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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 Notices
A cease-and-desist notice is usually the least expensive way to find out whether the other side will back down when a brand, piece of content or invention is being copied. We draft the notice to state your rights, explain what the other party is doing and set a date for compliance. If they agree to stop, we record it in a signed undertaking. If they do not, the same file becomes the basis for a suit.
Infringement and Passing-Off Suits
A registered trade mark, copyright, design or patent can be enforced through a suit for infringement. An unregistered name with goodwill can be protected through passing off, which rests on reputation, misrepresentation and damage. We act for plaintiffs and defendants before the Commercial Courts and High Courts of India and, in urgent cases, apply first for an interim injunction to take infringing goods off sale before trial.
Rectification and Cancellation
Registration does not always mean ownership. A mark or design may have been registered by someone who copied it, never used it or filed in bad faith. We bring rectification proceedings for trade marks and cancellation proceedings for designs to remove such entries, and we defend registered owners when a rival challenges their registration.
Customs Recordals
Counterfeits are often easier to stop at the port than in the market. Once your registered rights are recorded with Indian Customs, officers know what to look for and can suspend clearance of suspect consignments. We prepare the recordal under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 and handle the follow-up when goods are held.
Criminal Complaints
Under Sections 103 to 105 of the Trade Marks Act, 1999, it is an offence to falsify a trade mark or to sell goods bearing a false trade mark. A criminal complaint can lead to a police raid, seizure of stock and prosecution. We draft and pursue these complaints against counterfeiters, often alongside a civil suit for damages.
Domain Name Disputes
A cybersquatter registers a name that looks like yours and either waits or uses it to divert your customers. For .in domains we file under the INDRP, and for .com and other generic domains under the UDRP. In both, the usual remedy we seek is transfer of the domain to the rightful brand owner, though cancellation is also available.
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.
Investigation
We gather evidence of the infringement, including test purchases, market surveys and records of first use.
Notice and negotiation
In many matters a cease-and-desist notice and a negotiated undertaking resolve the dispute without proceedings.
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.
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.
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?
Can counterfeit imports be stopped at the border?
Further reading
From our blog
Articles by the firm's attorneys on IP enforcement and litigation.
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