This session is designed for students, lawyers and business professionals to understand trademark basics and brand protection strategies. Lawyers advise the clients to protect their brands by way of trademarks. Brand managers work internally to build a brand that will help the company in positioning their products and services uniquely as compared to the competitors. Effectively, companies work with external lawyers and law firms to obtain protection of their creative branding assets by way of trademarks. As a result, lawyers and law firms act as an interface between the brand owners and the government or specifically, the trademark office to obtain trademark registrations covering unique brands.



A company can own multiple brands covering their entire range of products and services. Similarly, a single brand can be protected by way of multiple trademarks to ensure complete protection.



For example, in case of McDonald’s, you have a unique logo comprising of iconic golden arches and of course, the unique brand name written as “McDonald’s”. There’s also a unique tagline that states “I’m loving it”. From the perspective of brand owner, this requires trademark protection by filing separate trademarks for each of these elements, along with another set of trademark applications to protect these in combinations. Such trademark applications to protect the combinations will cover brand name plus logo, brand name plus tagline, logo plus tagline, and, brand name plus logo plus tagline all together. This type of brand protection strategy is essential to reduce the chances of unauthorised use of the brand and helps the brand owner in strong enforcement of trademark rights in case of trademark infringement. As a case study, let’s assume that a client approaches a law firm for a meeting with a new business idea. The new business idea is about starting a fitness studio along with an in-house cafe offering healthy food and drink options. Let’s further assume that the brand name selected by the client is EndureFit. So the first and foremost discussion should be around various aspects of business model. Let’s understand the consumer facing aspects to begin with. To avail the business benefits, the consumer has to walk into this fitness studio and complete the registration process to become a member. Subsequently, member can avail services like using the fitness equipments, or availing additional services like personal training, diet planning or buying healthy foods and drinks from the in-house café. Before filing a trademark, it is extremely important to review the intersection between the brand and the consumers. Effectively, there are various touch points between the business and the consumer, including:

1. Providing a fitness studio as a service
2. Providing fitness training services
3. Providing diet planning services
4. Providing food and beverage services through the in-house café
5. Selling food and beverage products
6. Packaging food and beverage products in branded packaging material, offering branded tissue papers etc.

As a trademark lawyer, these aspects are crucial to understand as these are helpful in deciding the relevant classes of goods and services. Internationally, all the countries follow the NICE classification of goods and services. Before filing any trademark application, it is important to determine all the applicable classes. Generally, classes 1-34 cover goods, i.e. products, and classes 35-45 cover various services. So for the example of EndureFit, following are the applicable classes:

1. Providing a fitness studio as a service – Class 41
2. Providing fitness training services – Class 41
3. Providing diet planning services – Class 41
4. Providing food and beverage services through the in-house café – Class 43
5. Selling food and beverage products – Class 30
6. Packaging food and beverage products in branded packaging material, offering branded tissue papers etc. – Class 16, 21

In next sessions, we will discuss details of trademark searching, trademark filing, the registration process involving dealing with the trademark office, and filing of trademarks internationally.