Intellectual Property Rights
Our law firm provides full range of Intellectual Property services including registration, maintenance, enforcement and litigation, acquisition and assignment, advisory services with respect to trade marks, copyright, designs, domain names etc., protection against counterfeiting/ parallel imports, and conducting Intellectual Property audits. Our aim is to provide a holistic approach to acquisition, protection and enforcement of Intellectual Property Rights to enable our clients to meet their commercial interests.
Our scopes of services include the following:
- Registration of trademarks, patents, designs, copyrights etc. which involves doing public search, filing application and defending any opposition, if any;
- Handling litigation related to infringement and passing off of Intellectual Property;
- Assist in drafting and negotiating agreements involving commercialisation of Intellectual Property through licensing and assignments, technology transfer, franchising, joint venture, and mergers and acquisitions, etc., co-existence agreements and non-disclosure agreements; and
- Intellectual Property Audit, which is a systematic review of the Intellectual Property assets, owned, used or acquired by a business so as to assess and manage risk, remedy problems and implement best practices in Intellectual Property asset management.
Trademarks are an essential part of the branding, advertising, and marketing strategies of a business. Trademarks symbolise the relationship of trust developed over a period of time by the manufacturer or service provider with the users and consumers. It allows consumers to identify a particular good or service with a particular business without any confusion. Trademarks can offer substantial value to a business if protected properly through registration. Advocates and Trademarks Attorneys at the law firm are fully committed to helping our clients maximize the value of their Trademarks through registration, prosecution, opposition and enforcement in India and in several other countries. The law firm assists clients with developing and managing a national and global trademark portfolio with our filing and prosecution strategies.
Our Scope of Services:
I. Filing & Registration
- Search and opinion on Availability & Registrability.
- Filing Applications in India.
- Filing Applications in foreign jurisdictions under Madrid System.
- Prosecution: Attending to Office Actions and Replying to Examination Reports.
- Attending Examination Hearings (Show-Cause Hearings) at the Trade Marks Registry.
II. Maintenance
- Docketing Renewal Deadlines & Sending Renewal Reminders to clients.
- Filing Renewal Applications.
- Filing Restoration Applications.
III. Recordal of Changes relating to Transfer of Rights
- Recordal of Assignment.
- Recordal of Merger.
- Recordal of Name and Address changes.
- Attending Post Registration Hearing at the Trade Mark Registry.
IV. Watch Service & Oppositions
- Watch the Trade Mark Journal to identify potential conflicting marks.
- Providing opinion on chances of success in an opposition proceeding.
- Drafting and Filing Notices of Opposition.
- Defending Oppositions – Drafting & Filing Counter Statements.
- Advising on Evidence & Drafting and Filing Affidavits in support of Opposition/ Application/ Evidence in Reply/ Further Evidence.
- Attending Opposition Hearing at the Trade Marks Registry & Drafting Written Arguments.
V. Cancellation/ Rectification Proceedings:
- Drafting and filing the Review Petitions/Reply at the Trade Mark Registry.
- Attending Hearing at Trade Marks Registry.
- Preparing and filing a Review Petitions/Reply at Intellectual Property Appellate Board (IPAB).
- Preparing and filling Appeal at IPAB against decision of the Registrar of Trade Marks.
- Attending Hearing at Intellectual Property Appellate Board.
VI. Litigation/Infringement:
- Advising and/or providing a written legal opinion to initiate proceedings in respect of a trademark infringement/passing –off in the Courts of India.
- Drafting & publishing Caution Notices.
- Drafting & issuing Cease & Desist Notices.
- Conducting raids and seizure of infringing products.
- Filing Suit for Infringement/ Passing off pan India.
- Initiating & defending Trademarks, Patent, Design and Copyright Infringement Litigations.
- Online market place scrutiny of a trademark infringement (E-commerce/websites).
Design rights protects the visual appearance of a product i.e. shape and configuration of a product and not the functional aspect of a product. Designs may be two-dimensional patterns, ornamentation, lines or colour and/or three-dimensional shape or configuration. Designs contribute significantly to the aesthetic appeal and differentiation of goods. Designs are crucial assets in several industries, such as, textiles, fashion, mobile consumer devices, computer software, automobiles and furnishing and decoration. Registered designs usually benefit from protection for 15 years in India as per the Design Act, 2000. The owner of a protected design may prohibit the making, selling, importing or exporting of products, incorporating or applying the design.
Our Scope of Services:
I. Registration and Prosecution:
- Application for official search of a Design.
- Filing application for registration of a Design.
- Attending to Office Action, Replying to Examination Report.
- Attending Show-Cause Hearing at the Patent Office.
II. Renewal & Maintenance:
- Docketing Renewal deadlines & sending Renewal reminders to clients.
- Filing Renewal Applications.
III. Recording of Changes relating to Transfer of Rights:
- Drafting assignment and licensing agreements for the Registered Design.
V. Cancellation/ Rectification Proceedings:
- Preparing and filing a Cancellation Petitions/Rectification Proceedings of a Design at the Patent Office.
- Attending Hearing at the Patent Office.
- Drafting & Filing Appeals before Intellectual Property Appellate Board (IPAB) against decision of Controller
- Defending Appeals & Attending Appeal Hearings
VI. Litigation/Infringement:
- Advising and/or providing a written legal opinion to initiate a legal action in respect of a Design Infringement proceeding in the Courts of India.
- Online market place scrutiny of a Design Infringement (E-commerce/websites,Trade-Shows/Fairs).
- Drafting and Issuing Cease and Desist Notice and Reply to Notice.
- Drafting, Preparing and filing a suit in case of the Design Infringement in the Courts of India.
- Attending Hearings at the Courts of India.
- Conducting raids and seizure of infringing products.
Copyright law encourages the production and protection of literary works, dramatic works, musical works, artistic works, cinematograph films and sound recording. To qualify for copyright protection, the work has to be an original creation. Copyright is automatically vested in the author or creator once the work is created. However, for a commercial benefit and enforcement of rights, it is necessary to seek copyright registration. Copyright protection gives its author or creator a diverse bundle of exclusive rights for a fixed but lengthy duration, which starts from the time of creation or fixation of the work and lasts until at 60 years after the author’s or creator’s death in India. These bundle of rights include the right of adaptation, right of reproduction, right of publication, right to make translations, communication to public etc.
Our Scope of Services:
I. Registration and Prosecution:
- Filing application for registration of the Literary, Dramatic, Musical and Artistic work, Software/Computer Program work, Cinematography and Sound Recording work.
- Attending to Office Action, Replying to Examination Report.
- Attending Show-Cause Hearing.
II. Recordal of Changes relating to Transfer of Rights:
- Drafting assignment and licensing agreements for Literary, Dramatic, Musical or Artistic, Sound Recording and Software/Computer Program, cinematograph film.
- Application for a license to republish a Literary, Dramatic, Musical or Artistic work, Cinematograph Film, Sound Recording.
III. Cancellation Proceedings:
- Preparing and filing a Cancellation Petitions/Reply at the Copyright Office/Copyright Board.
- Attending Hearing at Copyright Office/ Copyright Board.
IV. Litigation/Infringement:
- Advising and/or providing a written legal opinion to initiate a legal action in respect of a Copyright infringement proceeding in the Courts of India.
- Online market place scrutiny of a Copyright infringement (E-commerce/websites, music festivals).
- Issuing Cease and Desist Notice and Reply to Notice.
- Drafting, Preparing and filing a suit in case of the Copyright Infringement in the Courts of India.
- Attending Hearings at the Courts of India.
- Conducting raids and seizure of infringing products.
India has a strong law for the protection of a product patent which is extended to all fields of technology. Any product or a process that is new, involving an inventive step and capable of industrial application can be patented in India. However, it should not fall within the provisions of law where the said product or process is prohibited from getting patent protection by law. In India, a patent application can be filed, either alone or jointly, by the true and first inventor or his assignee.
The period of protection of a patent in India is 20 years from the date of filing the patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under the Patent Cooperative Treaty (PCT), the term of 20 years begin from the priority date of application. It is essential to note that a patentee has to renew the patent every year by paying the renewal fee, which can be paid every year or in a lump sum, the fee is very nominal. The grant of the patent for a product confers the patentee a right to prevent others from making, using, offering for sale, selling, or importing the patented product in India.
The patent practice of the law firm encompasses a fully packaged offering starting from searching, drafting, and filing of the Patent application to its prosecution followed by pre-grant and post-grant proceedings, dispute resolution, portfolio management, and renewal of patents. Our team has expertise both in technology and in patent law, which helps our client to protect their patents and stay competitive in the global and regional marketplace.
Our Scope of Services:
I. Comprehensive searching and analysis
- Conducting Prior Art Search.
- Conducting freedom to operate and clearance searches for proposed product launches.
II. Registration and Prosecution
- Drafting & Filing Patent Applications.
- Filing Patent Cooperative Treaty Applications.
- Attending to Office Action, Replying to Examination Report.
- Attending Show-Caused Hearing.
III. Oppositions and Revocations
- Conducting Search & Opinion for Pre-Grant Opposition
- Drafting & filing Pre-Grant/Post-Grant Opposition & Attending Hearings.
- Drafting & filing Patent Revocation Applications & Attending Hearings.
- Drafting & Filing Appeals before Intellectual Property Appellate Board (IPAB) against decision of Controller
- Defending Appeals & Attending Appeal Hearings.
IV. Maintainance/ Renewal
- Docketing Renewal Deadlines & Sending Renewal Reminders to clients.
- Filing Renewal Applications.
- Obtaining foreign filing license.
- Filing statement of working of a patent.
V. Patent Transactional Work
- Drafting assignment and licensing agreements for Patents.
VI. Litigation/Infringement:
- Advising and/or providing a written legal opinion to initiate a legal action in respect of infringement proceedings in the Courts of India.
- Issuing Cease and Desist Notice and Reply to Notice.
- Drafting, Preparing and filing a suit in case of Infringement in the Courts of India.
- Attending Hearings at the Courts of India.
- Conducting raids and seizure of infringing products.
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Key Deals
Successful in registering a 3 dimensional Trademark, which was amongst the firsts in registering in India.
We were amongst the first Trademark attorneys to be successful in registering a three-dimensional Trademark in India.
Successful before Intellectual Property Appellate Tribunal in defending an application for removal of our client’s Trademark for non-use.
A suit was filed against our Client for copyright infringement in a cinematographic film before the Bombay High Court. Our Client was the son of a legendary film maker. He and his brother and sister sold their share in the Plaintiff company. The Plaintiff contented that the rights of the film vests with them and the Defendant had no right to use them for his personal gain. We have successfully defended the suit and assisted the Client in amicably settling the matter. In this matter, we were able to establish that as copyright is owned by an individual, the sale of shares of the company did not lead to assignment/ transfer of copyright to the company.
Gemalto
Assisted and advised them in connection with litigation before the Courts in Delhi in relation to copyright issues under the software development agreement.
JAF Global (Holzwerkstoffe Vertyiebsholding AG)
Successfully assisted our client in getting the objections to their trademark application under the Madrid Convention cleared from the Trademark Registry Mumbai and the trademark advertised.
Successfully assisted the client in getting the trademark application accepted, published, and registered in a record timing within a period of 5 months from the date of filing of the application. Usually a period of minimum 7 to 8 months is taken by the Trademarks Registry to process a single trademark application.
Kidiliz Group, France based company
The trademark was removed from the Trademarks Register for the reason of non-renewal of the mark. The Firm made various applications to the Trademarks authorities and was successful in getting the mark restored even after the mark was removed from the Trade Mark Register for more than 2 years.
We have been managing their trademark portfolio from 2000 onwards and have been successful in registering, renewing and defending oppositions for their multiple trademarks of various renowned clothing brands of the Group.
Kidiliz Group recently acquired and merged with many smaller Parisian clothing brands, which simultaneously led to the acquisition of their Intellectual Property. The Firm assisted them in the merger process and the transfer of the IP rights of these brands to Kidiliz Group.
DOYMA GMBH & CO., German based company
The Client is in the business of Construction. We have been successful in getting registration of their trademarks in six different classes in a timely manner.
IKKS Group
The Client is in the business of fashion and apparel. We have assisted them in filing several oppositions against proposed marks advertised in the Trade Mark journal being identical to that of the brands of IKKS Group. We have successfully argued the opposition against proposed trademark applications, which have been deceptively similar and identical to that of our clients.
Jagro Pvt. Ltd., Sri Lanka based company
We manage their trademarks portfolio and have been regularly assisting them in registration and renewal of their trademarks for their products. The client is in the business of fruit jams.
GS Caltex India Limited, Indian Subsidiary of the Korean Company
We have been successful in getting their trademarks registered in a timely manner and have successfully attended to the objections raised by the Trade Mark Registry with respect to their mark being descriptive and similar to other registered marks.
Blick System India Pvt. Ltd., sister concern of a Polish Company
The Client is in the business of construction. We have been assisting them in registration of their trademarks and patents.
Chiesi Farmaceutico S.p.A.
The Client is in the field of medicine. We have been successfully assisting them in filling oppositions and sending cease and desist notice against the proprietors of deceptively similar marks. We have also been assisting them in registration and renewal of their trademarks from 1995 onwards and successfully filing and defending oppositions against deceptively similar marks.
Better for You Ventures Private Limited
Assisted our client in coming up with a new name for his new venture in supplying nutritional supplements after doing a thorough search of the Trade Mark registers, and are assisting in registeration of their trademarks.
Revergon Solutions Private Limited
The Client is in the business of ergonomic office chairs and electronic accessories for laptops and mobiles. Assisted them in registering their trademark and industrial designs for their products.
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What Our Clients Say
Mr. Allan Aranjo, Vice President, Hindustan Logistics Pvt. Ltd.
“The lawyers at K Singhania & Co. have regularly advised and represented our Company in various legal disputes, relating to recovery of dues from our customers for freight. In most of our cases, they have been successful in helping us recover our dues even before initiating litigation. We appreciate their efficient and effective dispute resolution strategies.We have been given sound legal advice with patience, care and due diligence”
Mr. Nandagiri Raghavendra Rao, Head of Finance & Controlling, Doka India Private Limited
“Our Company has been seeking legal advice from the law firm for about 8 years now. They have been regularly advising us from drafting and reviewing our commercial contracts to representing us in various commercial disputes before the Bombay High Court and National Company Law Tribunals across the country. They have been successful in getting favourable orders for us in our commercial suits and have ensured that our matters are disposed in a timely manner. They have also regularly advised us on our commercial and property matters. ”
Benchmark Litigation Reviews
“Best known for its commercial disputes, shipping and construction practices…The firm’s disputes group has specialisations in international commercial arbitration, domestic arbitration, insolvency and bankruptcy, and civil and commercial litigation. Industry sector strengths include shipping, oil and gas, construction and aviation. Offshore, the firm has an alliance with the Dubai office of Goodwins and Russian law firm, Maxima Legal.
Firm founder and managing partner Krrishan Singhania serves as the key contact for all dispute resolution work.
Mr. Krrishan Singhania provides all-in-one solutions and good communication skills.”
Mr. Pradeep Gupta, Director, Narsingh Dass & Company Pvt. Ltd.
“We had initiated criminal proceedings against the opposite party. The opposite party initiated proceedings under Section 482 of the Code of Criminal Procedure, 1973 before the Bombay High Court to quash our criminal proceedings. The Firm has been successful in defending us in the quashing proceedings and arguing that the contractual default was in fact criminal in nature and was a case of cheating. The Bombay High Court gave us an order in our favour and held that the criminal proceedings have to continue in the lower court in Daman. We appreciate the Firm’s support and expertise in helping us win this case.”
German Garnacho, Country Head India, Alsina Formwork (India) Private Limited
“The Firm has been our legal counsels from 2014 and have assisted us in incorporating our company in India under the Companies Act, 2013. They support us constantly with company secretariat services and by advising us on our legal queries arising out of our day-to-day operations. They also assist us in company law compliances and Reserve Bank of India (RBI) compliances arising out of Foreign Direct Investment (FDI), and in negotiating, drafting and executing various business agreements. The Firm’s legal support is invaluable and it is as if they are working as a part of our organisation. We highly appreciate their accessibility, prompt delivery and practical legal solutions.”
Deepak Shewani, Director Business Development Middle East & India Rematec AG/SA (IWK Group Company)
“We would like to extend our thanks to the law firm for their exceptional service when it came to protecting our intellectual property. They have assisted us in getting our trademarks registered across six different classes and did so in an efficient manner. They constantly intimate us about any conflicting trademarks and have assisted us in filing and defending oppositions. They have acted not only as our lawyers but as our business advisers. It is a pleasure working with them”.