Areas of Practice In Intellectual Property Law
Trademark is a form of intellectual property protection granted under the Indian Trademarks Act, 1999. A Trade Mark refers to a distinctive sign which identifies certain goods or services as those produced or provided by an individual or an entity. A Trade Mark may be anything from a name, word, phrase, symbol, logo, design or a combination of these elements. The Indian Trade Marks Law also recognizes un-conventional trademarks such as three dimensional marks (3D), shape marks, sound marks, colour marks.
- Trademark searches and trademark clearance prior to filing an application.
- Trademark filing, prosecution of the application through registration
- Post Registration support and Renewal activities
- IP Enforcement activities
- IP Litigation
- Trademark Watch Service
- Complementary monthly status reports
We conduct availability and common law searches for marks in the TM Office database, Ministry of Corporate Affairs (MCA) database, online investigations, market surveys, local directories, International Non-proprietary Names (INNs) and INN stems, etc. prior to filing application for registration of a trademark and provide comprehensive clearance reports to our clients.
We also providing search and clearance opinions in respect of the availability for use, exclusive use and registration of trade-dress, trade-names, company names, domain names, MCA database search and online investigation.
Why is it advisable ?
It determines the existence of objectionable marks already on the Register. Such marks are (i) marks similar to the proposed mark (ii) Marks confusingly or deceptively similar to proposed mark (iii) Marks phonetically similar to the proposed mark. Moreover, conducting a clearance search mitigates the chances of future objections from Trademark Registry, suit for infringement and opposition proceedings.
B. Trademark Filing, prosecution of the Application through Registration
We assist clients in filing through registration of trademarks and prosecution thereof including preparing responses to office actions (viz. Responses to Examination Reports etc.), attending hearings, recordals, assignments etc.
Note: While filing the applications, we use the new comprehensive e-filing mechanism introduced by the Trademark Registry, which enables online filing of trademarks and facilitates the entry of the requisite particulars along with the uploading of requisite documents online. This method helps in fast uploading of documents at the TM Office records and faster processing of our application.
C. IP Oppositions and Cancellations
We represent clients in several contentious and non-contentious proceedings such as oppositions, cancellations and rectification actions before Registrar (TM) as well as before IPAB (Intellectual Property Appellate Board).
D.Post Registration support and Renewal Activities
Once the mark has attained registration for a period of 10 years from the date of filing the application, we undertake post registration activities such as procuring the Registration certificate from the TM office, recordal of assignments, correction of clerical errors (if any) in the registration certificate, responding to Office actions, undertaking renewal of the mark, undertaking restoration of the mark (if the mark has been removed from the Register of Trademarks).
E.IP Enforcement Activities
1. We assist and advice clients in undertaking diligent and strategic enforcement actions which include sending strong legal notices (cease-and-desist cum demand letters) and conducting negotiations.
2. We undertake on-site investigations to ascertain the nature and extent of infringement and the also the status of developments during negotiations.
3. We devise strong enforcement strategies for the clients in respect of particular marks as well as for a set of marks or the entire portfolios, which includes, conducting periodic searches for infringing applications/registrations, etc.
4. Our trademarks enforcement strategy also takes into account the enforcement of our client’s trade-dress, company name, trade-names and domain names and we closely monitor and watch the infringing marks, names and domain names of third parties for suitable actions in respect thereof.
F. IP Litigation
We advise and assist our clients in exploring and achieving quick, cost efficient and result-oriented legal strategies and courses of legal action to suit client requirements in its trademark litigations involving infringement, passing off, unfair competition, declaration, damages, injunction, civil and criminal remedies against counterfeit goods, etc.
We also advise and assist our clients in alternative dispute resolution such as though mediation, arbitration, counselling, negotiations, etc.
G. Trademark Watch Service
We understand the importance of a Trademark to a business. It is the most valuable IP asset of a business as it commands tremendous goodwill and reputation. To protect it from being infringed by any third party, our trademark watch service helps in tracking existing and potential trademarks which can be detrimental to the trademark’s reputation.
H. Complementary monthly status reports:
To keep our client updated with every development of their trademark application(s), we also provide a consolidated monthly status report at no extra cost.
Trademark Laws - Rishab Jain , Apeksha Jain and Naman Jain.