Anand and Anand
What recent legal developments have had the biggest impact on your practice and why?
There has been a massive influx of technology in the legal system – from the digitisation of records to video hearings, creating greater transparency and accessibility. Meanwhile, there has been suggestion that some categories of documents should be treated as classified to ensure that confidential information (eg, licences) stays secure. The evidentiary burden of proving receipt of documents or lack thereof has made way for the speedier disposal of matters.
Digital media is helping brands to reach new consumers like never before. As such, India has intensified its process and practice of declaring trademarks as well known. The Indian judiciary has ruled in favour of filing petitions for the same while directing the registrar of trademarks to act on them expeditiously. A committee on well-known marks has also been established, which meets regularly to evaluate evidence filed by parties seeking well-known status. Anand and Anand has been at the forefront of several such cases, including obtaining well-known trademark declarations for TCS, Flipkart, Ola and Lifebuoy.
Intellectual property is becoming increasingly entwined with other factions. The registrar of companies has provisions prohibiting the registration of names conflicting with prior rights of trademark owners, and similar provisions are now being incorporated by the drug controller, with the Health Ministry considering an amendment to the Drugs and Cosmetics Rules to restrict companies from using identical names for different drugs. Even the Securities and Exchange Board of India, which regulates Indian capital markets, has made it mandatory for a promoter to disclose the IP status in its initial public offering.
The covid-19 crisis has also led to an upsurge in issues related to force majeure and the restructuring of SMEs, among other things.
You support clients from a wide range of industries. What are your top tips for firms keen to remain at the forefront of industry developments and offer high-level services?
The primary challenge is that many clients resort to legal advice only when they are in trouble. Legal advice should be proactive and a lawyer should be a client’s business ally. We believe that solutions should be multidimensional since the client has a range of aspects to consider – from finance, marketing and deadlines to risk, reward and cultural and corporate issues.
Today, when even Fortune 500 companies have a lifespan of 15 years, addressing issues of structure, corporate governance and ethics, as well as providing tools that maximise returns on investment in legal services, has become essential.
You have worked hard to promote IP awareness in India. How can trademark professionals help to spread the IP message?
The first obstacle is gaining access to top-level management, who understand the business and value strategy but see anything beyond basic IP protection as a cost. They wake up when the going gets tough and realise that intellectual property is a tool that can give them an edge like none other.
The second step is to create an IP ecosystem ranging from schools and colleges to corporates, incentives and collaborations, with governments applying precedents from higher courts to lower courts and the Intellectual Property Appellate Board to trademark offices.
Third is industry-level awakening. Behavioural science suggests that one good example can cause many to emulate. Failures in strategies or legal should be widely discussed to prevent repeat failures.
How has the INTA Brand Value-Special Task Force helped to steer industry practice?
INTA took a progressive step in looking beyond trademark to brands. Legal protection and enforcement stem out of this as businesses draw towards market forces. We have worked together as a specialist group to integrate all aspects of trademark filing, prosecution, oppositions, litigation, criminal enforcement, advertising, dilution, M&A, uncertainty and risk. We hope that the process puts brand owners at a significant advantage.
Finally, what concrete steps can IP professionals take to prepare for the future now?
Creativity knows no bounds and must be protected. With substantial innovation, transition in businesses and convergence with the law, IP professionals need to be quick, efficient and a treasure trove of solutions with the least risk and highest governance. Lawyers are expected to be savvier about business and exponentially creative. Therefore, they must not only keep up with case law but also be on top of strategic measures that enhance the scope of success and mitigate the probability of loss or risk.
Safir Anand is the head of trademarks and commercial at Anand and Anand and has been in practice since 1995. Alongside his role as a lawyer and strategist, he sits on several committees and boards, and in advisory positions. He also sits on various trade bodies, including as vice chair of an IP rights group. He has won several accolades for his out-the-box thinking and has been ranked among the top lawyers in his field by several publications.