Intellectual property lawyers in Chennai
Trademarks, patents, copyright, designs, GI, IP litigation and licensing.
Overview
The firm advises and represents clients in intellectual property matters before the Madras High Court and the courts and tribunals in Chennai. We help businesses, creators and inventors register, use and enforce intellectual property in India and abroad: trademarks, patents, copyright, designs, geographical indications and trade secrets.
IP suits are commercial disputes under the Commercial Courts Act, 2015, which covers claims about registered and unregistered trademarks, copyright, patents, designs, domain names, geographical indications and semiconductor integrated circuits. A suit for trademark infringement or passing off cannot be filed in any court below a District Court (Section 134 of the Trade Marks Act, 1999), and the same rule applies to patent infringement suits (Section 104 of the Patents Act, 1970). In Chennai, IP suits within the original jurisdiction of the Madras High Court are heard by its Intellectual Property Division.
The Intellectual Property Appellate Board was abolished in 2021, and the Tribunals Reforms Act, 2021 replaced references to it in the Trade Marks Act, 1999 with references to the High Court. A person aggrieved now applies to the High Court or to the Registrar of Trade Marks to cancel or vary a registration (Section 57), and appeals from orders of the Registrar go to the High Court (Section 91).
Our Intellectual Property services
Strategy, searches and audits
IP strategy and audits
Identifying the IP a business owns and where it is exposed, and planning how to protect and use it under Indian law and international practice.
Patentability searches
Searching prior art to judge whether an invention is new and inventive enough to be patented under the Patents Act, 1970 before you spend on filing.
Freedom to operate
Checking whether a product or process would infringe existing patents before launch, with a written report on the risks and how to reduce them.
Trademark searches
Searching the Indian Trade Marks Registry and international databases for conflicting marks and assessing registrability under the Trade Marks Act, 1999.
Copyright and trade secrets
Protecting literary, musical, artistic and software works under the Copyright Act, 1957, digital rights management for online content, and confidentiality agreements, training and security measures for trade secrets.
Portfolio management and valuation
Tracking filing and renewal deadlines across a portfolio, valuing IP for licensing, sale or investment, and IP due diligence in mergers and acquisitions.
Licensing and franchising
Structuring licences and franchises of IP, including the terms that protect the brand and know-how.
Registration
Trademarks
Clearance, filing and prosecution in India, and international filings through the Madrid Protocol under Section 36D of the Trade Marks Act, 1999, including replies to examination reports and hearings.
Patents
Drafting specifications and prosecuting patent applications in India and through the Patent Cooperation Treaty, up to grant.
Copyright
Registration with the Copyright Office under Sections 45 and 48 of the Copyright Act, 1957.
Designs
Registering the shape, configuration and ornamental features of products under the Designs Act, 2000.
Geographical indications
Registering products whose quality or reputation comes from where they are made, under the Geographical Indications of Goods (Registration and Protection) Act, 1999.
Trade dress
Registering distinctive product shapes, packaging and colour combinations as trademarks, and protecting unregistered trade dress through passing off actions.
Plant varieties and semiconductor layouts
Protection under the Protection of Plant Varieties and Farmers' Rights Act, 2001 and the Semiconductor Integrated Circuits Layout-Design Act, 2000.
Enforcement and litigation
Trademark infringement and passing off
Suits for injunctions, damages or an account of profits and delivery up against infringers and businesses passing off their goods as our client's, under Sections 134 and 135 of the Trade Marks Act, 1999.
Patent infringement and validity
Infringement suits for patent holders and defences for those accused, covering claim construction, technical evidence, interim injunctions, damages and counterclaims for revocation under Section 64 of the Patents Act, 1970.
Copyright infringement
Suits for and against infringement under the Copyright Act, 1957.
Oppositions and rectification
Trademark oppositions before the Registrar of Trade Marks, and rectification petitions to remove wrongly registered marks, heard by the Registrar or the High Court under Section 57 of the Trade Marks Act, 1999.
Domain name disputes
UDRP complaints before WIPO, INDRP complaints for .in domains, and court actions to recover domain names registered in bad faith.
Customs and counterfeits
Recording trademarks and copyright with Indian Customs under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, seizures of counterfeit imports, and anti-counterfeiting investigations.
Online brand protection
Takedowns of infringing listings and content on websites, marketplaces and social media.
Threats, licensing and trade secret disputes
Actions against groundless threats of infringement under Section 142 of the Trade Marks Act, 1999 and Section 106 of the Patents Act, 1970, royalty and termination disputes under IP licences, and claims for misuse of confidential information.
Agreements
Assignments and licences
IP assignments, licences, technology transfer and software development agreements that settle who owns what.
Confidentiality and research agreements
NDAs and material transfer agreements for research materials.
Finance, franchise and coexistence agreements
Security over IP for lenders, franchise agreements, and coexistence agreements between owners of similar marks.
Laws we work with
- Trade Marks Act, 1999
- Patents Act, 1970
- Copyright Act, 1957
- Designs Act, 2000
- Geographical Indications of Goods (Registration and Protection) Act, 1999
- Commercial Courts Act, 2015
- Information Technology Act, 2000
Courts and tribunals
- Madras High Court, Intellectual Property Division
- Commercial Courts in Chennai
- District Courts in Chennai
- Registrar of Trade Marks
- Controller of Patents
- Registrar of Copyrights
Questions and answers
Frequently asked questions
8 questions. These answers are general information about Indian law, not legal advice on your situation.
How long does a trademark application take to register in India?
There is no fixed statutory time. The Registry examines the application and raises objections, which the applicant answers; once the application is accepted it is advertised in the Trade Marks Journal (Section 20, Trade Marks Act, 1999). Anyone may oppose it within four months of the advertisement (Section 21), and the applicant then has two months to file a counterstatement. A mark that is not opposed is registered.
How long do a patent, a copyright and a design registration last?
A patent lasts twenty years from the date of filing (Section 53, Patents Act, 1970). Copyright in a literary, musical or artistic work lasts for the author's lifetime plus sixty years (Section 22, Copyright Act, 1957). A design registration gives copyright for ten years from the date of registration, and the Controller may extend it by a further five years on application (Section 11, Designs Act, 2000).
How long does a trademark registration last?
Ten years, and it can be renewed for further ten-year periods without limit (Section 25, Trade Marks Act, 1999). The Registrar renews the registration on application made in the prescribed manner and on payment of the prescribed fee.
Can I use the ® symbol after filing a trademark application?
No. Section 107 of the Trade Marks Act, 1999 forbids representing a mark as registered when it is not, and a person who does so is liable to a penalty under that section. The TM symbol is used while the application is pending.
Is copyright registration compulsory in India?
No. Copyright subsists under the Copyright Act, 1957 without registration, but the owner may apply to enter the particulars of the work in the Register of Copyrights (Section 45). The register is prima facie evidence of the particulars entered in it (Section 48), which helps in a dispute.
Where can I challenge a registered trademark now that the Intellectual Property Appellate Board is abolished?
A person aggrieved can apply to the Registrar of Trade Marks or to the High Court to cancel or vary a registration or to rectify the register (Section 57, Trade Marks Act, 1999). Appeals from orders of the Registrar go to the High Court within three months of the order (Section 91). the Tribunals Reforms Act, 2021 replaced references to the Appellate Board with the High Court, so these matters are now heard by the High Courts.
Which court hears a suit for infringement of intellectual property?
Trademark infringement and passing off suits cannot be filed in a court below a District Court (Section 134, Trade Marks Act, 1999), and neither can patent infringement suits, where a counterclaim for revocation transfers the suit to the High Court (Section 104, Patents Act, 1970). In Chennai, suits within the Madras High Court's original jurisdiction are heard by its Intellectual Property Division. Copyright suits can also be filed in the district court where the plaintiff resides or carries on business (Section 62, Copyright Act, 1957). Suits of this kind are commercial disputes under the Commercial Courts Act, 2015.
Can I stop someone passing off their goods as mine if my trademark is not registered?
Yes, by a suit for passing off. Section 27 of the Trade Marks Act, 1999 bars a suit for infringement of an unregistered trademark, but it preserves the right of action against anyone passing off goods or services as those of another person.