Intellectual Property Rights
Trademark law in India is well-settled and offers a robust protection and enforcement regime for right holders. The range of protection encompasses words, labels, devices, shapes, sounds, colors, textures, etc. amongst others.
India is a first to use jurisdiction and priority in use takes precedence over priority in registration. At the same time, trademarks can be registered without actual usage in India on an intent to use basis.
India is a member of the Madrid Protocol which enables right holders to protect their trademarks in multiple countries through a single application.
There are five Trademark Offices in the cities of Ahmedabad, Chennai, Delhi, Kolkata and Mumbai respectively. The Intellectual Property Appellate Board (IPAB) is the appellate authority for adjudicating appeals against the orders of the Registrar of Trademarks and rectification (cancellation) petitions.
The Firm provides comprehensive services which include Brand Development, Protection, Enforcement and Commercialization.
BRAND DEVELOPMENT AND STRATEGY
The selection and launch of a brand in the complex Indian market is fraught with unique challenges. A careful legal assessment of risks through a Search is essential. We provide comprehensive search services to our clients that uncover risks beyond a simple Trademark search. Our strategic advisory role continues through the journey of the Brand.
We recognize that the filing and registration process lays down the all-important foundation for effective brand protection. This process itself requires brand owners to take a strategic view to ensure holistic protection in a dynamic market.
We have a successful track record of protecting leading global brands in India and the SAARC region and protecting Indian brands across the world.
Successful enforcement of rights in the heterogeneous Indian market hinges upon creative practical solutions stemming from an in-depth understanding of the market and legal expertise. We craft optimal solutions for clients leveraging a wide array of tools to address a broad spectrum of issues including counterfeiting, parallel imports, trade dress claims, disparagement, etc.
Brands represent a significant proportion of the value of intangible assets of leading organizations. We help unlock the value of brands and other intellectual property through appropriate mechanisms such as licensing, franchising, mortgage, etc.
We provide services to a multi-faceted set of clients including Fortune 500 corporations, small and medium enterprises and start-ups across different industries. We have a rich history of developing the trademark jurisprudence in India and have been consistently recognized through several awards and accolades.
INDUSTRIAL DESIGN LAW IN INDIA
The objective of the Design law in India is to strike a balance between protection of registered designs and promotion of design activity. Design protection is granted to new or original designs which appeal to the eye.
Registration of designs confers significant commercial advantage on the owner. Application for registration of a design must be filed before any commercialization or public display of the article. Prior public display or commercialization can disentitle the owner.
Design registration takes relatively less time to obtain compared to other forms of intellectual property. The term of protection for a design is 10 years which can be further renewed for a period of 5 years.
India is a signatory to the Paris Convention for the protection of Industrial Property and the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). The Firm provides comprehensive services including Prosecution, Enforcement and Advisory services. We handle design prosecution covering everything from industrial products, handicrafts, technical and medical instruments, watches and jewelry, houseware, electrical appliances, automotive products, etc.
A registered design owner can file a civil lawsuit for injunction to restrain infringement of a registered design. Criminal remedies are not provided under the law.
Copyright is the most pervasive, inclusive and freely accessible intellectual property right. One may go so far as to call it the ‘people’s right’, for the contemporaneous and automatic protection it affords to all original creations.
The Indian Copyright Act protects original literary, dramatic, musical and artistic works, cinematograph films, sound recordings and much more besides. Copyright registration is not mandatory for protection, but is recommended for certain kinds of works for their better enforcement. India is a signatory to several international treaties including the Berne Convention; copyright protections are thus equally available to works created by foreign nationals in Convention countries.
Lately, copyright legislation and copyright common law have appeared to tug at divergent trends with legislation seeking to secure greater rights for the right holder and courts interpreting a less onerous and restrictive exclusivity arising from copyright. Regardless, protecting and enforcing copyright in this digital century is presenting, and will continue to pose, ever more complex challenges for rights holders and will require a rethink of business models.
The firm caters to all stakeholders of the creative communities including individual artists and authors, rights managers, publishers, IT companies, producers and broadcasters, etc. We have played a pivotal role in the development of copyright jurisprudence in the country including landmark cases on moral rights, fair dealing, compulsory licensing, copyright in characters and assisting in the formation of collecting societies.
Our services include copyright prosecution and registration, licensing and assignment, contract negotiation and drafting, due diligence, clearances and regulatory compliances, dispute resolution and enforcement. In addition to the above services, we have created specialized teams for the areas of Arts and Antiquities, Media and Entertainment and IT and E-Commerce.
The IP litigation landscape in India has witnessed a paradigm shift over the last decade. There is an alignment of focus by the legislature and the judiciary to address the pressing need for expeditious disposal of cases.
IP LITIGATION LANDSCAPE FIRMS IN MUMBAI
The Indian judicial system is a federal one comprising a Supreme Court, 24 High Courts and over 600 District Courts. Of the 24 High Courts 5 have original jurisdiction, in other words these are courts of first instance. Intellectual property litigation is largely concentrated in the High Courts of Delhi, Chennai, Kolkata and Mumbai which are courts of first instance. Typically, there are two levels of appeal from the orders of the courts. Trademark litigation takes the lead in overall volumes of litigation followed by copyright and patent litigation. Misuse of trade secrets, know how and confidential information are also frequently the subject matter of IP litigation and the law is shaped through decisions of Courts. Criminal litigation is an additional enforcement mechanism adopted primarily in counterfeiting cases. Occasionally, criminal cases with IP roots filed as a tool to force a settlement or bring about a balance of power with right owners are encountered. The latter phenomenon is fortunately not too common.
POSITIVE DEVELOPMENTS (SHRINKING TIMELINES, DAMAGES)
The IP litigation landscape in India has witnessed a paradigm shift over the last decade. There is an alignment of focus by the legislature and the judiciary to address the pressing need for expeditious disposal of cases, in particular those of a commercial nature including IP which impact the economy. Resultantly amendments have been made in the procedural laws to tighten procedure and minimize delay.
With periodic judges’ training workshops courts have been equipped to understand the basics and also the finer nuances of intellectual property jurisprudence.
In early 2016 the Parliament passed a law for setting up of ‘commercial courts’ for speedier and effective resolution of commercial disputes. The life span of an IP lawsuit in commercial courts when fully functional will be comparable to some of the most developed jurisdictions worldwide.
The courts are increasingly conscious of the importance of awarding damages as an integral component of litigation and are ensuring the establishment of a culture of grant of compensatory and or punitive damages when the claim for damages is well supported and argued. Patent litigation in particular has witnessed an increasingly high incidence of grant of damages.
The Firm provides a smorgasbord of litigation services to a widely varying set of clients across different industries and business sectors from every corner of the world. We represent clients in all manner of litigation in the courts of first instance and the appellate courts (courts of second instance) in cities across the country, and in the Supreme Court of India which is the last court of appeal.
Our experience in litigation services includes but is not limited to all conventional IP subject matter such as trademarks, patents, designs, copyrights, trade secrets and confidential information, and expanded claims of unfair competition under common law, competition law, arbitration, the law of torts, constitutional challenges, media & entertainment law, IT & e-commerce, plant varieties, geographical indications, etc. We see alternate dispute resolution as a very important aspect of litigation and for this reason we assist clients with equal vigor and commitment in ADR as we apply in litigation, understanding and ensuring that litigation serves as a precise means to an end rather than be an end in itself.
The Firm’s primary focus is to responsibly and determinedly assist courts and tribunals in developing IP jurisprudence while meeting its clients’ objectives and expectations from litigation in the most resource efficient and cost-effective manner. Unique remedies are explored and case-appropriate strategies applied to achieve the best results for our clients.
We cater to clients across all industries including Pharmaceutical, Automotive, Telecom, Energy, Chemicals, and more. The Firm is at the forefront of the changes sweeping the Patent landscape in India and has received numerous awards and accolades.
Patent jurisprudence in India is at an inflection point.
Several initiatives taken by the Government of India, including the formulation of a National IPR Policy, is reflective of the recognition of the importance of patents in building an innovation ecosystem.
A series of recent landmark decisions by the Supreme Court of India and the Delhi High Court have provided invaluable guidance to the Indian Patent Office (IPO) for assessing patent applications, especially in the Pharmaceuticals and Telecom space. India is a signatory to the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), the Paris Convention and the Patent Co-operation Treaty (PCT), thereby enabling patent holders to protect their rights in multiple countries without losing priority.
There are four Patent Offices in the cities of Chennai, Delhi, Kolkata and Mumbai respectively. The Intellectual Property Appellate Board (IPAB) is the appellate authority for adjudicating appeals against the orders of the Controller of Patents & Designs and revocation petitions.
The Firm provides comprehensive Patent services including Protection, Enforcement, Commercialization and a suite of Search and Analytics services. Advanced technical qualifications, legal skills and practical business experience enable our patent team to appreciate and protect inventions across myriad technologies.
We provide services for clients from filing to grant and evaluate each patent disclosure in accordance with the Indian patent law prior to filing it at the IPO. Most of our patent agents are also lawyers and this techno-legal qualification helps in drafting high quality patents.
The patent system in India allows challengers to file invalidity proceedings at several stages before and after the grant of a patent. The processes of the IPO are in a developmental stage and Courts occasionally play an interventional role in bringing these processes in line with international standards. We specialize in strategizing for and representing clients in contentious proceedings before the IPO, the IPAB and the Courts.
In an increasingly technology driven world, tremendous wealth can be tapped by building and nurturing an effective patent portfolio. We help our clients derive value from technology through appropriate mechanisms such as licensing, technology transfer agreements, patent audits, etc. This often involves helping clients navigate through complex issues relating to SEPs (Standard Essential Patents) and FRAND (Fair Reasonable and Non Discriminatory) terms.
SEARCH AND ANALYTICS
We conduct Freedom to Operate (FTO) searches, validity searches, white space analysis, risk analysis and feasibility opinions. We are the only Indian law firm that evaluates essentiality of a patent application with the International Patent Evaluation Consortium (IPEC).