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SEMESTER 8
INTELLECTUAL PROPERTY RIGHTS

TITLE:

TRADEMARK REGISTRATION FOR GLOBAL BRANDS:

CHALLENGES AND STRATEGIES FOR
INTERNATIONAL PROTECTION

SUBMITTED TO:

Dr. Vandana Singh

University School of Law and Legal Studies (USLLS)

GGSIP University
New Delhi- 110075
.

SUBMITTED BY:
Kartikey Sharma
Batch (BBA LLB 4th Year)
Roll Number (02316503520)
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ABSTRACT

International trademark protection is a critical component for firms looking to build and grow
their brand on a worldwide basis. In today's interconnected world, protecting your brand's
identity across borders can be just as important as the quality of the products or services you
provide. This research paper is intended to be a thorough guide for businesses and legal
professionals who are navigating the difficult landscape of foreign trademark registration and
enforcement.

By delving into the complexities of trademark protection, defining strategic approaches, and
addressing common issues, In today's fast-paced global marketplace, a strong brand is
frequently the foundation of a company's worth. The importance of protecting brand
identification on an international scale cannot be emphasised for entrepreneurs looking to cross
national borders. International trademark protection serves as a global shield for a startup's
brand and intellectual property rights.

To combat these challenges, a paper is calling for an all-round approach to trademark protection
one that includes taking proactive actions and building strategic partnerships. To achieve this
requires the establishment of strong trademark vigilance mechanisms, which can identify and
deal with all forms of infringements on time, making use of local legal representatives to
navigate intricate regulatory terrains and employing international protocols and agreements as
they pertain to cross-border registration processes for trademarks.

Research Objectives:

There are two major goals of this research paper:

1. One is to pinpoint and assess the primary obstacles that international markets pose
on global brands in securing trademark registration. This would involve a scrutiny
into the convolutions of differing legal systems, the obstruction posed by language
disparities, the incongruity brought about by cultural considerations as well as high-
cost implications for an international trademark protection.
2. In order to address these challenges and reach a successful global trademark
registration, it is necessary to analyse strategies that work. This includes looking at
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best practices which entail carrying out extensive trademark searches, valuing the
strategic registration of variations, and capitalizing on the knowledge of worldwide
trademark experts.

Research Methodology:

The path this research treads will be multi-faceted in its journey to the goals it has set out to
achieve: An extensive review of academic journals, legal publications, industry reports, and
relevant websites forms the cornerstone of our endeavour through the realms of Literature.
Its aim is simple yet profound— to create within us a comprehensive understanding of the
existing body of work that discusses challenges surrounding global trademark registrations
and strategies.

INTRODUCTION/DISCUSSION

In the world of commerce, trademark protection is like a passport - it grants rights within a
specific territory. Securing a trademark in one country doesn't automatically shield your brand
elsewhere. Trademarks come in various forms, from words and logos to symbols or a
combination of these, and their primary purpose is to differentiate your offerings from
competitors. They also serve as a legal weapon against customer confusion and unauthorized
use of your brand.

For startups venturing abroad, obtaining trademark protection in each target market is
paramount. Without this safeguard, brand erosion or imitation by others becomes a real threat,
potentially causing financial losses and damaging your reputation.

Beyond Borders: Streamlining International Trademark Protection: While trademark law

adheres to territoriality, there are ways to simplify the process of acquiring international
protection. The Madrid Protocol stands out as a cost-effective and streamlined option for
trademark owners seeking to secure their marks in multiple countries through a single
application. With over 100 member nations, the protocol allows applicants to seek protection
in any member country by filing an international application through their home country's
trademark office. This application must be based on a pre-existing national trademark
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registration or application. Additional international frameworks exist, such as the European

Union Trademark (EUTM) which grants protection across all EU member states with a single
registration, and the African Regional Intellectual Property Organization (ARIPO) which
facilitates trademark registrations for several African nations.

❖ The Madrid Protocol: A Beacon of Efficiency

The Madrid Protocol, overseen by the World Intellectual Property Organization (WIPO),
simplifies the process of registering trademarks in up to 122 member countries. By submitting
a single application in one language with a single set of fees, companies can efficiently secure
their brand identity in multiple jurisdictions. Following the filing under the Madrid system,
WIPO conducts a formal examination. Successful applications are then published in the WIPO
Gazette of International Marks. Subsequently, each member nation performs its own review,
deciding whether to accept the international registration within its borders. This process is
known as examination according to national rules. Beyond the Madrid Protocol, regional
frameworks exist to facilitate trademark registration across several countries with a single
application. The European Union Intellectual Property Office (EUIPO) offers the European
Union Trade Mark (EUTM) for protection throughout all EU member states. Similarly, the
African Regional Intellectual Property Organization (ARIPO) and the Benelux Office for
Intellectual Property (BOIP) provide trademark registration services for their respective
regions1.

For countries outside the scope of the Madrid Protocol or regional systems, securing trademark
protection requires direct engagement with each country's national trademark office. This route
can be more intricate and often necessitates the expertise of local agents or attorneys familiar
with the specific trademark laws and application procedures of those countries. The decision
to utilize the Madrid Protocol, a regional system, or direct national filings depends on a
company's unique expansion goals and needs.

1
https://trademarkfactory.com/international-trademark-protection-strategies-for-global-brand-expansion.
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Challenges And Issues Pertaining To Global Branding:

The 21st century presents a unique challenge for marketers: consumers crave both the
excitement of new technology and the comfort of familiar values2. This creates a branding
paradox – brands must be innovative (like Intel and Microsoft) while also evoking a sense of
nostalgia (like Coca-Cola and Levi's). Brands stuck in the middle risk losing ground.

The rapid pace of technological change creates a dynamic and complex landscape for marketers
of global brands. Understanding how these changes impact consumers and their relationship
with brands is crucial for success. Several factors influence the decision to create a global
brand. The strength of globalization pressure within the industry and the company's ability to
leverage transferable assets (like brand recognition) are key considerations. Companies with
strong, transferable assets in industries facing high globalization pressures are prime candidates
for global branding.

A critical first step in creating a global brand is selecting a name and logo that resonates across
cultures. The ideal name should be:

• Easy to pronounce and remember in various languages

• Free of negative connotations in any language
• Distinct from existing trademarks

While corporate names like McDonald's or Ford often translate well, product names pose a
bigger challenge. Pepsi's "Come Alive with the Pepsi Generation" campaign serves as a
cautionary tale – the Chinese translation meant "Pepsi Brings Your Ancestors Back from the
Dead."

Cultural context also plays a role. "Diet" in "Diet Coke" might have no meaning or negative
connotations in some cultures, necessitating alternative names like "Coca-Cola Light." The
challenge is to create a branding system recognizable worldwide, regardless of the name used
(Diet Coke vs. Coca-Cola Light). The Coca-Cola example highlights the importance of
consistent visual branding. The company positions itself as a lifestyle beverage, not just a

2
By Howard J., Dir., Global Brand Marketing, the Coca-Cola Co., PO Drawer 1734, Atlanta, GA 30301, in his
article on, The challenges of global marketing in the next millennium, retrieved from
http://ift.confex.com/ift/98annual/techprogram/accepted/26-6.htm, retrieved on December 21, 2008
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weight-loss product. This message is conveyed through packaging and visuals, making the
brand recognizable even in markets where the name differs3.

With the rise of satellite TV, the internet, and global travel, brand consistency is paramount.
Consumers who can't recognize their preferred brands might switch to competitors.
Standardized packaging with clear visuals is crucial for maintaining brand identity across
borders. However, slight name variations shouldn't be seen as a negative. Consumers often
recognize brands first by their colors and logos, and then by their names.

Five Trademark Law Strategies for Managing Brands

1. Choosing a Distinctive Name: Don't be tempted by descriptive names! While they

might seem informative initially, they lack distinctiveness and get lost in a crowded
marketplace. Instead, opt for fanciful or arbitrary names (think Kodak or Apple) that
are easier to trademark and have greater long-term brand potential4.

2. Trademark Search and Clearance: Finding a cool name is just half the battle. You
need to ensure it's legally available. Conduct thorough trademark searches to identify
any existing trademarks that might cause confusion with yours. This could involve
searching government databases, phone directories, and even the internet. Depending
on your resources, you can hire a lawyer for a detailed clearance opinion. Remember,
consider future expansion plans - search for potential conflicts in markets you might
enter down the line.

3. Trademark Audits: Don't Forget the Extras: A brand image goes beyond just a name
or logo. Think about distinctive elements like color schemes, sounds, packaging design,
or even taste (think the infamous Diet Coke vs Diet Pepsi debate). These can all be

3
(2002), “Why Do Brands Cause Trouble? A Dialectical Theory of Consumer Culture and Branding,” Journal of
Consumer Research, 29 (June), 70–90.
4
Interbrand. (2010). Top 100 Global Brand Names. Retrieved from http://www.interbrand.com/en/best-global-
brands/best-global-brands-2008/best-globalbrands-2010.aspx
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protected as trademarks too! Conduct regular trademark audits to identify and document
all potential trademark assets within your brand.

4. Document Consumer Complaints: Your customer feedback system can be a

goldmine for trademark disputes! Pay attention to instances where consumers confuse
your brand with another due to similar trademarks. These documented complaints can
be valuable evidence in case of trademark infringement or dilution lawsuits.

5. Implementing a Trademark Management System: Having a system in place ensures

your valuable trademarks are protected. This system should cover various aspects like
collecting usage evidence, registration processes, monitoring licenses, and opposing
potential infringements. Depending on your resources, you can develop an internal
system, hire external legal counsel, or use a professional service provider.

CASE STUDIES:

Real-world examples of small businesses that successfully protected their trademarks when
expanding internationally can provide valuable insight into the challenges that businesses face
and how they can overcome them. Here are a few case studies:

The case of H&M

H&M is a Swedish fashion retailer that has successfully expanded its brand globally. When the
company entered the Indian market, it faced a challenge from a local company that was using
a similar logo. H&M took legal action against the Indian company and ultimately won the case,
allowing it to continue to use its logo in India5.

5
H & M Hennes & Mauritz Ab & Anr. v. HM Megabrands Pvt. Ltd. & Ors. 2018 (74) PTC 229 (Del) Apple loses
trademark dispute in China
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The case of Starbucks

Starbucks is a global coffee chain that is known for its distinctive brand and logo. When the
company expanded into the Chinese market, it faced challenges from local companies that were
using similar logos and names. Starbucks took legal action and ultimately won the case,
allowing it to protect its brand in the Chinese market6.

The case of Apple

Apple is a multinational technology company that is known for its innovative products and
branding. When the company expanded into the Chinese market, it faced challenges from local
companies that were using similar logos and names. Apple took legal action and ultimately lost
the case under China courts7.

GLOBAL MULTILINGUAL MARKETPLACE:

The primary goal of a trademark system is to facilitate the clear and understandable
communication of information regarding the origin of goods and services within the
marketplace.8

For instance, legal regulations would prohibit a new company from marketing its smartphones
under the brand name APELL due to the high probability of causing confusion among
consumers, who might mistakenly associate them with products bearing the well-established
trademark APPLE. By averting such confusion, trademark legislation upholds the integrity of
an information system, aiding consumers in swiftly identifying the products they desire amid
the marketplace's bustle. This reliance on trademarks allows consumers to discern the origin,
quality, and attributes of products, ultimately reducing the effort required for them to search
for desired items. In broader economic terms, trademark law serves to shield meaningful
signals from being obscured by irrelevant noise9.

6
Starbucks vs Shanghai Xingbake Cafe 2005
7
Apple Inc. vs Proview Technology (Shenzhen) 2012
8
Mark P. McKenna, The Normative Foundations of Trademark Law, 82 Notre Dame L. Rev. 1839 (2007).
9
By enforcing exclusive rights, trademark law also encourages producers to maintain consistent levels of
product quality by ensuring that they, and not their competitors or counterfeiters, will internalize any gains to
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Trademark Registration via Madrid Protocol

The Madrid Protocol, originating from the Madrid Agreement, establishes norms and
procedures for trademark registration on an international scale. It allows applicants from
member countries to seek international trademark registration through the World Intellectual
Property Organization (WIPO) based on their existing trademark registration in their country
of origin. The concept of "country of origin" refers to the applicant's domicile, citizenship, or
where they conduct significant industrial and commercial activities. Despite being in existence
for over a century, the Madrid Agreement had limited membership due to certain provisions
such as requirements for basic registration, time limits for substantive examinations, fee
structures, language obligations, and a central attack system. In response to these limitations,
the Madrid Protocol was adopted in 1989 as an amendment to the Madrid Agreement,
introducing enhancements to the trademark registration system. These improvements include
relaxed conditions for basic registration, revised fee structures, flexibility in language usage,
and streamlined procedures for completing international trademark applications for destination
countries. The Madrid Protocol aims to expand the reach and attractiveness of the Madrid
System by modernizing and improving its processes.

From the points as mentioned above, it can be concluded that the purpose of the Madrid
Protocol is to create a friendlier system for international trademark registration, to encourage
more countries to join as its members, to provide legal protection for more businesses regarding
their trademark abroad, and consequently encourage the growth of businesses internationally10

CONCLUSION

In today's globalized economy, protecting trademarks on an international scale is imperative

for businesses seeking to establish and expand their presence across borders. This research
paper has delved into the complexities and strategies surrounding international trademark

reputation from doing so. McKenna, supra note 17, at 1844-49 (describing this theory as “conventional
wisdom”).
10
Przygoda, Agnieszka, “The International Registration of Trade Marks under the Madrid System: Advantages
and Disadvantages”, Eastern European Journal of Transnational Relations2019, Vol. 3 No. 1
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registration and enforcement, aiming to provide a comprehensive guide for businesses and legal
professionals navigating this challenging landscape.

The fundamental purpose of trademark protection is to ensure the clear and accurate
communication of information about the source of goods and services in the marketplace.
Trademarks serve as vital identifiers of brand identity, quality, and authenticity, enabling
consumers to make informed purchasing decisions amidst the vast array of options available.
By safeguarding trademarks, businesses can mitigate the risks of brand erosion, imitation, and
unauthorized use, thereby preserving their reputation and market competitiveness.

The Madrid Protocol stands out as a beacon of efficiency in international trademark

registration, offering a streamlined and cost-effective option for securing trademark rights
across multiple jurisdictions. By simplifying the application process and harmonizing
procedures, the protocol aims to encourage more countries to join as members and provide
broader legal protection for businesses operating on a global scale. However, despite the
advancements facilitated by the Madrid Protocol and other international frameworks,
challenges and issues persist in the realm of global branding. From navigating cultural nuances
and linguistic disparities to combating infringement and counterfeiting, businesses face a
myriad of obstacles in protecting their trademarks on a worldwide basis.

To address these challenges, businesses must adopt a holistic approach to trademark protection,
encompassing proactive measures and strategic partnerships. This includes establishing robust
trademark vigilance mechanisms, engaging local legal representatives to navigate regulatory
complexities, and leveraging international protocols and agreements for cross-border
registration processes.

In conclusion, international trademark protection is not merely a legal necessity but a strategic
imperative for businesses seeking to thrive in today's interconnected world. By understanding
the complexities of trademark registration and enforcement, and by implementing effective
strategies, businesses can safeguard their brand identities, foster consumer trust, and pave the
way for sustainable growth and success on a global scale.