NAMESIS: Firms having names similar to those of established brands on rise

“What’s in a name?,” wrote William Shakespeare. A lot, as far as brands go. And in this age of the digital economy, there has been a stupendous rise in brands with names similar to those of established ones. Most of us know about the online travel portal MakeMyTrip (MMT) but very few have heard of MakeMyYatra, MakeMyJourney or SuperbMyTrip. Some might have heard of or transacted through these portals thinking they are affiliates of MMT. Due to their similar sounding names, MMT recently filed a case against them, bringing to the front the issue of trademark infringement, which is rampant in the brand world.

According to CompuMark, an agency for trademark research and protection, almost 74% of brands globally have experienced trademark infringement.

Kalyan C Kankanala, senior partner, BananaIP Counsels, says a trademark will be considered infringed if a person uses a similar mark for similar products or services and such usage is likely to cause confusion in consumer minds. “For example, if someone uses the trademark “Medimix” for body lotion, they are liable for infringement due to the identical trademark which has already been registered for an ayurvedic soap, which is also a skincare products like body lotion.” 

Kankanala says that one of the prime objectives of trademark is to protect a brand from the unauthorised use and dilution which have the potential of impacting brand equity, revenue, consumer perception and recognition.

CompuMark estimates show that 44% of brands that have encountered trademark infringement have identified customer confusion as the biggest after-effect, while 40% have spoken of revenue loss. 

In its case, MMT has said it spent 46% of its revenues on marketing and advertising in the financial year 2017-18, which can get impacted due to the infringement.  

“When low-grade products or services under a famous brand are made available in the market, then the original brand gets diluted and tarnished. This directly impacts the customer base which starts faltering and can ultimately cause damage to the revenues and the equity of the brand,” says Anil Dutt, Partner, Lakshmikumaran & Sridharan Attorneys.

Global brands like Instagram and Facebook have filed trademark lawsuits in the past. Instagram filed a case against LitterGram, a British app that fought litter-related issues, against the use of the word ‘gram’ in the trademark. Facebook filed a case against a US-based community website for teachers called Teachbook for using the word ‘book’ in its brand name. The tech giant dropped the case only after Teachbook became TeachQuest.

Experts say sometimes bigger brands use their muscle to subdue smaller brands in cases where the so-called infringement does not carry weight. “Words like ‘gram’ or ‘book’, for example, are free-flowing words in English and no entity can claim sole authority over their use. But often, smaller brands might not be willing, or might not have the resources to get into a long-drawn battle, and they succumb to pressure and change their brand names,” said an expert. 

“Unless the ‘infringer’ has also copied the logo, the case may not be strong,” Adds Kankanala.

Experts like Dutt say the growth in the e-commerce sector has resulted in a catastrophic increase in infringement, with e-tailers selling goods that consumers assume are original.  

According to Nakul Pingale, executive creative director, Grapes Digital, since marketing and advertising are prominently done online now, it is getting difficult for brands to control or avoid infringement. “It requires a lot of brand awareness, recall, ads, ambassadors and campaigns to promote a brand holistically. It is becoming easy for firms to copy or misuse the trademarks as there is already a market existing for them and consumers fall for similar brand names.”

In cases of genuine infringement, taking action is an option only for registered trademark owners, and hence, it is imperative for brands to register their trademarks, experts caution. 

“As soon as a brand name is finalised, an application for trademark registration has to be filed. Moreover, before finalising a brand name, a comprehensive search has to be undertaken to ensure that conflicting trademarks are not registered by others,” says Kankanala.

LOST IN THE CROWD

• 74% – Of brands globally have experienced trademark infringement, as per CompuMark
   
• 44% – Of brands that have encountered trademark infringement have identified customer confusion as the biggest after-effect
   
• 40% – Have spoken of revenue loss