Biswajit Sarkar, Advocates - IP AttorneysAn IP Law firm with global practices
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Practice

IP Enforcement and Litigation

Acting decisively when rights are infringed, and defending clients when their own rights are challenged.

Overview

Registration has value only if it can be enforced. The firm acts in infringement and passing-off actions, rectification and cancellation proceedings, and in the pre-litigation work that often resolves a dispute before it reaches court.

Strategy is set by the commercial objective. In some matters a firm cease-and-desist letter is sufficient; in others, urgent interim relief is required to stop infringing goods reaching the market.

What we do

Services

  • Cease-and-desist noticesDemand letters and negotiated undertakings
  • Infringement and passing-off suitsCivil actions, including interim injunctions
  • Rectification and cancellationProceedings against wrongly registered rights
  • Customs recordalsBorder enforcement against counterfeit imports
  • Criminal complaintsAction against counterfeiting under the Trade Marks Act, 1999
  • Domain name disputesINDRP and UDRP complaints against cybersquatting

Our approach

How a matter progresses

The usual course of a IP enforcement and litigation matter in India, from first instructions to a final outcome.

  1. Investigation

    We gather evidence of the infringement, including test purchases, market surveys and records of first use.

  2. Notice and negotiation

    In many matters a cease-and-desist notice and a negotiated undertaking resolve the dispute without proceedings.

  3. Mediation or urgent relief

    A commercial suit is ordinarily preceded by pre-institution mediation, unless urgent interim relief is required, in which case we move the court directly.

  4. Suit and interim injunction

    We file the suit with an application for an interim injunction and, where needed, the appointment of a local commissioner to seize infringing goods.

  5. Trial, settlement and appeal

    The matter proceeds to evidence and final hearing for a permanent injunction and damages, unless it settles on terms that protect your rights.

Questions

FAQs

General information only. For advice on your circumstances, please speak to an attorney.

What is the difference between infringement and passing off?
Infringement is a statutory remedy available to the proprietor of a registered right. Passing off is a common law action that protects the goodwill of an unregistered mark against misrepresentation.
Can counterfeit imports be stopped at the border?
Yes. Right holders can record registered trade marks, copyrights, designs and geographical indications with Indian Customs, which may then suspend clearance of suspected infringing goods.

Further reading

From our blog

Articles by the firm's attorneys on IP enforcement and litigation.

All articles

Official sources

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