“Trademark Services”

The Firm’s experienced trademark team advises clients from small or medium enterprises to international clients, across a diverse array of industries on strategic brand/trademark protection and enforcement. The team prides itself on offering clients, practical yet innovative solutions to suit their requirements. The trademark service-line includes Filing & Prosecution, Contentious and Advisory services.

Filing & Prosecution Services: The Firm acts for several well-known domestic as well as multi-national brand owners and , handles filing, prosecution, registration & renewals of trademarks owned by such brands. The Trademark Prosecution team works closely with partner law firms in various other countries around the globe to facilitate filing, prosecution, and enforcement of trademarks. The team possesses an expertise in trademark clearance services, where it regularly performs brand availability searches, TM-Alert searches, and provides brand conflict resolution strategies, including infringement and validity opinions.

Contentious Services: The Firm’s expertise includes pursuing rectification, cancellation and opposition proceedings before the Intellectual Property Appellate Board (IPAB), Indian Trademark Registry as well as Writ Appeals arising from IPAB orders.

Advisory Services: The Firm works closely with the clients assisting and advising them in IP separation (spin-offs), brand conceptualization, conducting IP audits, due diligence, and competitor tracking. The teams also regularly advise on brand acquisition as well undertakes to draft of trademark assignments and license agreements.

We provide the following Trademark Services:-

  • Advice on the full spectrum of prosecution of trademarks taking into account local regulations, long term enforceability criteria and the commercial objectives of our clients – over 90 attorneys, trademark agents, paralegals and legal assistants at the Firm assist with all aspects of portfolio creation and management;
  • Proficiency in filing and prosecution of applications (including Madrid applications) before the Trademark Office; initiating and defending opposition and cancellation proceedings; handling registration formalities and ensuring post registration maintenance including renewal and restoration of trademarks;
  • Search and watch services, expertise in conducting due diligence exercises, market investigations and surveys, followed with (if necessary) negotiations with third parties on co-existence agreements and buy-outs. All these services are supported by subscriptions to high end IP databases;
  • Advice on the assignment, licensing and franchising of trademark rights to leverage maximum value from IP assets and assistance on procedures and formalities to effect seamless recordal of such instruments;
  • Expertise in the registration and maintenance of domain names;
  • Services of representing clients before the Trademark Office, National Internet Exchange of India (NIXI) and the Intellectual Property Appellate Board (IPAB) in connection with the prosecution and maintenance of trademarks, oppositions and cancellations, and domain names and appeals;
  • Assisting clients with the protection and registration of trademarks in outside jurisdictions through our network of associates. Our practice in securing trademark rights in the Indian subcontinent (includes the countries of Sri Lanka, Pakistan, Bangladesh, Nepal, Bhutan, Myanmar and the Maldives) is particularly noteworthy.

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