Companies often face numerous risks if they delay a trade mark filing until the new product/service is publicly announced. One potential risk is conflict with previously registered trade marks. For the late filing of a trade mark application, conflict with a prior filing may prohibit registration and force re-branding. Such difficulties in registering preferred trade marks might then affect a firm’s competitive position in the product market. A second, more maleficent, risk of delaying a trade mark application filing is posed by trade mark squatters. These are individuals or companies who apply to register trade marks on brands commercialized by wellknown market members. That’s where a submarine trade mark application comes into play, a submarine trade mark application is first filed in a jurisdiction which does not have an online trade mark database. For example; Jamaica and Mauritius both do not have online trade mark databases so this means that the general public does not have access to the trade mark applications filed/ published in these countries. In turn, this generally will mean that the general public will not be able to easily find out about a new trade mark application and companies will not have to disclose the brands being launched by them . In other words, submarine trade marks1 are trademarks (a) whose publication and hence disclosure to the public is delayed and/or (b) which are filed by subsidiary companies instead of the company that aims to use them in commerce.
Article 42 of the Paris Convention for the Protection of Industrial Property provides for a priority filing, and if not all then, a majority of the jurisdictions (194) are party to the said convention. A priority filing makes use of a provision which basically says any identically filed subsequent trade mark can claim a priority filing date of the first trade mark application, for six months. The six month submarine period allows companies to attain exclusive rights in places where squatting concerns are strong prior to filing a publicly-visible trade mark application and risking revelation to possible squatters.
The aim of our article will be to offer thorough evidence on the increasingly popular phenomenon of submarine trade marks along with examples of big companies like Apple and Amazon which used this tactic before the launch of their products and services.
The submarine tactics allow companies to profit from legal trade mark protection while plummeting the risk of accidental disclosure of information. For example, when Apple launched its Apple Watch on 9 September 20143, it first filed the corresponding trade mark application in Trinidad and Tobago on 11 March 2014, a priority right six months before the U.S. application was filed on the product launch date. Since Trinidad and Tobago does not have a searchable online trade mark database, Apple’s priority application only appeared when the company filed to register the trade mark at the USPTO. This strategy allowed Apple to create an exclusive universal right to its new product brand name half a year before disclosing it to the public and its competitors. All the time more crowded trade mark registries have aggravated this risk and may be prompting more innovative mitigation strategies, including submarine filing.
This approach is followed by a small but increasing number of mostly tech companies, comprising some of the bestknown players such as Apple, Amazon, Cisco, Google, Intel, and IBM.
Additional risk of deferring a trade mark application filing is posed by trade mark squatters. Squatters never intend to use the trade marks in commerce but, rather, aim to extract payments from the real brand owner through licensing or acquisition. The half year submarine period allows companies to obtain exclusive rights in jurisdictions where squatting concerns are strong prior to filing a publicly accessible trade mark application and risking disclosure to possible squatters.
Trade mark squatting is a nook area in trade mark disputes. It has been seen that usually registration is a key barrier for foreign companies as once they achieve worldwide goodwill, many local infringers try to register their trade marks to sell their products and make massive profits. With regard to the universal rule, the exclusive rights of a trade mark owner is territorial in nature and therefore laws relating to Trade mark differ from one place to another. Trade mark squatters take benefit of such different law implications, which becomes an impediment when companies become multi-nationals.
As in the U.S., trade mark applications are made available for public assessment almost instantly after filing, a trade mark filing could disturb a company’s cautiously fashioned marketing drive leading up to an important statement or key product launch so the firms delay public disclosure especially when they face a high risk of imitation by close competitors. This can be annoying and shows the pressure between a company’s legal approach and marketing strategy.
A company files a trade mark application in the name of a distinct entity – for instance, a “shell” subsidiary or associated entity not known to be linked to the interested company, and possibly one formed for the obvious purpose of “separating” the trade mark filing from the true party of interest. Big Companies like Amazon and Apple use this type of trade mark filing to keep their brand’s identity under wraps until the official launch.
According to a Bloomberg report in early September 20224, Apple’s highly anticipated mixed reality headset name was revealed because the outlet spotted trademarks in the U.S. and global markets related to the device that was filed by Apple-affiliated firms. Names like “Reality One”, “Reality Pro” and “Reality Processor” were filed by a purported shell corporation, ‘Immersive Health Solutions LLC’ with the U.S. Patent and Trademark Office. Immersive Health Solutions was incorporated in February 2022 and was registered by the Corporation Trust Co., another shell company, it’s presumed, based on links to a lawyer with connections with Apple and the company’s past filing methods.
Filing trade marks under a different company name is not unusual for big companies like Apple. The hype these companies get before the launch of their new products is mindboggling, on the same time they need to protect their product from getting imitated by their Opponents. Hence, the submarine filing.
Private Labelling is basically when a company purchases off-the-shelf products from a supplier or a retailer and brands them under their company. These products are already being manufactured by suppliers so there is little to no actual product development needed. Amazon has never widely revealed what exact brands it holds, so figuring out an Amazon private label brand can be difficult. This is achieved by filing the brands under different subsidiary companies’ names. Some of the amazon’s private brands5 under the name of different subsidiary companies can be found below – The abovementioned results are extracted from the IP India Trade mark Public Search. The brands above belong to Amazon and filed by its subsidiaries from 2016 to 2018, much prior to the actual launch of the brands. Although ‘Proposed to be used’ option helps in registering your adopted mark before the actual use, however, in the present case not only the brands were proposed to be used but also under wraps due to filing under the name of different shell companies.
Nevertheless, not all the private brands of Amazon were filed under subsidiary companies’ names. Many of them were filed under the name ‘Amazon Technologies Pvt Ltd’ which showcases that the Companies have parameters of going for ‘Submarine Trade Marks’ which can be the following –
In a recent case, ‘Happy Belly Bakes’ a small bakery chain in Bengaluru filed a Trade mark Infringement case against Amazon in Bengaluru District Court6. Happy Belly Bakes , is a women-run business which was founded in 2008 by Shisham Ahuja and Thripti. It sells cakes, brownies, cookies and other baked goods. It has held the trade mark since 2016, after changing its name from Regalar to this in 2010. Amazon introduced ‘Happy Belly’ in 2016 in some of the markets where it runs and sells bakery items, dairy, crackers, snacks, spices and other items under the label. The owner of Happy Belly Bakes filed a lawsuit against Amazon Seller Services, Cloudtail India and Tootsie LLC which submitted the trade mark application on Amazon’s behalf.
Tootsie LLC is a shell company owned by Amazon which filed the trade mark application for under Class 43 which was an already existing brand name. The Court ruled in the favour of the Plaintiff on the basis of Prior Use and asked Amazon to take down all the ‘Happy Belly’ products. This order will affect a big brand like Amazon because now it will have to ‘re-brand’ entirely. Re-branding is a big problem for huge companies because they have massive products at hand and re-branding them becomes very difficult.
Submarine trade marks help companies to avoid renewing their brands, if their products or services are imitated by the Opponents. But, in this case Amazon intentionally or unintentionally adopted the Plaintiff’s prior registered trade mark and hence the re-branding. So, this shows that a big company like Amazon when going for submarine trade marks to protect their mark from all the above mentioned factors should also conduct a prior search to check if they too are infringing an already existing brand’s trade mark or not.
A submarine filing isn’t a 100% blanket bet to avoid public inspection, it does upsurge a company’s probabilities of safeguarding trade mark rights while also preserving some control of the “buzz” paving the way for a surprise product launch, mainly if the lead time is comparatively short. Submarine trade marks see less Google searches than non-submarine trade marks before essential products or services are widely announced. Submarine tactics seem specifically important when companies first present new brands to the public and pursue high profile promotions looking for reactions from possible buyers. But, they also appear to play a role in keeping the nature of their future products undisclosed from competitors. In the recent scenario, submarine tactics introduce a delayed disclosure alternative for the most sophisticated and resourceful applicants. Hence, Submarine trade marks is a choice only for big companies which have a fiscal muscle and world-wide reputation, and not for forthcoming companies which are absorbed in building their brands from the scratch.
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