection for the trademark applicant. However, the wider scope of description of the mark has the risk of bringing potential oppositions. Thus, it is advised to keep the scope of mark wide where possible and balanced where required while setting its boundaries with objectives to grant and achieve a wider scope of protection for your trademark.
License, madam?
Not to drive, but to authorize the usage of your trademark. You can license the authorization of trademark, franchise it and make profits by selling the goodwill of your business. Brands are a company's intangible and long-term assets. If you think that the only fate of the emerging brands is to make profits by persistent service, you are wrong. Applicable where it may, but the 21st century patent practices and innovation has shown us that your brand's innovation, distinctiveness, and goodwill can be sold in more than the profit you will ever make by providing persistent services.
Ownership over your trademark allows you to explore such multiple avenues such as authorization of usage; partially or completely, franchising, collaborations, selling, etc. These measures and avenues allow one to enhance brand equities. Thus, it is important for emerging brands to understand their x-factor, secure its ownership and protection through legal measures and multiply its brand equity by various licensing, authorizing measures.
Reputation matters: Meeting standards and quality control
Most emerging brands forget that spending time and resources on advertisements, branding or securing legal ownership over the trademark is secondary. The primary task of any emerging brand is to maintain the quality of its product and maintain its product or service as reputable and desirable in the market. To do so, the brand should invest in quality control mechanism. It should invest in obtaining licenses to assure quality products and services. There are various licenses to give assurance of your quality product and services, it could be DFTQC, ISO, etc., depending on the license you want and the licenses available for quality assurances of your product or service.
Another way of maintaining quality is to control the copycats and counterfeit products of your brand to inhibit any falsified or substandard products operating in your name. This can be done by opting various measures such as adopting trademark audits, opting for a trademark management system from your legal counselor and noting down consumer complaints to file oppositions or infringement suits against any fakes that try to free ride on your mark's goodwill.
If you are reading this line, you are now a trademark Romeo, you have learned major seduction strategies for emerging brands to make their marks through legal ways in competitive market. I hope this helps you in your brand building, for any queries and discussions, please feel free to inbox me.
Wishing you all a very happy intellectual property day!
Priyanka Adhikari
(Attorney at Law, Nepal)
