Faces behind the marks

Ananth Sripadarao

IP Counsel

3M

Trademarks managed:

150+

Best-known trademarks:

3M; Post-it; Scotch-Brite; Littmann; Filtret

Key concerns:

Delay in registration and poor enforcement machinery are the greatest challenges we face in managing and protecting our trademarks in India.

Wish list:

• I think we should revisit all aspects of Indian trademark law and regulations in order to keep up with the fast-growing market.
• I would like to see the definition clause broadened to cover more types of marks.
• Prosecution steps need to be amended in order to expedite trademark registrations.
• Punishments and penalties for trademark-related offenses should be more severe.

Preferred law firm for IP work:

Remfry & Sagar

Shahana Basu

Global General Counsel

Amira Nature Foods

Trademarks managed:

104 in India, 855 worldwide

Best-known trademarks:

Amira

Key concerns:

Although Indian IP law is thorough and generally comparable with European IP laws, there are still significant concerns in India over IP enforcement. A major cause of concern in enforcement is bureaucratic delays, with a backlog of cases at both the civil and criminal courts. These delays result in cases running for five years or more. There is also a lack of transparency, particularly at a local level. A significant feature of India’s IP environment is the large number of small players infringing IP rights. As a result of this, seizures tend to be small, which means that a sustained and financially draining effort on the part of companies is required if any significant impact is to be made.

Wish list:

• Establish specialist patent benches in high courts to facilitate the speedy disposal of patent cases.
• Increase the training of judges in the area of intellectual property.

Preferred law firm for IP work:

• Anand and Anand
• Remfry & Sagar

A Bharathidevi

Group Legal Adviser

AVA Group

Trademarks managed:

50

Best-known trademarks:

AVA; Medimix; Divine; Playon; Sanjeevanam

Key concerns:

The database managed by the Trade Marks Registry is not up to date and hence it is difficult to ascertain the status and the ownership of brands. Long delays on the part of the Trade Marks Registry in recording assignments and processing applications is also a cause of great concern.

Wish list:

• India’s IP laws should be made more robust.
• The enforcement of IP rights should be given greater importance.
• Penalties for trademark infringement and passing off should be made more severe to deter the infringement of IP rights.

Preferred law firm for IP work:

• DePenning & DePenning
• Dua Associates
• PCN Raghupathy
• Puthran & Associates

Nupur Khanna

Corporate Legal

Bharti Group

Trademarks managed:

600

Best-known trademarks:

Airtel; Bharti; Bharti Infratel; Fieldfresh; Easy Day

Key concerns:

The major challenges faced in managing and protecting our trademark portfolio is violation by third parties through domain name registration. The general trend adopted by infringers nowadays is to register identical domain names and then charge an exorbitant price for the resale of such names. It becomes an extremely challenging and costly exercise to initiate legal action against such infringers and to monitor such infringements regularly. Also with the recent boom in the Indian app market, managing and protecting trademark infringements through third party software applications has become a big challenge and a cause of concern.

Wish list:

• The implementation of IP laws in India needs to change. For example, the Trade Marks Registry must expedite the trademark prosecution process and the courts must decide cases of infringement quickly, especially when the infringer is a fly-by-night operator, so that business losses attributed to such infringements are curtailed.

Preferred law firm for IP work:

• Vutts & Associates

Arshad Jamil

Senior Director – Intellectual Property

Biocon

Trademarks managed:

481

Best-known trademarks:

Biocon; Basalog; Insugen; Insupen; Telmisat

Key concerns:

Complying with World Intellectual Property Organization guidelines and providing details regarding international trademark registration is required.

Usage information on trademarks is not made available to the public by the Trade Marks Registry.

For pharmaceutical trademarks in class 5, the molecule name is often not available to the public alongside its corresponding trademark in the Trade Marks Register.

Wish list:

• Trademarks that are identical to the generic name of a pharmaceutical molecule should not be granted under class 5 (e.g. Paracetamol, Xenon).
• India needs to adopt national and international policies and generic drug-related policies.

Preferred law firm for IP work:

• Puthran & Associates

BK Gupta

Deputy General Manager – Legal

Dabur

Trademarks managed:

1500

Best-known trademarks:

Dabur; Vatika Shampoo; Dabur Amla Hair Oil; Dabur Hajmola; Dabur Red Toothpaste

Key concerns:

Our company was established in 1884 in a small village near Kolkata. Since then we have been taking painstaking efforts and spent hundreds of thousands of rupees on the promotion of our trademarks. The biggest challenge I face is counterfeiting. There are so many people who indulge in the manufacturing of spurious products or infringing copies of our reputed brands which affect our sales and goodwill. We use the services of expert investigating agencies to curb the menace and conduct raids against the culprits. Another challenge is stopping other companies from adopting and using marks which are identical or deceptively similar to our reputed marks.

Some people have the habit of sailing upon the reputation and goodwill of reputed trademarks of other parties. While India has sufficient laws for dealing with such violations, the implementation is not carried out in the correct manner. Furthermore, people do not have any fear or respect for the law and this encourages them to take the law into their own hands because they think that if they get caught the penalties will be light.

Wish list:

I would like to make the legal procedure for tackling counterfeiting fast and stringent so that a message is sent to culprits that nobody is above the law.

Preferred law firm for IP work:

• Inttl Advocare
• SiebenIP

Sanjit Kaur Batra

Senior Counsel & Legal Manager

DuPont

Trademarks managed:

300 in India

Best-known trademarks:

DuPont™; Pioneer®; Nomex®; Coragen®; Corian®

Key concerns:

Our biggest challenge is the enforcement of trademarks in India. It would help to have a judiciary, especially in the lower courts, which is more sensitized to intellectual property matters. Furthermore, Indian courts do not award high amounts of damages or even the cost of litigation to rights owners, even when a suit is decided in their favour. This does little to deter infringers of trademarks and also results in large sums of money being spent by trademark owners to protect and enforce their rights.

Wish list:

• India’s trademark law should be amended so that police can initiate an action on the basis of a complaint made by a rights holder without an opinion being required from the Registrar of Trade Marks. The current system, under which it is mandatory to get the opinion of the Registrar of Trade Marks before the police can initiate action on a complaint, not only delays the initiation of action, but may also result in the leaking of intelligence to the infringer.
• A system of checks and balances should be introduced by the Registrar of Companies to prevent companies that are registering their names from adopting names that are similar to existing company names or trademarks.

Preferred law firm for IP work:

• Anand and Anand
• Lakshmikumaran & Sridharan
• Lall & Sethi
• Singh & Singh

Kaizad Irani

Vice President – Legal

Entertainment
Network India

Trademarks managed:

4,485

Best-known trademarks:

Radio Mirchi It’s Hot; Mirchi Kaan Awards; Mirchi Music Awards; Mirchi Murga; Purani Jeans

Key concerns:

While the framework is in place in India’s courts and the Trade Marks Registry to protect trademarks, the time delay in reaching a decision in these venues is extraordinarily long. There is also a dearth of educated examiners in the Trade Marks Registry, as a result of which the Mirchi mark, which is owned by Entertainment Network India, has been accepted in other parties’ names.

As a broadcaster, we have faced many cyber-squatters and infringers of our trademark Radio Mirchi, either through creation of domains and/or illegally streaming our content via the internet. Most of the time the identity of the registrant is not known as web registrars protect the privacy of registrants. We often find our marks being used on social networking websites, but when we inform such websites, we receive no help from them.

Wish list:

• There should be a fixed time frame for the disposal of IP-related suits.
• The position of controller general of patents, designs and trademarks ought to be given only to a person who has good knowledge of the law and the finer aspects of intellectual property.
• The government should address IP issues relating to the internet, especially intermediary liability, takedown and blocking authority/procedures, and access to information on the owners of websites.

Preferred law firm for IP work:

• Singh & Singh
• Subramaniam Nataraj & Associates
• Tas & Co

Namita Sukhija

Senior Executive – Legal

Etechaces Marketing & Consulting

Trademarks managed:

38

Best-known trademarks:

Policybazaar.com; Paisabazaar.com; EMI Ko Banao

Key concerns:

One of the glaring concerns in the enforcement of trademark rights in India is bureaucratic delay, with a long backlog of cases pending registration. Cases can easily run for five or six years, thus exposing trademarks to the risk of being misused and infringed. Delays in trademark examination (in some cases as long as 24 months) exacerbate this problem, denting investor confidence and contributing to the already flagging ease of doing business in India.

While the higher Indian judicial authorities are familiar with issues pertaining to intellectual property, courts at lower levels are not fully cognizant of IP-related issues. This seriously impacts brand owners’ rights at the time of their enforcement.

Wish list:

• With a view to making Indian trademark law more robust, there is an undeniable need to refashion the laws, rules and regulations presently existing on the subject. The entire process should not only be made time-bound at the administrative level, but also at the judicial level.
• There should also be new rules and regulations to generate good investigative efforts and coordinated actions among investigation agencies to address counterfeiting and trademark infringement issues. This would provide an effective remedy for brand owners and may emerge as an alternative to agitating lawsuits before judicial forums.

Preferred law firm for IP work:

• K&S Partners
• Kochhar & Co
• Mason & Associates
• Obhan & Associates
• SS Rana & Co

Puja Tiwari

Manager Legal – International Business Division

Godfrey Phillips

Trademarks managed:

12

Best-known trademarks:

Symphony; Jaisalmer; B&B (Bulls & Bears); Originals International; Black Jack

Key concerns:

The greatest challenge in protecting our trademarks in India is the long time lag between filing for a mark and getting the actual registration. In the interim, if the brand has good potential, it is sometimes picked up by opportunists in various countries. Defending the mark is difficult if the registration in the home country is not completed.

Wish list:

• The backlog in the Trade Marks Registry needs to be addressed as a priority. More training programmes for Registry staff are needed.
• Steps need to be taken to address the rudimentary level of computerization that presently exists at the Trade Marks Registry and enable online transactions which are quick and transparent.
• Some effort needs to be made to bring down the time lag between the filing and granting of registration certificates by the registry. This is important in light of the Madrid Protocol. Since international applications are filed on the basis of the Indian application, if the international applications come through while the Indian application is pending, the status of the trademark is uncertain.
• Also there should be some way of fast-tracking the grant of registration for new improvisations made in labels of a brand by the registered trademark owner.

Preferred law firm for IP work:

• Anand and Anand
• Lakshmikumaran & Sridharan
• Lall Lahiri & Sahrotra
• LexOrbis

Mandar Chandrachud

General Manager – Head of IP

Godrej Industries

Trademarks managed:

1,000 in India, 3,000 internationally

Best-known trademarks:

Godrej; Goodknight; Cinthol; Expert; Hit

Key concerns:

In India, once your trademark application is opposed, it takes years to get the brand registered and hence a major challenge is to expedite the opposition proceedings. Furthermore, trademark examination reports are uploaded online without informing the applicant. This makes the applicant’s job very difficult as he or she needs to regularly check the status of the applications in order to respond within the prescribed period of time. Failure to do this results in applications being abandoned.

Wish list:

• The proceedings before the Intellectual Property Appellate Board need to be expedited because currently it can take years to decide the validity of a trademark.
• I would like to see the provisions of section 115(4), which deals with the authority of police officers to search for and seize equipment used in the manufacture of counterfeit goods, deleted from the Trade Marks Act, 1999.
• The Trade Marks Registry’s list of well-known trademarks needs to be updated more frequently.

Preferred law firm for IP work:

• Anand and Anand
• GroverLaw
• Inttl Advocare
• RK Dewan & Co
• WS Kane & Co

Harsh Aggarwal

Assistant General Manager – Legal

Havells Sylvania Group

Trademarks managed:

150 in India, 1,800 internationally

Best-known trademarks:

Havells; Sylvania; Crabtree; Standard; QRG

Key concerns:

The longstanding problem of counterfeit goods has spread its wings to online platforms. Infringers are offering pirated goods on e-commerce portals and there are no quick methods for getting such listings removed. E-commerce portals require trademark owners to follow lengthy procedures for “take downs” and have no mechanism for preventing repeat listings.

Another challenge is the growing tendency of police authorities not to invoke the more stringent sections of the Indian Penal Code in first information reports pertaining to infringement. This approach takes away the deterrent effect which a higher-punishment offence would otherwise have.

Wish list:

• Provide special training to police personnel for dealing with cases of trademark infringement so that they become conversant with, and sensitive to, IP laws.
• There should be differences in the severity of punishment for infringers depending on the nature of the goods involved. For example, infringement of a luxury brand should not be dealt with in the same way as the infringement of medicine or electrical goods like wires or miniature circuit breakers.
• Processes at the Trade Marks Registry need to be streamlined to permit the rapid disposal of matters.

Preferred law firm for IP work:

• Anand and Anand
• Lall & Sethi
• RNA
• Singh & Singh

Jayant Deshpande

Legal Counsel – IP

Hindustan Unilever

Trademarks managed:

50

Best-known trademarks:

Dove; Fair & Lovely; Lifebuoy; Lakmé; Active Wheel

Key concerns:

Given the frequent product launches in the fast-moving consumer goods sector, the greatest challenge faced is in assessing the results of trademark searches. The slow pace of the registration process, coupled with slow post registration changes, such as the recording of assignments, renewals, document management, and pendency in opposition are key concerns for trademark protection.

In a recent pronouncement, the Intellectual Property Appellate Board has been declared unconstitutional by Madras High Court. This development will open up a whole range of new issues for trademark owners.

Wish list:

• Section 115(4) of the Trade Marks Act states that the police must take an opinion from the Trade Marks Registry before taking action in the case of infringements. This defeats effective enforcement. Section 115 of the act should be dropped.
• Whether India’s Trade Marks Act follows the principle of national exhaustion or international exhaustion in trademarks is a question pending before the Supreme Court of India in a case filed by Samsung which is expected to be heard before the summer vacation of 2015. Clarity in this matter will be very welcome.
• In order to protect well-known trademarks, new rules are required to prevent dilution and distortion.

Preferred law firm for IP work:

• Anand and Anand
• AZB & Partners
• Crawford Bayley & Co
• WS Kane & Co

Beena Achan L

Manager – Legal

HLL Lifecare Limited
(A Government of
India Enterprise)

Trademarks managed:

270 in India, 87 internationally

Best-known trademarks:

Moods; Donato; Herbs & Berries; HL-Haemopack; HLL Lifecare Limited

Key concerns:

The Indian intellectual property system has robust laws, but it lacks an effective administrative and enforcement system. The huge backlog of files in the Trade Marks Registry and delays in examination, registration, opposition hearings and the recording of assignments poses a huge challenge. IP enforcement also presents a major challenge to protection of IP rights in India as there is a long time lag from when an IP case enters the court system until it is concluded.

Wish list:

• Provisions to enable more effective enforcement of IP rights.
• Sensitization of enforcement officials, proper training for customs officials for effective prevention strategies for counterfeit and pirated products.
• The establishment of more specialized IP courts, mediation centres and other alternative dispute resolution systems for IP rights enforcement.

Preferred law firm for IP work:

• Bagya Raghavan
• Kamath & Kamath
• Kurian & Kurian
• Puthran & Associates

Anupam Sinha

Senior Officer – Legal

HSIL

Trademarks managed:

80

Best-known trademarks:

Hindware; Hindware Art; Hindware Italian Collection; QUEO; Benelave

Key concerns:

The most challenging and frustrating issue is that there is a long list of items pending before the Trade Marks Registry. Of all the delays one faces, the most damaging issue is the condition of opposed trademarks. It takes three to four years to register a trademark without any opposition. If your mark is opposed, it virtually becomes the property of the registry’s files.

In addition, a large part of the lower judiciary lacks any basic conceptual knowledge of intellectual property laws. Cases are frequently delayed because judges want to linger on matters and pass the buck.

Wish list:

• The Trade Marks Registry needs to be equipped with adequate and well trained human resources.
• Cases of trademark opposition need to be decided within a time-bound manner.
• When a trademark is opposed and the Registry certifies that the balance of convenience is in favour of the applicant, the applicant should have the right to file cases against mala fide users of the mark.
• Judicial officials, particularly at lower levels of the judiciary, must be given formal training on the fundamental concepts of intellectual property law.
• The interplay between the trademark laws and competition law in India has recently raised several difficult issues which must be clarified.

Preferred law firm for IP work:

• Anand and Anand
• KG Bansal & Company
• Khaitan & Co
• SiebenIP

Ashish Chandra

General Counsel

Jasper Infotech

Trademarks managed:

40

Best-known trademarks:

Snapdeal

Key concerns:

The greatest challenge in managing and protecting trademarks in India remains the slow pace of the Indian Trade Marks Registry. While it has certainly made efforts to speed up its internal procedures, much remains to be done. Today the life cycle of a brand is quite short and businesses are continually reinventing their brands, logos and marks. Therefore it is imperative that the Trade Marks Registry creates a swifter and more effective process for the successful registration of trademarks.

Additionally, the introduction of new generic top-level domain names and country code top-level domain names is creating new challenges. Cyber-squatting and bad faith registrations are on the rise and a faster mechanism is required to address such issues and protect the interests of brand owners.

Wish list:

• Clarity in the existing provisions of the Trade Marks Act with respect to principles of exhaustion (national) and the right of the brand owners to control resale of products is something which would be welcomed.
• I would like to see amendments to the trademark and copyright laws to ensure that the freedom of people to sell legitimate goods is not curtailed.
• The practices of the Trade Marks Registry should be reformed so that the process of trademark registration is smoother and faster.

Preferred law firm for IP work:

• Saikrishna & Associates
• Singh & Singh
• TMT Law Practice

Ekta Sarin

Legal Manager

Marico

Trademarks managed:

1,000

Best-known trademarks:

Saffola; Parachute/Parachute Advansed; Livon; Set Wet; Nihar

Key concerns:

One of the greatest impediments to in-house IP counsel is enforcing trademark rights under the Trade Marks Act. The requirement of obtaining a search/clearance from the Trade Marks Registry prior to initiating a criminal action makes it virtually impossible to conduct criminal actions in an expeditious manner.

Secondly, there is a lack of synergy between the Registrar of Companies and the Trade Marks Registry. Moreover, while deciding complaints under section 16 of the Companies Act, the Registrar of Companies does not consider all aspects of section 29 of the Trade Marks Act.

Wish list:

• Changes to the Trade Marks Act to facilitate the expeditious enforcement of rights.
• Better examination of marks by the Trade Marks Registry.

Preferred law firm for IP work:

• Lall & Sethi
• Lall Lahiri & Salhotra
• ZeusIP

Vipin Aggarwal

Senior Attorney & Director of Intellectual Property,
Legal & Corporate Affairs

Microsoft

Trademarks managed:

400+

Best-known trademarks:

Microsoft; Windows; Office; Skype; Xbox

Key concerns:

Microsoft spends a considerable amount of resources protecting its brand. One of the biggest challenges is the monitoring of our brands on the internet. Several challenges have cropped up in recent times which could be considered to be new forms of infringement, such as infringement on the internet, including domain names, social media, etc., availability of non-genuine products, bad-faith trademark registrations, along with the use of international trademarks of Microsoft which have not yet been put to use in India. Our enforcement work was made easier recently when Microsoft was declared a well-known trademark in India.

Wish list:

• With the number of trademark filings increasing, we can see that the Trade Marks Registry is struggling to adhere to the time frames prescribed in the rules that accompany the Trade Marks Act. This creates procedural delays and a slowdown in the functioning of the registry due to the over-reliance on a limited number of officials. We encourage the Trade Marks Registry to hire and train more staff to facilitate the timely examination of applications and disposal of long-pending opposition proceedings.
• We would also encourage the cultivation of a damages culture in India, where damages awarded by courts would be commensurate with the value of the trademark that was infringed. This will encourage broader respect for the Trade Marks Act.

Preferred law firm for IP work:

• Anand and Anand
• Saikrishna & Associates

Amit Thukral

Assistant General Counsel, India Region

Monsanto

Trademarks managed:

30+

Best-known trademarks:

Bollgard, Deltapine, Delkab, Seminis, Roundup

Key concerns:

I think managing and protecting trademarks in India is fairly efficient for large organizations. However, organizations which operate in rural or semi-urban markets are often challenged by fly-by-night operators who opportunistically seek to abuse the reputation and goodwill of someone else’s registered or unregistered trademarks. The dynamics of seeking protection in the hinterlands against fly-by-night infringers is one of the biggest challenges faced by most organizations.

Wish list:

• With respect to the environment for IP protection and enforcement in India, the draft National IPR Policy recommends the establishment of a centralized multi-agency task force to coordinate enforcement, create a database of known IP offenders and examine the implications of jurisdictional difficulties among enforcement authorities. It will be great to see this recommendation getting accepted and implemented.

Preferred law firm for IP work:

• Lall & Sethi
• Remfry & Sagar
• Singh & Singh

Ritesh Khosla

Vice President – Legal

Multi Screen Media
(Sony Entertainment Network)

Trademarks managed:

300+

Best-known trademarks:

Sony MSM Network; MSM Motion Pictures; Boogie Woogie; Taarak Mehta; CID

Key concerns:

One of the challenges I face is the tendency of my colleagues in the programming and marketing teams to come up with descriptive marks as the names of TV programmes. I have to convince them to make certain adjustments to the mark and to create labels and logos that can be protected. Where logos or labels are not possible, we have to work tirelessly to ensure that certain elements are incorporated into the proposed mark to ensure that it has a certain degree of distinctiveness.

On the protection side, people in smaller cities and towns of India are ignorant about trademark laws. I have dealt with numerous cases where people have adopted the names of popular television programmes as their brand names to ride on the goodwill of such popular trademarks. So continuous vigilance, filing of oppositions and prosecution, cease and desist letters and litigation are cardinal tenets of an effective in-house strategy to ensure that marks are protected.

Wish list:

• The quality of examination of proposed trademarks by the Indian Trade Marks Registry is deplorable and must be improved to pave the way for distinctive and non-conflicting marks to get registered without unnecessary delays caused by unsubstantiated objections.

Preferred law firm for IP work:

• Anand and Anand
• Obhan & Associates
• Saikrishna & Associates

Adinarayana Madineedi

Company Secretary & Vice President
(Legal & Corporate Affairs)

Natco Pharma

Trademarks managed:

90

Best-known trademarks:

Veenat; Geftinat; Erlonat; Sorafenat; Bortenat

Key concerns:

We are facing difficulties in getting our trademarks registered at a fast pace and we are not always able to complete the procedural aspects ahead of the launch of a product. Sometimes it takes several years to go through the registration process.

Wish list:

• The government needs to promote awareness of the use of trademarks and the need for protecting them. It is the government’s responsibility to make the public understand why companies, both large and small, make a significant investment to develop, promote and protect their trademarks.
• Vigilance and policing should be stepped up to stop infringers enjoying profits illegally.
• Substantial criminal and civil penalties should be levied against those who intentionally traffic in counterfeit goods or goods bearing counterfeit marks.
• Dilution (the unauthorized use of a famous mark by another in a manner that tends to blur the mark’s distinctiveness or tarnish its image) should not be allowed at any cost, even if it does not create a likelihood of confusion.
• Faster decisions in infringement cases would provide better protection and help clamp down on marks that deliberately confuse or deceive.

Preferred law firm for IP work:

• K&S Partners
• Rajeshwari & Associates
• S Majumdar & Co

Namrata Saikia

Senior Manager – Legal

PepsiCo

Trademarks managed:

460

Best-known trademarks:

Kurkure; Lay’s; Pepsi; Mountain Dew; 7 UP

Key concerns:

The process of registering a trademark is time consuming and pedantic. In a number of instances, we witnessed similar marks being cited as objections by the Registry, despite clear online searches. Furthermore, the granting of registrations to descriptive/generic marks paves the way for litigations.

With regards to the appointment of local commissioners for the seizure of infringing goods, the process is ineffective, both in terms of time and cost. By the time the local commissioner reaches the location, the infringing goods are either hidden or removed. Therefore, this process needs to be remodelled to be made more effective. In the case of enforcement through criminal actions, police officers are required to seek prior permission from the Registrar of Trade Marks, for every case. This prevents effective and swift criminal enforcement actions.

Wish list:

• The concept of a well-known mark needs to be respected and practised in courts in its true spirit. We have well-known mark status for some of our marks, but are still required to prove our case with documentary evidence in an infringement suit. Mere grant of the status is of no meaning unless it deters others from using similar marks.
• There is a need to introduce a government functionary like an ombudsman, specialized in intellectual property, to handle infringement and counterfeit issues in all sectors.

Preferred law firm for IP work:

• K&S Partners
• Singh & Singh

Sarita Joglekar

IP Counsel

Reliance Industries

Trademarks managed:

8,000

Best-known trademarks:

Reliance; the R logo; Mumbai Indians; Recron; JIO

Key concerns:

The primary challenge is the slow pace of the registration of marks. Given the pendency and backlog of applications at the Trade Marks Registry, applications are generally held up at the pre-grant hearing stage for months, sometimes years. Unlike trademark applications filed under the Madrid Protocol, applications by Indian entities have no fixed timeline for prosecution. It could take anything from three to five years. This delay is because the workforce at Trade Marks Registry has not been increased, despite the ever-increasing number of trademark applications.

A second challenge is the low level of awareness among the judiciary, especially in district courts, about the dangers faced by consumers who are tricked into purchasing spurious products.

Wish list:

• I often notice that trademark applicants, mostly unscrupulous traders who copy a mark of another entity, continue to use the mark in the course of trade, even if the application has been refused by the registrar or if the applicant has abandoned the application following an opposition. This should be made a punishable offence.
• Rule 38(1) of the Trade Marks Rules, 2002, allows an applicant to expedite the examination of a mark. This philosophy should be extended and the rules should be changed to allow the applicant an option of expediting the entire process of prosecution, subject, of course, to the mark not being rejected by the registrar at the examination stage.

Preferred law firm for IP work:

• Anand and Anand
• Jehangir Gulabbhai & Bilimoria & Daruwalla
• RK Dewan & Co

Gautam Bakshi

Head & Deputy General Manager –
Corporate IP & Project Management

Sentiss Pharma

Trademarks managed:

125

Best-known trademarks:

Activision; Kitmox Unit Dose; Megacom; Navibrom; Onteras Geldrops Unit Drops

Key concerns:

The greatest challenge is the enforcement of trademarks in India in the case of infringements. The process is tedious and time consuming.

Wish list:

• Special courts should be set up to deal with IP issues, such as the protection and management of IP and related issues, especially pertaining to trademark infringement and invalidation suits.
• The time taken for the prosecution and subsequent registration and grant of the trademark should be shortened.
• The statement of use requirements should be critically defined.

Preferred law firm for IP work:

• K&S Partners
• Rajeshwari & Associates
• Subramaniam Nataraj & Associates
• Sushant M Singh & Associates