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What inspired you to pursue a career in law, and what led you to specialize in intellectual property (IP), particularly in trademarks and copyright and designs?
Getting into law school was a decision guided by my mother, who is an English teacher, and who made sure I had an excellent grounding and appreciation of the language, which has helped me in the field to a great extent. In my fourth year in college, I was lucky enough to work at an internship at a leading New Delhi law firm – Lall & Sethi. My internship at Lall & Sethi was an eye-opening experience, and seeing the practical aspects of advising brands on their trademarks, copyright and designs was a career shaping occurrence. Since then, intellectual property law has been a passion which I have pursued.
Even today, after years of practice, the study of this field of law still excites me, since there is so much happening in terms of developments. Almost everyday there is something new in the field, which challenges practicing professionals to re-think how laws are shaped and interpreted. For example, the rising challenge of artificial intelligence is the most immediate and daunting challenge for IP lawyers, since it is a complete game changer in terms of how the law is practiced and implemented.
The boundaries of intellectual property law touch almost each and every aspect of our lives today, from brands making sure we have safe food and medicines, to e-commerce providing us with almost everything delivered to our doorsteps, to characters and streaming platforms shaping how we entertain ourselves, to our how we earn our livelihoods and more.
You began your career working with law firms in Delhi, handling intellectual property management for both multinational and Indian clients with global business interests. How did this early experience shape your understanding of IP, and in what ways did it influence the development of your practice?
I have been fortunate enough to receive the opportunities to work in firms with global clients which has immensely added value to my career growth. I have also had the chance to gain invaluable experience through cross-border collaboration with multiple legal teams. Every company has its tailored methods of working, and as external counsel, learning and adapting to their style is important to be able to provide clear and actionable guidance.
While the basics of IP remain the same, each and every client has its own distinct way of functioning, meaning that even a straightforward scenario can have unexpected outcomes. In one instance, we were advising the client to take enforcement action against a particularly slippery third party. However, despite our repeated advice, the client did not seem willing to go forward, leading to damages to their local business. It took a call with their senior leadership to understand and overcome their reluctance, which was stemming from a particularly bad case they had handled earlier in another country.
Working with multinational companies teaches the importance of legal advice that extends beyond an India-centric perspective, to calculate the implications in the other countries that the company operates / functions. For Indian clients expanding abroad, practical advise which works well here in India does not always work well in other countries. In India, there are some deadlines which we know are extendable, in practice, but when we were advising on a deadline in Australia, it turned out to be a couple of weeks shorter than our estimation, due to an early holiday season, leading to a panicked last-minute filing for the Indian client.
Can you share your experience working on the Trade Marks Manual project with the Controller General of Patents, Designs, and TradeMarks (CGPDTM) and International Trademark Association (INTA), and how did it contribute to deepening your expertise in IP? What were some of the key challenges you faced, and how did you approach resolving them?
The Trade Marks Manual project, although it still remains incomplete, is a mammoth project on its own. This required distilling decades of office practices, condensing legal procedures, and mapping future changes to the practice, which is likely the reason why a final version has not yet been published by the Indian Trade Marks Registry. Even today, a draft version is available on the IPIndia website, to serve as a guide or a starting point, but it is not binding on its officers.
My involvement with the project in its early stages meant working with teams of lawyers having experience in similar projects in various countries, and there was much to learn from their guidance. The INTA organisation has a very effective set of professional committees which are meant to share knowledge and advance the study of trademark law worldwide. I highly recommend young lawyers to try and join such committees, and making the most of such collaborations, since the committees are invaluable in terms of practical knowledge and mentorship opportunities. I am glad to say that my participation in the entire process gave me a lot to learn in terms of collaborating on a massive project.
I do hope that the project is finalised in the near future, since it will serve as a guiding light for trademark practice for future lawyers, who can refer to the manual as a guide for common queries, and perhaps advance the study of this niche field of law.
Having advised clients on trademark filing strategies in over 25 countries, what are the most important factors you consider when crafting a global filing strategy for international trademark protection?
An effective filing strategy envisages multiple aspects which are important to a brand and a company, including cost, identifying risks, forecasting solutions, and practical, on-ground advice, and these aspects can generally require years of experience to get them right.
Even so, it is quite impossible to predict any and all legal challenges which may arise, and quick and effective solutions, require close monitoring and actions. Assignments across multiple jurisdictions are generally very tricky to get it right, particularly when time is of the essence.
Prior to 2013, filing trademarks outside India meant engaging local counsel. Since India acceded to the Madrid Protocol in 2013, this opened an entirely new avenue of trademark filings in other countries. Initial usage of the Madrid Protocol was low, and this in my opinion, still remains an area of growth in future. Even today, Indian companies can effectively utilise this system for quick and effective registrations abroad. This does not mean that this system is devoid of any risks, and proper legal advise should be sought before considering expanding a trademark portfolio abroad.
Your success in trademark opposition cases across countries like the USA, Brazil, the EU, and the UK is impressive. How do you approach the preparation and defense of trademark opposition cases in such diverse legal landscapes?
The creation of a worldwide legal strategy for Indian brands is a tough challenge, but must be done to ensure success in new markets. Each country has its own set of legislations, market forces, and pitfalls, which must be navigated for any brand. In my opinion, the most important step in ensuring success for a brand in a new country would be choosing a trusted local expert. I am glad to say that I have worked with brilliant lawyers in such countries which ensured that I was able to handle legal risks and challenges with positive outcomes for clients.
I assisted a large Indian IT services company for their worldwide filings which led to a lot of challenges, particularly in navigating legal procedures of countries with advanced legal systems like the US, UK, EU, Brazil, Japan, Australia. The set of deadlines meant keeping constantly in touch with local counsels across multiple time zones and tracking deadlines across countries. This also meant anticipating needs in advance, and keeping multiple solutions forecasted, in case the local business decided that they needed to change their strategy.
Working with multinational companies means that their brand identities and market strategies are already well-defined, however, working with Indian companies expanding internationally requires extensive groundwork to ensure success in foreign markets. An effective brand strategy which identifies, and balances risk means that solutions to looming problems can be thought of well beforehand. Trademark law stems from international treaties, which means that preparing defense of opposition cases can be done quite consistently. However, practical guidance from local counsel is absolutely indispensable. Brazil, for example, has a completely different procedure for trademarks, as compared to India, and opposition proceedings required extensive research and in-depth studying of local laws. The European Union, requires that adverse parties conduct settlement talks before starting opposition procedures, which is designed to reduce the backlogs on the EUIPO.
You helped create a Geographical Indications (GI) training module for FICCI. What do you believe are the most critical elements of GI protection, and why is it especially important for India to focus on this area?
Back when I was assisting in creating a knowledge module for Geographical Indications with FICCI, the act was fairly under utilized, and there was much work to be done in this field. I am glad to see that there are currently about 600+ registrations for various products since the inception of the act, for protecting GIs. India has an immense wealth of knowledge when it comes to products originating from various regions within the country. From Darjeeling Tea, which was the first registered GI, to Basmati rice, Lucknow Chikan Craft, Kullu Shawls, and more, each product is steeped in history and represents unique opportunities for communities to commercially exploit such products for the benefit of the entire region as a whole. Protecting the product ensures that the community reaps the benefits, consumers can identify the GI, leading to increased knowledge and development of the GI itself.
There are still additional challenges to be overcome, in this field, as shown by the European Union, and China, which currently lead in the number of GIs registered worldwide. The European Union has shown the way in protecting and commercially exploiting their food & beverage products, which are protected under local laws, leading to immense commercial benefits to the producers of such products, particularly in export markets worldwide. I believe that there is an immense scope of expansion of Indian origin products, particularly to international markets, and this can start with the first step of seeking registration under the GI Act.
The Indian Department for Promotion of Industry and Internal Trade (DPIIT) is currently in the process of amending the GI Act, which will be a welcome improvement for the legislation.
With such a demanding professional schedule, how do you unwind and maintain a work-life balance amidst your high-level commitments?
Work life balance is very difficult to achieve, especially in the early years. This does not mean that one should not strive for it, but it may not always work out in the way that you expect. I think that this depends on a lot of circumstances, but most important is the kind of team that you work with. The times when I have been able to rely on my teammates have been good periods of time in terms of work life balance, and similarly, when their schedules demand it, I have stepped in to take over and manage work for them. Your team is quite important in terms of what it takes to have a good work life balance, since you cannot do everything on your own.
Even then, working in law firms, there are certain days in which much more is expected, since work flow can be quite unexpected. There have been more than a few instances of all nighters, since deadlines need to be met, as well as calls in the wee hours, to accommodate schedules of people from around the world. Slowly you get to learn and understand what to expect, and you can predict busy or lean weeks / months to plan and manage your schedule well.
My wife has been a blessing in managing my schedule and making sure everything gets done, no matter how busy it gets. She also has a job which is sometimes unpredictable, so we try and split responsibilities between us.
What advice would you give to young professionals aspiring to follow your path and build a successful career in intellectual property law?
During the beginning of my career, I had to devote long hours to research and learning. Whenever I came across something new, which was almost everyday, I made it a point to learn about it from whichever sources I could find information, such as bare acts, commentaries, caselaw, blogs, etc. My advice would be to learn about anything new by reading as much as possible. It may not make sense at first, but gradually the pieces start to fit together a few years later. IP law is about intuition and instinct, and not so much about memorisation or rote learning.
IP laws may differ from country to country, but overall the concepts and fundamentals remain the same. Reading on blogs about practice in the US like TTABlog or EU such as IPKat or other countries also helps build your perspective on how the law should be practiced. Indian court decisions are becoming increasingly sophisticated, but reading foreign decisions is quite interesting, to see how each country’s jurisprudence is evolving.
Another piece of advice is that every client offers a unique learning experience, and there is no piece of work which is too small at the beginning. Some of the most interesting cases I have worked on have been from start-ups. Advising a small client who relies on you completely requires a certain amount of teaching, and to teach anything is the best way to learn, since you are yourself applying the concepts into practice.
In about 2015, I had the chance to study a foundational course in copyright law – covering not just the way it is implemented, but also why it was created. I would recommend that anyone who is interested to check out the course called CopyrightX, which is designed by the Harvard professor William Fisher, and is offered online, once a year to anyone. The course, although offered with a US based perspective, offers fascinating explanations on why the field of IP law was created, and what benefit does IP offer our society as a whole.
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