Anand and Anand
"Lawyers today must be far savvier about business"
Can you tell us about your career to date?
I studied economics and commerce and was keen to understand how businesses protected and monetised their value, which introduced me to intellectual property. While studying, I interned at a firm, which helped me to develop an awareness of both international and Indian IP practices. I soon discovered that the trademark office had limited information on businesses, trans-border reputation, goodwill and the Internet, as well as on international case law. Thus, I found a huge opportunity to become a part of the trademark practice and differentiate Anand and Anand from other law firms.
How have client demands changed over time, and how should practitioners ensure that they are offering relevant, world-class services to clients?
Service ultimately links to client needs. Historically, when India was substantially disconnected from the rest of the world due to factors including time, a lack of awareness and connectivity, the focus was to ensure responsiveness. Helping clients to achieve positive results relating to their intellectual property was also key; therefore, it was necessary for practitioners to become available and efficient service providers. Today, following substantial innovation and the convergence of business and law, clients want a variety of fast, efficient and time-saving solutions to ensure that their businesses have the best solutions with the least risk but highest return. Thus, lawyers today must be far savvier about business and more creative in terms of the variety and feasibility of options available. To this effect, it has become necessary not only to keep up with case law, but also to be educated about newer technologies, the risk-to-reward ratio, risk mitigation and other strategic measures that can enhance the scope of success or mitigate the probability of a loss or risk.
Which trademark-focused case has been your most memorable and what have you learned from it?
Earlier in my career there were numerous times when we had to convince the trademark office on distinctiveness. Unfortunately, reported case law on distinctiveness was scarce and, consequently, a lot of innovative thinking was required. As a firm we achieved several landmark cases, including being the first in India to protect a colour mark, a sound mark (Yahoo!) and a shape mark (Zippo), as well as achieving the first declaration of a well-known trademark for Ford. Further, in one case we successfully argued that reputation and goodwill of a mark can also be considered after the date of filing the application, as distinctiveness is not static but dynamic. Similarly, in order to get the first ‘.com’ registration in India, we demonstrated to the trademark office the difference between a trademark and a domain name, as the office construed the ‘.com’ part to nullify a trademark claim. Our firm has also trained the Chennai trademark office on the concept of character merchandising, showing how fictitious characters can be highly distinctive. Recently, we succeeded in obtaining trademark protection for the image of the famous Taj Hotel.
In reference to contentious matters, some of the most important cases that I have been involved in have centred around trans-border reputation and goodwill. On the transactional side, I was involved in the first case on the mortgage of intellectual property and valuation before the Securities and Exchange Board of India in one of the largest initial public offerings of a leading IT company.
What qualities make for an elite-level practitioner in the IP field, and how can these be honed?
A good practitioner must be willing to learn, adaptive, an explorer and, most importantly, able to solve problems in an efficient way.
Problem solving is a particular, exciting challenge. An elite-level practitioner must use the available facts and precedents in a creative way to help clients and the business prosper.
Finally, what do you think are the big trends that will affect IP professionals and owners in India over the next few years?
I predict that there will be a transition in the role of a lawyer to a business strategist, an IP portfolio manager, a watch dog, an embracer of technology and an enhancer of value. I believe that every matter – from pleadings to arguments, searches and agreements – will be highly interconnected with valuation, corporate governance, ethics, good practices, flexibility and endurance. Thus, lawyers will have to juggle aggression, defence and mediation to offer clients successful IP protection.
Senior Partner [email protected]
Safir Anand advises and acts for clients in various industries. He advises on strategy, business models, marketing and commercial insights, using his astute understanding of IP law, which covers IP protection, IP enforcement (both civil and criminal) and contractual intellectual property (eg, agreements, licensing, franchising, monetisation, strategic advisory and due diligence). He has undertaken several initiatives to create IP awareness in India and these have been widely reported on.
Click here to see his WTR 1000 2019 profile.