Area of work ยท V
Trademark & IP
Brand protection, trademark registration, objections and oppositions, and assignment and licensing of intellectual property.
A name, a logo or a body of original work is often among the most valuable assets of a business, and yet its protection is frequently left incomplete until a dispute arises. This area of work is about securing intellectual property properly and defending it when it is challenged.
Where this arises
- Choosing and clearing a brand name before launch.
- Applying for registration of a trademark in India.
- Receiving an examination report or objection from the Registry.
- Opposing another person’s application, or defending an opposition to one’s own.
- Transferring or licensing a mark between founders, group companies and third parties.
What the work involves
Availability and similarity searches; filing in the correct classes with an accurate description of goods and services; replies to examination reports; evidence and submissions in opposition and rectification proceedings; assignment and licence documents; renewal of registrations, which are valid for ten years at a time; and the allocation of ownership of copyright and other rights in works created by employees and contractors.
Points that are often missed
- The mark is sometimes filed in the founder’s personal name while the business is run by a company, which complicates later transfers and funding.
- Protection is territorial. A registration in India does not protect the mark elsewhere.
- A narrow description of goods or services, or a wrong class, can leave the real business unprotected.
- Timelines in trademark proceedings are short, and a missed date can end an application.
- Unregistered use gives only limited remedies, and they are harder to prove.