What led you to establish Inttl Advocare and what tips would you offer anyone considering setting up their own firm?
I always had a vision of an inclusive and professionally managed law firm, with a true passion for intellectual property. Inttl Advocare is the result and I am extremely proud that it is one of the leading IP firms in India, with a team of more than 100 people. Our clients, partners and team have supported me every step of the journey.
To anyone considering setting up a firm, my advice would be to invest time and effort in people, as they are your biggest support system. A team aligned with your vision pools all its energy to make things happen and creates bandwidth that can service global mandates and portfolios.
To become a trusted adviser, you need strong ethics. It is also important to have not only a vision, but a business plan, so that the commercial focus is never lost.
You have been involved in a number of landmark judgments in India. Which of these have had the biggest impact on your practice and why?
I have been fortunate to argue more than 2,500 cases, with a few hundred reported judgments. While it would be unfair to pick a favourite, one that stands out is Blenders Pride, which established that the rights of overseas brand owners looking to enter India must be protected on the basis of international first use.
Another important case concerned Havana Club Holding’s HAVANA CLUB mark in India, where registration had lapsed on account of non-renewal by the agent, which only came to the company’s knowledge after 11 years! We eventually filed a writ petition and obtained a successful order directing renewal of the mark.
Other landmark judgments include Smithkline Beecham v Hindustan Liver Limited (shape mark); Pernod Ricard v Rhizome Distilleries (registered trademark owner injunction); ITC v Nestlé (use of a sub-brand and passing off); Adidas AG v Praveen Kumar; Nestlé v Md Zahid (counterfeiting); and Dart Industries Inc v Polyset Plastics (design infringement and passing off).
These cases all clarified the law in several aspects. It is a thrilling and humbling feeling to have been involved in landmark cases that have evolved Indian IP jurisprudence.
How have client demands changed over the course of your career?
I was initially more of an IP litigator. Over time, clients began to entrust us with their IP prosecution portfolios as well, which required an organisational structure and robust systems, with skilled human resource. This led us to expand from a litigation practice into a firm practice, which necessitated digitisation and automation. I believe that managing the IP prosecution and litigation portfolios together gives us a bird’s eye view of clients’ needs and enables us to advise them holistically, with a strategy that aligns both protection and enforcement.
Today, the firm is fully equipped with digital records that are remotely accessible in a digitally secure environment, which enables seamless functioning and allows us to attend online court hearings.
You have been an active member of various IP committees and international IP associations. How have these helped with your own professional development, as well as that of the wider IP community?
I have been an active member of several IP committees and international IP associations, including a three-year term on the INTA board of directors, as chair of the INTA Anti-counterfeiting Committee, South Asia, and as president of the International Association for the Protection of Intellectual Property India Group.
These positions have been extremely rewarding in terms of knowledge sharing and meeting top IP stakeholders from around the world. I have also been involved in INTA’s recommendations for legislative amendments to the Trademarks Act.
Engagement with international IP associations facilitates not only new relationships, but also discussions on emerging trends, which helps all of us grow in our respective fields.
What changes would you like to see made to the Indian IP system in future?
There are a few IP legislative reforms due which should be undertaken. The vision of achieving ‘Make in India’ should be aligned with achieving technical advancement and ‘Innovate in India’.
The past year has been a progressive one for the Indian IP sector. The government has taken a step forward by approving the Bilateral Patent Prosecution Highway programme with the Japan Patent Office. However, we need to reduce the time and pendency of patent applications, accelerate examination thereof, and reduce the elements of multi-layered approvals, applications and examinations.
Hemant Singh is a renowned IP counsel, registered patent agent and founder and managing partner of Inttl Advocare, one of India’s leading boutique IP firms. He was admitted to the Bar in 1984 and has handled more than 2,500 IP litigations in various courts across India. He has been the lead counsel in several landmark IP cases involving contentious and complex issues in the areas of trademarks, patents, designs, copyright, trade secrets, geographical indications and competition law. He represented INTA as counsel in its first ever amicus brief before the Supreme Court of India in a case involving parallel imports. He is also a prolific writer and member of several international and national IP associations.