Intellectual Property

Representative Matters

• Comprehensive Expertise: From inception to enforcement, our IP practice covers the entire spectrum of legal services. Whether it is advising on regulatory compliance, handling complex litigation, or strategizing on global IP portfolios, we provide robust solutions tailored to meet our clients’ diverse needs. Our team of seasoned professionals combines deep industry knowledge with a forward-thinking approach, delivering results that exceed expectations.
• Client Diversity: Our clients span from dynamic startups to leading international and multinational corporations. They turn to us for practical resolutions to intricate IP challenges, whether independently or in conjunction with other advisory services across various practice areas within our firm. We prioritize understanding our clients’ unique challenges and goals, tailoring our strategies to align with their business objectives.
• Innovative Solutions: We are committed to innovation and agility in addressing emerging IP issues. Our proactive approach ensures that our clients receive strategic guidance that not only safeguards their IP assets but also enhances their competitive edge in the marketplace.
• Global Perspective: With a global footprint, we navigate the complexities of international IP laws and regulations, providing our clients with comprehensive support wherever their business interests lie.
• Proven Track Record: Our track record of success is underscored by our longstanding client relationships and industry accolades, affirming our commitment to excellence in IP law.
• Legal Opinions & Trademark Searches: Our seasoned IP professionals provide erudite opinions on the viability of a trademark, conducting exhaustive trademark searches in various jurisdictions including international jurisdictions, and offering advice on the probability of approval, potential conflicts, and strategies for successful registration.
• Trademark Filings: Assistance in drafting and filing of trademark applications, including the tailored drafting of the description of goods and services, ensuring the correct submission of all requisite documentation.
• International Trademark/Madrid Filings: Our Firm being the only Indian Law firm on the prestigious INTERLAW Network, the IP team offers a global assistance in filing and protection of trademarks, involving the Madrid System, administered by the World Intellectual Property Organization (WIPO). This system allows trademark protection in multiple countries jurisdictions with a single application. This is flawlessly assisted with our Foreign Associates globally.
• Trademark Prosecution: IP team represent clients in all interactions with the trademark offices, including responding to office actions, attending hearings if necessary, prosecuting the trademarks, and advocating for the approval of the trademark application.
• Trademark Monitoring/Watch Services: We offer monitoring services to ensure that a client’s registered trademark is not being infringed upon. Keeping check upon the regular searches of new trademark filings, existing trademarks, trademark journal watch, and online uses.
• Trademark Enforcement: In the event of trademark infringement, we take the necessary legal actions to enforce the client’s rights. This includes sending cease and desist letters, negotiating with the infringing party, and/or initiating mediation/litigation, at Jurisdiction of desire, if necessary.
• Domain Name Complaints: UDRP (Uniform Domain-Name Dispute-Resolution Policy) Complaints & INDRP (Indian Domain Name Dispute Resolution Policy) Complaints: We represent clients in disputes over domain names that are similar to their trademarks, filing complaints under the UDRP process managed by ICANN (Internet Corporation for Assigned Names and Numbers). For clients with trademarks in India, we file complaints under the INDRP process managed by the National Internet Exchange of India.
• Trade Dress Protection- One of the crucial protections of IP, are Trade dress protection which includes advisory and step wise assistance towards product packaging, shape of goods, colour combination etc. this bolsters the overall IP protection of a product or brand.
• Copyright/Design Registration and Protection: Our IP team assists clients in registering their creative works, including literary works, music, software, designs and visual arts. We ensure compliance with copyright and design laws and help safeguard original content.
• Licensing and Agreements: We negotiate and draft licensing agreements for copyrighted materials. Whether it’s granting licenses to third parties or obtaining licenses for the client’s own use, we provide comprehensive legal guidance.
• Copyright/Design Litigation: Our IP Litigation experts contribute significantly to represent in disputes, enforcement actions, and defence against infringement claims.
• Portfolio Management/Post Registration Services: We manage intellectual property portfolios, ensuring timely renewals, monitoring potential infringements, and advising on strategic decisions.
• Fair Use and Licensing Compliance: Our team educates clients on fair use principles and helps them navigate licensing requirements to avoid legal pitfalls.
• Pre-grant opposition opinions, drafting, filing and prosecution of opposition actions;
• Post-grant opposition proceedings including but not limited to evidentiary and motion hearings before the competent authorities;
• IP Licensing Agreements: Our IP team assist in negotiating, structuring, and drafting licensing agreements for various types of IP, including patents, trademarks, and copyrights. These agreements define the terms under which one party (the licensor) grants another party (the licensee) the right to use or exploit specific IP assets.
• Royalty Monetization: We specialize in working with sellers and buyers of royalty streams, by navigating through complex structures and terms in royalty sale transactions
• Strategic Transactions: We offers our opinion and services in IP transactions during- Technology development, acquisitions, and divestitures; Collaborations, strategic alliances, and joint ventures; IP licensing for complex technological and pharmaceutical assets.; Structuring and operationalizing mergers, acquisitions, and reorganizations.; Commercial agreements (co-development, outsourcing, manufacturing, and supply); Creation of specialized IP holding companies and asset monetization strategies.; IP due diligence and risk mitigation in strategic transactions.
• Intellectual property portfolio management – We prosecute, manage and advise on trademark, design, patent and copyright portfolios with a constant check on infringing third parties.
• Monitoring- We continuously monitor IP abuse, infringement along with online market places for possible infringement, including social media.
• IP enforcement- We act on trademark, patent, copyright and design oppositions and cancellations, passing off, domain name and other enforcement actions. This process attempts to remove infringements, often by reporting infringement to regulatory bodies or law enforcement, including sending the cease-and-desist notices.
• Transactions- We advise and lead brand assignments and licensing, acquisitions and disposals, due diligence, audits and franchising, which includes drafting of relevant agreements. This also includes negotiating and drafting agreements for licensing copyrighted works, ensuring proper compensation for commercialisation purposes.
• Strategic Advice and Opinions- We advise on complex brand strategies, including brand design, commercialization and suggest proactive measure to prevent any abuse or infringement.
• Domain Name Complaints- We actively file domain name complaints both under NIXI and WIPO as a part of brand management.
• Conflict Checks/Tracking- We keep a constant on similar third-party trademarks advertised in the Trademarks Journal.
• Due Diligence- Our team conducts thorough research and analysis to identify existing/potential conflicts before undertaking new projects. We furnish thorough search and analysis services, presenting you with clear insights.
• Advised Nutanix Inc in its USD 24 Million acquisition of Minjar Inc., the maker of Botmetric, a service that provides customers with unified cost control and enhanced visibility into their workloads running into public clouds, majorly assisting with the resolution of intellectual property issues and also with drafting and negotiating certain intellectual property related agreements.
• Assisted Dr. Lal Path Labs Private Limited / Suburban Diagnostics (India) Private Limited with due diligence of brands and other intellectual properties, which formed part of the acquisition.
• Advising gold medalist Paralympic winner Mr. Devendra Jhajharia on various “life right” agreements, intellectual property assignment of such rights to parties and assisting with drafting and finalizing commercials and related agreements on a pro-bono basis.
• Represented Bisleri International Private Ltd. in a trademark infringement and passing off action against them, wherein the firm successfully prevented the grant of any adverse orders including any interim injunction orders, against the client. Thereafter, the firm also advised and assisted the client to reach a favourable settlement.
• Advised and represented ANI Technologies Pvt. Ltd. (OLA) in relation to their licensing arrangement with various third parties relating to copyright in various sound recordings which are made available on the “OLA Play” feature in the cabs operating on the client’s platform.
• Represented C. J. International who operate the hotel ‘Le Meridian’ in Delhi in a copyright infringement suit initiated by Novex, relating to the playing of songs over which Novex claimed to enjoy rights, at the hotel premises. The firm successfully assisted the client in reaching a favourable settlement with the opposite party and negotiating the terms of the license agreements.
• Advising Hero MotoCorp Limited, the world’s largest two wheeler motorcycle manufacturer headquartered in India, on their worldwide trademark portfolio which includes contentious and non-contentious matters in over 70 countries (over 1800 applications). We are also assisting them on their patent prosecution (over 120 applications) and design prosecution (over 200 applications) portfolios.
• Acting for and advising on the “007″/ “JAMES BOND”/ “ROCKY”/ “MGM” related trademarks portfolio for Metro-Goldwyn-Mayer Studios Inc. and Danjaq, LLC in India which includes both, contentious and non-contentious matters, such as filing of opposition actions against third party application for marks identical/ similar to client’s marks, in addition to prosecuting client’s trademark applications in India.
• Acting for and advising on the trademark and copyright portfolio of India’s largest seed producing company Maharashtra Hybrid Seeds Company Private Limited (popularly known as ‘Mahyco’), which includes both contentious and non-contentious matters, including trademark opposition and cancellation actions such as filing of opposition actions against third parties involved in infringement and/ or passing off of the client’s trademarks and handling their trademark prosecution matters.
• Acted for Khazanah Nasional Berhad on a deal that was structured as a combination of a primary acquisition and a secondary acquisition from some of the existing stakeholders in the Company. Intellectual Property held by Fractal was one of the driving forces of the deal. Given that several stakeholders were involved in the transaction including the leading American private equity firm, TA Associates and the Mirchandani group (promoters of the Onida group).
• Acted on anti-counterfeiting and piracy matters for various clients including Microsoft, SAP, Dassault Systemes, etc.
• Acted in strategizing and representing Columbia Sportswear Company in its action (Columbia Sportswear Company vs Aero Traders & Ors.) against misuse of a number of their trademarks by Aero Traders (owners of the “WOODLAND” brand in India). This litigation was subsequently settled with the defendants acknowledging rights in and undertaking not to use Columbia Sportswear’s trademarks.
• Representing one of India’s largest cab aggregators operating under the brand ‘OLA’ in various trademark infringement, copyright infringement and passing off actions instituted across the country.
• Representing Minor Group Plc, owners of the ‘ANANTARA’ chain of luxury resorts, in its dispute (Minor Group Plc vs Anantara Hospitality & Ors.) against an Indian hospitality company over misuse of its trade mark ‘ANANTARA’. The Firm successfully represented the client in the matter and a decree in favour of the client was passed by the trial court.
• Assisted Moser Baer India Limited in a complex, multi-million dollars, multi-jurisdictional litigation (Moser Baer India Limited vs Koninklijke Philips Electronics N.V.) across three jurisdictions involving issues of patent licensing, patent infringement, etc. This litigation has been settled.
• Advised and represented Mylan Inc., USA and its Indian subsidiary Mylan Pharmaceuticals Private Limited in an ongoing litigation involving Mylan’s breast cancer drug, against F. Hoffmann-La Roche, AG and Roche Products (India) Private Limited, involving issues of passing off and approvals of similar biologics in India.
• Advised Abbott Laboratories on its acquisition of Piramal Healthcare Limited’s healthcare solutions business. The transaction will bring Abbott Laboratories to the forefront of the Indian pharmaceutical market and is valued at USD 3.7 Billion.
• Advised Biogen Idec on data protection issues involved in the outsourcing of its email services, email archiving and data back up in servers hosted by a U.S. based safe harbor certified service provider. The Firm advised Biogen on compliance issues under the Information Technology Act and Rules as well as the data protection aspects of the law of privacy and confidence.
• Supervised the IP due diligence into the worldwide IP portfolio of Amanresorts as a part of DLF Hotel Holdings Ltd acquisition by Silverlink Holdings, a holding company of the luxury hotels and resorts under the brand Amanresorts. Amanresorts is one of the world’s premier hospitality and lifestyle businesses and currently owns and operates 22 luxury hotels, in 12 countries. The transaction valued over USD 400 Million.
• Advised Invensys on the implementation of its global data protection project involving transfer and retention of its human resource files to a third party HR service provider. The scope of the assignment included advising on Indian data protection laws.
• Advised the Ministry of Commerce on IP chapters forming a part of the Free Trade Agreements currently being negotiated with EU, Japan and EFTA countries.
• Advised Microsoft (Hong Kong) on the law relating to personal data protection in India and the legal requirements to be complied with in the event of a data breach involving personal data.
• Supervised exhaustive IP due diligence as a part of Mylan Laboratories Inc., acquisition of stake in Matrix Laboratories Limited a leading Indian manufacturer of generic pharmaceutical products. The transaction valued approximately USD 736 Million approximately.
• Drafted and negotiated IP agreements accompanying NDTV Limited, one of India’s leading news TV conglomerates, USD 150 Million stake sale joint venture with NBC Universal, Inc. of USA.
• Advised Tata Global Beverages Limited in their deal with Starbucks Corp. for setting up a joint venture in India. The deal involved drafting, vetting and negotiating of various transaction documents including the joint venture agreement, technology and trademark license agreement.
• Reviewed the Information Technology Handbook of a Japanese technology major (Toshiba) for compliance with Indian laws, including data protection laws, and advising on regulation of encryption under Indian law and confidentiality/ non-compete obligations that may be imposed on employees.