Practice Area
Intellectual Property
Trademark and copyright transactions, licensing and intellectual property audits.
The Practice
Intellectual property is the set of legal rights over creations and brands, mainly trademarks, copyright, designs and patents. This practice structures the assignment, transfer and licensing of trademarks and copyright, together with the commercial agreements built on them, and audits a company's IP. Applicants outside India are advised through the Firm's trademark desk.
The Firm structures assignments, transfers and licences of trademarks and copyright, together with the commercial agreements founded upon them. Applicants outside India are advised through the Firm’s trademark desk.
How It Works
How the law works
A trademark in India is protected by registration under the Trade Marks Act, 1999, for ten years at a time, renewable, and by the common law of passing off for marks that have goodwill from use. An application is examined, published in the Trade Marks Journal for opposition, and, if no one opposes successfully, registered. The proprietor of a registered mark may assign it with or without the goodwill of the business, and the assignment is recorded at the Trade Marks Registry.
Copyright arises automatically on creation of an original work under the Copyright Act, 1957. An assignment of copyright must be in writing and signed. If the agreement does not state the duration, it is taken to be five years, and if it does not state the territory, it is taken to extend to India. These default rules often surprise clients, so an assignment needs to say clearly what is assigned, for how long and where (Section 19).
How an engagement runs
- Audit: what IP the company has, who owns it and whether the registrations are in the right name.
- Documents: assignments, licences, royalty, revenue-share, endorsement and sponsorship agreements.
- Registration and disputes: filing, prosecution and oppositions, through the trademark desk.
Scope of Work
Areas of Advice and Representation
- 01Assignment, transfer and licensing of trademarks and copyright
- 02Revenue-sharing, royalty, endorsement and sponsorship agreements
- 03Intellectual property audits for companies
- 04Trademark filing, prosecution and oppositions (through the trademark desk)
Questions
Questions and Answers
- Do I need to register a trademark in India?
- It is not mandatory, but registration gives a statutory right to sue for infringement and is strong evidence of ownership. Unregistered marks can be protected through passing off, but proof of use and reputation is needed.
- How long does a trademark registration last?
- Ten years from the date of application, renewable for further periods of ten years.
- How long do I have to respond to an examination report?
- One month from the date of the report is the deadline for filing a response under the Trade Marks Rules, 2017, so applicants should act promptly.
- What must a copyright assignment say?
- It must be in writing and signed, and should state the work, the rights assigned, the duration and the territory. If duration or territory are left out, the defaults in Section 19 apply.
- Can a foreign company file a trademark in India?
- Yes, directly or by designating India under the Madrid Protocol. The Firm's trademark desk advises foreign applicants and their counsel.
