30 Aug
2019

"Litigation is a complete application of the head and the heart"

Rahul Chaudhry & Partners

Can you tell us a little about your career to date?

I completed my law degree and was enrolled at the Bar in September 2002. I then began my career as a litigator at the Delhi High Court, where I worked for almost two years before joining the IP litigation department at Lall Lahiri & Salhotra (LLS) as an associate in 2004. In 2008 I was promoted to partner and, in addition to legal work, I was involved in handling client relationships, human resources and other aspects of the firm’s management. During my tenure, I have seen the firm grow from a small, family-run IP practice into one of the finest, most professionally managed, business-oriented full-service law firms in India.

On 31 March 2013 I acquired 100% ownership rights in LLS (now Rahul Chaudhry & Partners) and became managing partner of the firm. As part of that transition, the firm name was changed to Rahul Chaudhry & Partners (with effect from 1 July 2018). Today, we are a team of 11 partners, 65 attorneys and 110 support staff, operating out of two state-of-the-art offices in New Delhi and Gurgaon.

I currently provide expertise on legal issues and handle the business management of the entire firm. Over the span of 17 years, I have had the privilege of regularly advising on the management and enforcement of IP rights to clients across a wide range of practice areas and industries, including various Fortune 500 companies, as well as across public sectors in India. Due to the quality and dependability of our services, we have had several clients approach us for guidance on non-IP matters and we cater to their needs on a regular basis. Indeed, due to the increasing demand for this, we are considering venturing into non-IP services through the establishment of a separate department or team dedicated to servicing these client demands.

In addition, we are planning to expand our practice to other cities in India, thereby increasing our accessibility and approachability to clients.

In terms of professional development, what are the advantages of working in an IP-focused firm, rather than a full-service firm?

Boutique IP law firms offer an appropriate environment to develop and hone all the skills of a specialised IP lawyer. They enable attorneys to acquire niche IP specialties by working first hand on all types of IP-centric matters. Although these are often diverse and challenging, the knowledge and experience gained by working on such matters give the attorneys an edge over those at full-service firms. Over time, they develop into specialised IP lawyers, who can provide advice and opinions on a range of IP issues including, but not limited to, the selection of brands, commercialisation and licensing of IP rights, successful prosecution, opposition and litigation, assignment and merger recordals.

How are client demands changing and what effect has this had on the management of your firm?

Clients today are extremely cost conscious and demand precise, straightforward opinions in a cost-efficient manner – regardless of the subject matter. They demand proactive advice and want us to keep them continually updated with matters (eg, inform them of any infringement issues, oppositions or appointed hearings immediately).

These growing demands call for quick responses and with a short turnaround time, we must often be flexible with working hours. This can affect the work-life balance of the firm’s attorneys. Therefore, the main challenge is to maintain this balance while meeting the demands of the client in an effective manner.

Do you think it is becoming easier or harder to obtain trademark registrations in India, and why?

The Trademark Registry has been clearing its backlog of applications by streamlining the process of examination. As a result, the timeframe for obtaining registration has drastically reduced. At the same time, however, the registry has also become stricter in accepting trademarks that are non-distinctive and/or similar or identical to earlier marks on the register.

The registry has also become more stringent with timelines; therefore, lawyers must act proactively to ensure that clients’ rights are not prejudiced in any way. It is important that clients are kept updated on official deadlines and that these are strictly adhered to. Otherwise, it may hamper their chances of registration.

What are the top qualities that clients should look for when seeking world-class trademark advisers?

Advisers should have a clear understanding of the client’s business and requirements. They should have in-depth knowledge and expertise of the law, should be able to provide responses in a quick and efficient manner, and should be adaptive to client needs. They should be easily approachable by clients and available whenever required. In the current climate, clients’ businesses are often being run globally across multiple jurisdictions. Therefore, it is essential that advisers are aware of the latest developments in intellectual property not only in their jurisdiction, but also in other territories where clients operate. This goes a long way to ensuring that clients’ IP rights remain protected and are not exposed to sudden risks.

What specific qualities make for an elite-level litigator in the IP field, and how can these be honed?

It is not just the craft of courtroom advocacy that matters, but a combination of intelligence, knowledge, emotion and communication. Litigation is a complete application of the head and the heart. It goes without saying that a successful litigator must know the subject of the law and, to a great extent, be a convincing communicator. They must be able to logically deduce the complexities of a case and explain things in simple language. The courts prefer simplicity and, in order to litigate well, lawyers must be able to hold the attention of the judge.

A successful litigation practice cannot be defined simply by the wins and losses, but rather by the ability to hold the case and make it its own. A litigator must practise the art of clear communication – whether through language or action – and must know their subject well, keeping in mind the client’s best interests.

Do you think it is becoming easier or harder to litigate trademark disputes, and why?

As a general analysis, it is becoming gradually easier to litigate trademark disputes in India. With the introduction of the Commercial Courts Act 2015 and the progressive rollout of commercial courts across the country, there are now practice rules that are bent towards expediting commercial litigation.

Which trademark-focused case has been your most memorable and what can be learned from it?

We have had many breakthrough orders in trademark jurisprudence, including the celebrated Whirlpool order, which laid down the law on well-known marks and the trans-border reputation of trademarks. This was the first case in which the Supreme Court laid down a legal point which has been followed ever since.

Another memorable contentious matter was that of PK Sen v Exxon Corporation, in which the courts settled the law on jurisdiction for IP matters. The matter was hotly contested and over the course of a few years, the case came up before different benches of the Delhi High Court and the Supreme Court. With the evolution of the law following PK Sen, we have noticed that on two occasions the Supreme Court has given conflicting decisions in relation to appeals from two cognate benches of the Bombay High Court and the Delhi High Court on the same point of jurisdiction for IP matters.

As such, we have now approached the Division Bench of the Delhi High Court in another matter filed by petroleum giant Exxon Mobil Corporation, requesting reconsideration on the jurisprudence of jurisdiction. At present, this remains a moot point. The matter is currently sub-judice and we believe that it will take its own course – hopefully settling the law on this as well.

In our experience, our learnings have been true to the spirit and motto of our firm; it is utmost dedication, perseverance, spirit and conviction, as well as committing unmatched hours to preparation, that helps us achieve meritorious results.

As a law firm leader, what keeps you up at night?

Thinking of ways to resolve contentious issues, to provide solutions that are best compatible with client needs in order to ensure complete client satisfaction, and to provide tailor-made opinions on a day-to-day basis in order to tackle the legal issues that clients’ brands face.

How different do you think trademark practice in India will be in five years, and how can practitioners prepare for the future now?

We expect trademark practice to become more streamlined. Given the current trend, the Trademarks Registry may become stricter in its approach when it comes to accepting trademarks for registration on the basis of non-distinctiveness and the presence of similar or identical prior marks on the register. As such, multinationals that are looking to enter the Indian market should regularly review the trademark journals and databases in order to monitor third-party trademarks and ensure that similar marks or brands are not adopted by competitors. If this happens, they should take immediate action against the third party to prevent infringement or passing off of their brand as a means to ensure a smoother registration process in India.

If you could make one change to the trademark world, what would it be and how would it benefit clients and their legal advisers?

The biggest challenge that we face is the lack of harmonised trademark law. Although the Madrid Protocol and WIPO global brand database are in place, IP laws vary from jurisdiction to jurisdiction. These inconsistencies can cause confusion among clients and make it difficult to provide a single solution or advice to resolve a client’s trademark issues across various jurisdictions. Therefore, efforts must be made to harmonise the law so that lawyers can provide better advice regarding infringement and objections and clients can make an informed decision while selecting trademarks.

Finally, what advice would you give to practitioners starting a career in intellectual property?

New practitioners should understand that intellectual property is a highly competitive field with demanding clients and frequent changes in the law. They should ensure that they are up to date with the changing legislature and aware of any new developments in the IP field.

Rahul Chaudhry & Partners

RCY House, C-235, Defence Colony

New Delhi 110024

India

Tel +91 11 4350 0000

Fax +91 11 4350 0003

Web http://www.rahulchaudhry.com/

Rahul Chaudhry

Managing Partner

[email protected]

Rahul Chaudhry is managing partner at Rahul Chaudhry & Partners (formerly Lall Lahiri & Salhotra). He provides legal expertise to clients and handles business management at the firm. His comprehensive repertoire in the management and enforcement of IP rights and his extensive experience in assessing strategic innovation and legal implications enable him to advise clients (both Indian and overseas) on a range of issues and transactions relating to intellectual property and non-IP matters.