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Intellectual Property


Archer & Angel’s intellectual property team advises both domestic and international businesses on a wide variety of legal issues affecting intellectual property, including prosecution of applications for trademark, patent, design, and copyright registration; management of portfolios; domain disputes; investigations; enforcement; custom registration of brand names; assignment of IP, Alternate Dispute Resolution (Arbitration and Mediation proceedings) etc. We also advise on technology transfer, licensing, trade secrets, unfair competition, entertainment, cyber laws and franchising with a particular emphasis on cross border transactions. The IP team works closely with our transactional lawyers on the intersection of IP and corporate issues.

An overview of our Firm’s practice is below –

PROSECUTION- TRADEMARKS / PATENTS / DESIGN / COPYRIGHT

Prosecution of trademarks, patents, design and copyright are dealt with by separate teams within the Firms’ IP department.

The Firm’s prosecution team handles multiple portfolios of clients and has the professional bandwidth and knowledge to advise and guide larger corporations on various facets of IP. The team follows an aggressive and systematic plan from filing an application till securing registration. Follow ups with the Registries are taken on a periodic basis by attorneys for moving the applications forward, which is very essential given Indian conditions.

Respective teams also advise on registrability of IPs, contentious and complex issues relating to oppositions, defending of objections by the Registrars / Controllers; issues involving overlapping of IPs etc. The Firm has been successfully securing registrations for complex IPs and defending critical oppositions.

The teams are maven in advising and undertaking assignment of IP; licensing of IP; non-use cancellation matters involving trademarks; removal of rival registered trademarks from the register; disputes pertaining to concurrent use of rival trademarks; due diligence of IP prior to acquisition.

The Firm represents several Fortune 100 and Fortune 500 companies for protection and enforcement of their IPRs.

INVESTIGATIONS, RAIDS AND ENFORCEMENT

Litigation being a cost incurring and cumbersome process in India, the Firm’s first line of recommended action is an attempt to achieve favorable results by means of Cease & Desist Notice / Demand Notice / Legal Notice. Attorneys undertake relevant researches on the nature of infringement / passing off and issues such Notices of adequate strength accordingly. The Firm takes pride in successfully closing disputes based on such notices.

The Firm has a potent practice of safeguarding Intellectual Property of right holders by taking enforcement action against infringers for infringement / passing off / sale of counterfeit goods and piracy. Investigation and raids are strategized with surgical precision. The Firm has adequate bandwidth to conduct investigations; organize and undertake raids and enforcement thereof through court and police action. For complex investigations, the Firm collaborates with third party investigators who have carved a domain for such expertise.

Each raid is accompanied by our proficient attorneys having excellent field knowledge, grasp of local rules / procedures and shares a professional rapport with local Government authorities. Our attorneys also collaborate with court appointed officials / police for pre raid briefs and with the help of the firm’s administrative team arrange necessary logistics. During raid process, our team further assists government authorities in preparing inventories and ensures that all legally required documentation is complete in all respect to avoid unwarranted objections and defense from the Court and infringer respectively.

Our team takes pride for successful enforcement actions for various well known trademarks and brands.

The team also advises on issues relating to parallel imports; exhaustion of IP rights etc and under requests from clients, the team also speaks and trains client’s employees for identification of counterfeit goods; measures to be taken for protection of brand names/ trademarks / counterfeiting / piracy.

BORDER PROTECTION OF BRANDS

The Firm’s trademark prosecution team is extensively involved in securing registration of brands with the Indian Customs for border protection. In addition to securing registrations, the Firm’s attorneys also work closely with the Custom’s authorities for identification, seizure and confiscation of counterfeit goods which are imported into India and subsequent proceedings with Indian courts.

The Firm’s border protection practice covers all ports of India.

LITIGATION AND ALTERNATE DISPUTE RESOLUTION

The Firm has a dedicated Litigation team which works closely with IP prosecution groups. The team is sufficiently educated with local practices across the country. The Firm has successfully secured favorable court orders for infringement / passing off of IP including qua timet actions as well. For the purpose of research and preparation of arguments in court actions, our attorneys take help of state of the art case law databases.

As far as Alternate Dispute Resolution is concerned, our attorneys have commendable experience in attending arbitration and mediation proceedings which are either directed by courts or followed on account of contractual terms between rival parties with respect to IP disputes.

Our Firm has a 100% success rate in securing favorable orders under UDRP and INDRP (for India specific domain extensions) Arbitration proceedings in domain disputes.

SAARC AND SOUTH EAST ASIAN COUNTRIES

The Firm has adequate strength and a close network of associates for undertaking all IP related work including but not limited to prosecution of registration, opposition, investigations, raids and enforcement, advisory, licensing, litigation etc. in SAARC and South East Asian Countries.

Our attorneys have adequate skill to speak the local language in these countries and understanding of local customs, which helps in undertaking and successful completion of work in timely manner without compromising quality.

SUCCESS STORIES

Since its inception, the Firm has been creating success stories of IP protection and enforcement for their clients. The list is never ending and for sake of brevity, we are representing below few matters for which we have earned laurels. I request you to refer to the web link – www.archerangel.com for a glance in detail of what the Firm has achieved so far.

  • Successfully obtained an injunction (Qua timet action) for a large US Chinese restaurant chain in Indian court against an Indian infringer which was attempting to prevent the US company from setting up outlets in India;
  • Represented a globally reputed entertainment company in a dispute with its Indian licensee post termination of agreement, including proceedings before trial court to restrain the licensee from using the trademarks and exhibiting artifacts and also pursuing arbitration under Indian law in Singapore for contractual breach;
  • Successfully advised an American corporate giant in information technology sector to protect their industrial designs including critical advisory on overlapping of IP rights;
  • Successfully advised an American corporate giant in information technology sector for assignment of trademarks involving multiple Trademarks Registries during a major spin off. The work had multifaceted dimensions and required in depth knowledge of law and perseverance as it required regular interaction with multiple trade mark registries;
  • Successfully advising and enforcing IP rights of one of the world’s largest group of restaurant chain headquartered in USA.
  • Successfully defended a South East Asian company in a patent and trade mark infringement suit filed by an US corporation in connection with distribution of products in the Indian market.
  • Has 100% success rate in domain dispute cases involving India specific extensions (INDRP). The Firm also has similar success stories involving UDRP proceedings.