You have nearly 20 years’ worth of experience working in a diverse range of areas in the IP field. Which aspects of your work do you enjoy most and why?
While I have worked in a diverse range of areas in the IP field (eg, availability, registrability and economic viability of IP rights, branding, vesting ownership, licensing and infringements), the most interesting aspect of the work is advising clients on how to protect their IP rights against third-party infringers and counterfeiters and successfully defending my clients’ rights. As each case of infringement is different – the facts and circumstances vary widely – I find the topic incredibly interesting.
As managing partner, what steps is your firm taking to improve your hiring process to increase diversity, equity and inclusion (DEI) in the workplace?
We believe that a diverse team helps our firm to be more innovative and creative and achieve better results. Our firm’s hiring policy is to keep it diverse. The HR team has been advised to interview and hire candidates from law colleges across India who have experience working in firms from different cities. Our recruitment process has been streamlined with multiple checks to ensure that we hire candidates based on their skills and competence. Further, our HR policy is designed to ensure equity and inclusion among all employees. We conduct internal surveys and audits to gather feedback from employees on a periodic basis to ensure that equal opportunities are provided without any prejudices.
What advice do you have for anyone looking to provide more and better services with a constrained budget?
My advice would be to understand the client’s needs before starting an assignment and prepare a roadmap for dealing with the matter within their budget constraints.
Rahul Chaudhry & Partners has grown tremendously in size during your time as managing partner. What opportunities do you offer internally to retain and educate talent?
We believe that one of the key elements of successful growth for any organisation is to retain and educate talent – this helps the firm to stay efficient, competitive and profitable. To ensure retention, our team members are provided with opportunities to work in diverse aspects of the law. Regular surveys are conducted among our associates, and we offer training on the aspects of the law that they are interested in, including attending conferences and giving them speaking opportunities in their areas of interest. We also provide employees with flexible working arrangements and ensure that their professional packages are in accordance with industry standards.
What are your top tips for keeping the litigation costs down in the current economic climate, especially as more people are taking cases to court?
In order to reduce the cost of litigation in the current economic climate, rights holders should first explore alternative remedies. However, as it may differ from case to case, parties are only encouraged to approach the court if it is the only resort to ensure immediate protection of rights and that the violation is injuncted as soon as possible.
You told us previously that your India-based clients are increasingly emphasising cross-border protection of their intellectual property. What are some of the challenges involved with acquiring such protection abroad and how can rights holders overcome these?
The challenges faced by our India-based clients in obtaining protection abroad are multi-faceted, including differences in laws and practices followed for the protection of IP rights, language and costs. The major challenge that they face while acquiring trademark protection abroad is that their licensees, distributors or third parties have applied for an identical or similar trademark in their name, which poses a hurdle in the trademark registration process. This results in increased costs due to negotiations and actions that need to be taken against these parties. To overcome these challenges, we advise our clients to file trademark applications as soon as they launch their brand in other countries and include an ownership clause in the licence agreement that warns distributors or licensees against applying for registration of the same mark in their name. We also encourage our clients to opt for worldwide watch services so that they are aware well in advance of any party misappropriating their valuable trademarks.
In 2021, you predicted that there would be a wave of clients in India conducting audits on their trademark portfolios, identifying IP assets with diminishing commercial importance. How does this landscape look, 12 months on?
In the last 12 months, as anticipated, clients have been conducting audits of their trademark portfolios and are letting now commercially unimportant marks lapse. Clients have become selective in their renewal of trademarks and are only proceeding to renew those that are of commercial importance to them. Clients are also increasingly abandoning applications and conflict actions related to marks that are no longer of commercial importance.
Which recent decisions or legislative developments have had the biggest impact on IP strategy in India over the past 12 months and why?
There are several recent decisions that will have an impact on IP strategy in India. The Deputy Registrar of Trademarks passed an order (dated 28 April 2022) in the matter of M/S Bunge India Pvt Ltd v Hatsun Agro Product Ltd that will significantly impact trademark prosecution. In India, while the Trademarks Act provides for expedited examination of applications, it was previously possible to request expedited examination only if the request was made prior to the application’s examination. In April last year, the Deputy Registrar ruled that all proceedings post-filing − until final disposal − can be fast-tracked by filing a suitable request for expedited examination. This request can be filed at any stage of the application. This ruling has allowed applicants to expedite their applications at any stage, in case they wish to obtain registration for their mark at an earlier date.
In Boehringer Ingelheim International Gmbh v The Controller of Patents & Anr, the Delhi High Court held that a divisional application filed under Section 16 must originate from a parent application that discloses multiple inventions. The court emphasised that the plurality of inventions must be explicitly stated in the claims, as the invention itself is defined by them. It warned that allowing applicants to file divisional applications based solely on the disclosure in the specification, without claiming the inventions in the parent application, would undermine the fundamental rule of patent law, which is: what is not claimed is disclaimed. With this ruling, the previously held position (ie, that a divisional patent application could be filed based on disclosure in the parent application) is redundant. Thus, patent applicants will now need to include patent claims pertaining to distinct inventions that are disclosed in the specification to ensure valid divisional application filing later on. This increased number of patent claims may result in a significant increase in the filing fees of patent applications.
The Delhi High Court’s ruling in Allergan Inc v The Controller of Patents is a significant legal precedent, particularly in instances where PCT applications have different patentability regimes in the priority country compared to the Indian national phase. The Delhi High Court concluded that claim amendments, so long as they are within the scope of the invention and made prior to the patent’s granting, should not be outrightly rejected without considering other aspects of patentability. Currently, Section 59’s amendment provisions are strictly interpreted. It is hoped that this ruling will lead to greater acceptance of claim amendments limited to the specification’s disclosures and change the Indian Patent Office’s amendment acceptance practices.
In the matter of M/S Knit Pro International v State of NCT of Delhi & Anr, in order to ensure more stringent protection of IP rights, the Supreme Court held that the offence of copyright infringement under Section 63 of the Copyright Act is now cognisable and non-bailable.
The dissolution of the Intellectual Property Appellate Board in 2021 meant that matters were transferred to the Delhi High Court’s IP division. The court released its Rules in February 2022, and in light of them, the IP division is adjudicating pending and fresh IP matters.
The Delhi High Court also released the “High Court of Delhi Rules Governing Patent Suits 2022”. The rules aim to ensure effective and efficient adjudication of patent suits filed under the original jurisdiction of the Delhi High Court.
You previously said that inspiring leaders should communicate impeccably. What are your three top tips for effective communication, and how do they differ between interactions with clients and fellow colleagues?
Effective communication is crucial with clients and fellow colleagues to understand their needs and help our colleagues understand client demands. My top three tips for effective communication would be to:
- keep communication simple and direct;
- uphold consistency in communication; and
- listen and encourage inputs.
In interactions with both clients and fellow colleagues, these tips are critical and need to be followed. The difference is that in interactions with colleagues, we might have to communicate relentlessly and continuously so that our ideas and goals are clear to the team.
What has been your biggest professional challenge in the last 12 months, and how did you overcome it?
In the last 12 months, clients have become extremely cautious and have cut down their costs tremendously in terms of spending money on IP rights protection. The biggest challenge is to provide solutions to our clients at the bare minimum prices so that their IP rights are unaffected by their budget constraints.
Managing partner of leading law firm Rahul Chaudhry & Partners, Rahul Chaudhry is one of the most pre-eminent names in Indian IP law. He has carved a niche as a leader in Indian IP practice due to his strong grasp of the law and ability to provide innovative solutions in line with legal realities. Mr Chaudhry advises clients on an array of legal issues and transactions relating to IP matters.