What led you to a career in intellectual property, and what advice would you offer anyone considering a similar path?
As an undergraduate, I helped my cousin to handle the initial formalities for his start-up venture. I was involved in all stages, from selecting a unique brand and packaging to helping with the product designs. This ignited my interest in protecting innovation and preserving the value of intellectual inputs. I realised that intellectual property is an integral part of any business – a career in this field was a natural progression from there.
Those aspiring to specialise in intellectual property should obtain hands-on experience of the application of civil and criminal law in this area.
What are some of the biggest challenges that you face enforcing the Havells Group’s global IP portfolio, and how do you overcome these?
Certain jurisdictions have specific challenges that can only be resolved through customised solutions. Some are rogue, with minimum understanding and sensitivity with regard to IP infringement. Further, IP issues are considered to be a low priority. In these cases, it is imperative to select the most effective remedy (civil, criminal, administrative or all three layered together). Some jurisdictions are notorious for fake enforcements, thefts of seized infringing material and the misuse of power of attorney by agents who settle with infringers without the brand owner’s consent. Havells overcomes this by engaging with multiple agents to understand the nuances of each jurisdiction and by always creating a check and balance mechanism. Engaging in regular personal meetings with agents goes a long way to building trust and ensuring credibility. We are very particular about maintaining our own set of documents and using specific or limited powers of attorney. Further, we have a strict system of cost approval connected with successful enforcement actions and return on investment.
Which cases have you been most proud of and why?
Nothing is more rewarding than building a strong case with minimum initial information.
The first case that I see as quintessential to my growth was a cross-border, multi-million-dollar dispute involving a US-based company, using International Chamber of Commerce (ICC) arbitration as the dispute resolution mechanism. This arbitration in Paris had wider ramifications and hotly contested resultant litigations in China, India and the United States. The case was fraught with multiple unprecedented challenges from the start, especially because it involved applying multifaceted dimensions of law and multiple proceedings happening simultaneously across many jurisdictions. The case was finally settled and substantial royalties were paid by the opposite side.
The second case started with a simple design infringement, but subsequently developed into a global anti-counterfeiting battle. It was a cross-border trademark and design infringement action against a global counterfeit racket involving multiple entities with parallel activities in seven countries. We filed a case for design infringement combined with trademark infringement. While we based the design infringement claim on direct evidence, we based the trademark infringement claim on circumstantial evidence of the dealings of the counterfeit racket. The court, while appreciating the basis of the circumstantial evidence, granted an ex parte order for injunction against the design, as well as for trademark infringement. The court also granted us an Anton Piller order. Upon its execution, we could finally unearth the entire cross-border racket of counterfeiters with the seizure of tens of thousands of infringing products.
Both of these extremely intricate cases were resolved by innovative thinking and a solution-oriented approach.
How should brand owners and e-commerce platforms work together to protect IP rights online?
Brand owners generally possess on-the-ground information about potential counterfeiters. As we are already thriving in an era where AI is omnipresent and all e-commerce platforms have extremely diligent AI-based software, both brand owners and e-commerce platforms can benefit by exchanging key information with one another. This helps to safeguard consumer interests.
As more and more industries are affected by technological convergence, how do you expect IP strategy in the electronics sector to change over the coming years?
Technological convergence will have an impact on existing products and accelerate the introduction of new products. It will stimulate creation and facilitate the growth of small-scale companies with innovative ideas. This, in turn, will lead to increased licensing, mergers, collaborations, alliances and acquisitions, which are already revolutionising the rules of the game. However, I strongly recommend that companies analyse their strengths, weaknesses, opportunities and threats and chalk out a framework to guide them accordingly.
Senior Legal Counsel
Roma Arora has a master’s in law and more than 15 years’ experience in general corporate advisory, IP strategy and litigation. She has successfully handled and advised on high-value domestic and international commercial issues, including litigation, arbitration, transactions and M&A. Ms Arora is adept at understanding the legal issues faced by corporates and proficient in translating her learning and expertise into providing pragmatic legal and commercial solutions. She has numerous successful global IP enforcement actions to her credit in challenging jurisdictions, including Bangladesh, China, Ghana, Kenya, Nepal and Nigeria.