The facts, figures, feats and fees of Indian IP firms. By Rebecca Abraham
In an annual report published on 11 March, the office of India’s Controller General of Patents, Designs and Trademarks stated that in 2012-13 it registered 44,361 trademarks, 7,252 designs, 4,126 patents, and 21 geographical indications (GIs). But how do these numbers break down between India’s intellectual property law firms?
When it comes to filings, the work is spread widely between a diverse range of firms of all shapes and sizes up and down the country. Yet in areas such as IP litigation, the country’s most reputed IP firms enjoy a lion’s share of the action.
As one such firm, the powerhouse of Anand and Anand has long been a hard act to follow. With 74 lawyers all focused on intellectual property, the firm reports that in the past 12 months it filed 195 cases in IP rights enforcement matters in Delhi High Court alone.
These included an action initiated on behalf of Sony Computer Entertainment Europe against retailers that were circumventing technology protection measures the company had included in its game console.
Action of this kind is possible following a 2012 amendment of the Copyright Act, 1957, which makes such acts a criminal offence. This dispute was settled amicably in May 2013. Fees charged by the firm for taking such action would be “in the range of” US$12,000.
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Varied expertise
At Altacit Global, a 15-lawyer firm that has its main office in Chennai, obtaining an injunction against an IP infringer typically costs a fifth of this amount. The firm, which is led by Sudhir Ravindran, says it has acted in 40 IP rights enforcement matters since April 2013 and that five of these involved action in court. In December 2013, acting on behalf of Phonographic Performance Limited, India’s main copyright society for sound recordings, the firm obtained injunctions against eight event organizers that were using unlicensed music.
Mumbai-based RK Dewan & Co, meanwhile, charges US$300 to US$500 an hour for its leading lawyers, “depending on the matter”. The 22-lawyer firm reports it has filed over 1,200 applications for trademark registration and over 700 applications for patent registration since April 2013.
In addition, the firm has acted in over 100 IP rights enforcement matters, of which over 60 involved litigation. The included a trademark infringement case filed at Bombay High Court on 8 January that was disposed of within 21 days, with the infringer permanently restrained from using the mark in question and also being directed to pay ₹100,000 (US$1,670) as “costs/damages” to the firm’s client, Hygienic Research Institute.
The 15-lawyer firm of ZeusIP, which has its main office in Delhi, has also been involved in IP rights enforcement matters. The firm represented the BBC before Delhi High Court where it obtained an injunction against misuse of the BBC mark. The firm’s fees for obtaining such an injunction are upwards of US$5,000. ZeusIP has filed applications for more than 1,000 trademarks, 300 patents, and 10 GIs over the past 12 months.
Mumbai-based WS Kane & Co, headed by Himanshu Kane, recently obtained positive results for India’s central bank, the Reserve Bank of India, in a messy copyright infringement case it has been involved in since 2008. The 11-lawyer firm reports that the case was not a “run-of-the mill IP enforcement litigation but contained interesting legal principles involving copyright law, contract law and criminal jurisprudence”. Since April 2013, WS Kane & Co has acted in about 50 IP enforcement cases and filed applications for approximately 750 trademark and 40 patent registrations. The firm did not provide information on its fee structure.
Fidus Law Chambers, an eight-lawyer firm headed by Shwetasree Majumder, has been acting both in Delhi High Court and the Supreme Court on a potentially precedent-setting matter regarding the legality of parallel imports that was initiated by Samsung Electronics. The Noida-based firm represented a former authorized dealer of Samsung when a division bench of the high court set aside part of a ruling that restrained such imports. Since April 2013, the firm has acted on around 35 IP rights enforcement matters, while also filing more than 250 applications for trademark registration and about 20 for patent registration. The hourly fee for a partner at the firm is around US$350.
The Samsung parallel imports case has also provided work for New Delhi-based Vutts & Associates. This seven-lawyer firm headed by Vaibhav Vutts reports it “advised and assisted” the International Trademark Association in the run-up to it filing an amicus curiae brief before the Supreme Court on the law pertaining to exhaustion of rights and parallel imports. In addition, the firm has filed about 200 applications for trademark registration and about 100 for patent registration in the past 12 months. The hourly fee for a partner at the firm is around US$300.
Pools of talent
Since April 2013, S Majumdar & Co has filed 1,045 applications for trademark registration, including 367 international filings, and 1,409 applications for patent registration, 391 of them international. The 20-lawyer firm successfully represented Fresenius Kabi Oncology in its revocation petition against a patent granted to GlaxoSmithKline in July 2013, on the ground of non-patentability under section 3(d) of the Patents Act, 1970.
Gurgaon-based Ranjan Narula Associates, meanwhile, has acted to protect the IP rights of companies such as GlaxoSmithKline, Abbott Laboratories, Adidas and Burberry. The 12-lawyer firm reports that it acted for Harley-Davidson, to stop a third party from using its mark on T-shirts, jeans, phone covers and deodorants. This is one of over 100 enforcement matters that the firm has handled since April 2013. The firm’s fee for obtaining an injunction is around US$5,000.
New Delhi-based Rajeshwari & Co acted for Natco Pharma when it recently successfully fought off a process patent suit filed by Teva Pharma, an Israeli company, on the grounds of want of jurisdiction. An appeal in the matter is pending. The five-lawyer firm has filed about 230 applications for patent registration and about 150 for trademark registration since April 2013. The firm charges around US$2,500 to obtain an injunction.
LexOrbis, meanwhile, is active both in filing and prosecution of trademark and patent applications and in litigation. The 19-lawyer firm based in New Delhi has filed 584 applications for trademark registration and 1,966 for patent registration since April 2013. It is acting for Gillette in an infringement of design suit the company filed at Delhi High Court – one of 26 IP enforcement cases that the firm has been involved in over the past 12 months. It charges around US$15,000 for obtaining an injunction, up to the stage of disposal of the preliminary injunction application.
The 21-lawyer firm of Khurana & Khurana reports that it has filed 550 applications for trademark registration and 400 for patent registration over the past 12 months. The Noida-based firm is involved in over 25 IP infringement matters including providing a legal opinion on a patent infringement matter for Crompton Greaves, an Indian company that designs, manufactures and markets power generation, transmission and distribution products.
New Delhi-based Amarjit & Associates reports that it has handled approximately 100 IP rights enforcement matters over the past 12 months. This includes a case where the 15-lawyer firm’s client initiated criminal action against an international company for using a fabricated certificate of registration of trademark. The matter has yet to be concluded. The firm’s hourly rate for partners is around US$400 and fees for obtaining an injunction range from US$5,000 to US$10,000.
Creating a ripple
Mumbai-based Aditya & Associates, headed by Vipul Bhuta, successfully obtained an ex parte order in Delhi High Court for two Taiwanese clients – King Point Enterprises and Patta International – in a case of trademark infringement and passing off. This case is ongoing and is one of five IP enforcement matters handled by the nine-lawyer firm over the past 12 months, during which it has also filed about 800 applications for trademark registration and about 45 for patent registration. The hourly rate charged by partners at the firm is around US$150.
The seven-lawyer firm of Uniquely IP is based in New Delhi. Gautam Panjwani, who heads the firm, reports it has filed more than 400 IP applications and that it has an IP litigation practice.Bangalore-based BananaIP – previously Brain League IP Services – led by Kalyan Kankanala, represented Yash Raj Films, a leading film production house, in a copyright infringement matter at Delhi High Court. This is one of 150 IP rights enforcement matters handled by the 15-lawyer firm over the past 12 months, of which 12 have resulted in litigation. The firm was also instrumental in 800 trademark filings and 400 patent filings during this period. Hourly rates charged by partners at the firm are around US$200.
The IP practice of Chennai-based LR Swami employs four lawyers and one patent agent and is led by Srinath Srinivasan. Over the past 12 months it has filed 1,267 applications for trademarks and 12 for patents. The fee for filing a trademark application is about US$150.
The IP practice at Trans-India Law Associates, an 11-lawyer Delhi-based firm headed by Uma Mishra, reports that it has filed 10 applications for trademark registration and two for patents over the past 12 months. Its fee for filing a trademark application until registration is US$150.
Babaria IP & Co is based in Ahmedabad. The four-lawyer firm headed by Ketana Babaria reports that it has filed two applications for trademark registration and seven for patent registration over the past 12 months. The firm’s fees for trademark filings in India are around US$60 per class per application.
New Delhi-based IPR International Services, led by Neha Chugh, has been involved in two IP enforcement matters that involved litigation. The nine-lawyer firm reports that it has filed 450 applications for trademark registration and 260 for patent registration over the past 12 months. The firm charges around US$400 for a trademark filing. Its hourly rate for partners is around US$400.
Experience counts
The 60-lawyer firm of Remfry & Sagar – one of India’s oldest IP firms – reports that it consistently files and handles around 4,500 to 5,000 trademark applications and 4,000 patent applications a year. In addition, the firm handled five applications for GI registration over the past 12 months and acted in around 350 contentious matters, tincluding 20 “hard core” litigations.
In October 2013, Remfry & Sagar acted for Mast-Jägermeister, a German maker of liquors and liqueurs, when it successfully filed a writ petition in Madras High Court against police authorities of Tamil Nadu for unauthorized use of the its trademark. Remfry & Sagar declined to provide information on its fees.
YJ Trivedi & Co, a 32-lawyer firm headed by Jatin Trivedi, reports that it has filed 979 applications for trademark registration and 169 for patent registration since 1 April 2013. The Ahmedabad-based firm has also acted in 670 trademark opposition matters and 39 cases at the Intellectual Property Appellate Board.
YJ Trivedi & Co says it charges US$1,200 to US$1,500 for obtaining an injunction and that it has been involved in 80 enforcement matters before trial and appeal courts over the past year. This includes acting for the defendant in a case at Calcutta High Court where the plaintiff and the defendant were using the same mark for 11 medicinal plants. The parties are currently negotiating a settlement.
Which firms are included and why?
This report on India’s IP firms is part of India Business Law Journal’s special coverage to coincide with the 136th annual meeting of the International Trademark Association (INTA), which will take place in Hong Kong on 10-14 May.
The report has been compiled using information provided by Indian intellectual property law firms. More than 400 firms were invited to provide data on their number of filings, enforcement actions and fee schedules to be considered for inclusion in the report. They were also invited to provide information on their recent achievements.
Some firms declined to participate because the information requested was deemed too sensitive. However, a large number of firms did submit information, highlights of which are included in the report. India Business Law Journal did not verify the accuracy of the information provided.
INTA’s annual meeting is expected to be attended by more than 8,500 professionals from over 140 countries. India Business Law Journal is proud to be a media partner. For more information and details of how to attend, please visit: www.inta.org/2014am.
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New Delhi-based SS Rana & Co is led by Vikrant Rana. The 27-lawyer firm reports that it represents several multinational and Fortune 500 clients and that it was successful in all the domain name dispute matters it handled in the past 12 months.
Meanwhile, Mumbai-based Solomon & Roy reports that it has filed applications for 250 trademarks and 60 patents since April 2013. The firm was also involved in four IP enforcement matters that went to litigation. The firm charges around US$3,500 for obtaining an injunction against an IP infringer.
The six-lawyer firm of Selvam & Selvam, headed by Raja Selvam, focuses on filing and prosecuting trademark and patent applications and does not have an IP litigation practice. It charges US$300 for filing a trademark application and US$500 for prosecuting an opposition.
Full-service offerings
The full-service law firm of AZB & Partners firm has a 10-lawyer IP team divided between its Delhi and Mumbai offices, which it reports is “equipped to serve as a one-stop shop for all IP matters” including advising, drafting and negotiating co-existence and settlement agreements, domestically and internationally.
The firm has handled 203 IP enforcement actions since April 2013 – about three-quarters of them through its Delhi office – including two matters that prompted litigation. The firm filed over 373 domestic trademark applications and nine foreign applications through the Madrid Protocol in the same period.
AZB & Partners, which declined to provide information on its fees, reports that over the past five years its Mumbai office obtained registration for one patent and that it has filed four patent applications since April 2013.
The IP practice at Khaitan & Co, another full-service firm, has filed 705 patent and 180 trademark applications over the past five years. The practice, has handled 22 IP rights enforcement matters since April 2013, of which 17 involved litigation. In May 2013, Jose Madan – a key member of the practice – acted for a US company, Solux Corporation, before the Intellectual Property Appellate Board when it fought off a revocation petition against one of its patents on grounds of lack of novelty, inventive step and non-patentability under section 3(d) of the Patents Act.
The IP practice at Fox Mandal has 12 lawyers across its offices in Bangalore, Chennai and Hyderabad. The practice is headed by Bangalore-based partner Santosh Vikram Singh.
It routinely files more applications for patent registrations than for trademarks and reports that it has handled over 50 IP rights enforcement matters since April 2013. Around five of these have involved litigation.
Singh & Associates, a 70-lawyer full-service firm with its main office in New Delhi, reports that it has filed more than 250 applications for trademark registration and more than 100 for patent registration since April 2013. In addition, the firm, which has seven lawyers in its IP practice, has been involved in around 35 IP rights enforcement matters, around 15 of which have resulted in litigation. Hourly fees for partners at the firm are typically US$175.
The considerably smaller, litigation-focused firm of Nanavati & Associates, which has its main office in Ahmedabad, has a four-lawyer IP team. The team handled one application for a GI registration, 42 applications for trademark registration and 29 for patent registration – eight of which were national phase applications under the Patent Cooperation Treaty. The firm reports that it successfully acted for a client in what was a difficult process of obtaining a series trademark, after taking over from a previous legal adviser.
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