India: best practices to adopt for a robust IP portfolio during the Covid-19 pandemic

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Yashvardhan Rana
Intellectual property lawyer, New Delhi,
yash0843@gmail.com

Introduction

During the current Covid-19 pandemic, businesses and corporations of all sizes – particularly start-ups and budding entrepreneurs, are being pushed to their limits. Even such routine tasks such as paying rent and employees on time have proved to be game changers and given us a chance to examine the way we function, process and plan our business models so that everyday operations are not interrupted. India’s government and some intellectual property (IP) forums have taken some regulatory measures in addition to operating in an online tech-based environment to ease pressure to ensure that mechanisms in place run smoothly. Nevertheless, a business still needs to undertake much ‘behind the scenes’ IP portfolio management work to help them more than just survive, but thrive in these challenging times. The mantra is to be pragmatic, strategic and efficient in managing a portfolio.

Strategies to consider

The following are some of the strategies to consider when managing your company’s IP portfolio during these lean times:

Be aware of what’s happening in the world

The current pandemic has affected the functioning of all major trademark, copyright, design and patent offices worldwide. Some offices are in a complete state of lockdown and deferring filings, physical hearings and other procedural compliances. Others, including India, have adopted a somewhat hybrid structure regarding application filing, hearings, attending to procedural compliances to even demarcating the applications to be heard and within specified timelines. Consequently, businesses which anticipate filing their trademark or patent application internationally should consult their local lawyers to be notified of the different rules which are changing around the world, in order to protect their IP rights globally. The practice of virtual hearings have become the new norm at the India’s Trademarks Registry^[1] and some of the high courts in major cities, something that other offices in the world could seamlessly adopt. Lawyers are acclimatising to a paradigm shift and nuanced approach required in conducting online advocacy that is being instilled and polished with every hearing.

Assessment and valuation

Once you are aware of the IP assets you own, make a catalogue of all the patented products, designs, methods, copyrights, trademarks, trade secrets, etc. Organising and classifying them is essential in a centralised automated database management software providing businesses with an overview of the entire IP portfolio. Demarcating a pertinent search criteria between IP assets comes in handy when opting for IP valuation and auditing – from type of protection, term, renewals, brands and type of market. Furthermore, conducting a due diligence exercise such as this becomes all the more necessary when operating in a competitive market where a company is able to foresee any gaps or legal dispute that may arise in future. Companies and business owners along with their lawyers should chart a plan of any dispute arising in the next year, factoring in demands and delays in addition to having an estimate of costs that may be incurred in regularly maintaining an IP portfolio. 

Evaluate your product strategy

Learn about consumer behaviour and practices, such as what they’re buying, reviewing and searching. Conduct online surveys through an independent verified third-party agency and evaluate the various insights based on the report to create and introduce products that are in-demand. Be innovative and creative about them in the process so as to emotionally connect with the consumers, rather than simply launching them hurriedly with no impact or making tweaks to an existing market product. 

Prioritise filing single-class trademark applications in key jurisdictions

Companies should focus on registering their home-grown brands or strong marks that are not too descriptive in nature throughout the world, particularly in key jurisdictions where there are plans for expansion, there is a ‘first-to-file’ regime in place in addition to where countries have a higher risk of counterfeiting, cyber-squatting cases etc. Business owners can also opt to file single class applications to minimise filing and registration maintenance fees. A company may conduct a preliminary clearance search to identify a potential conflict and use a mark prior to applying or file it, proposing to use the mark in the future with the correct specifications of goods or services in a particular class so that applications are examined efficiently, rather than going through time-consuming opposition and court proceedings that may arise in future ultimately stalling the mark from being registered.

Make use of international filing protocols

Treaties such as the Patent Cooperation Treaty (PCT),^[2] the Madrid Protocol^[3] filings through the World Intellectual Property Organization have paved a way to harmonising IP filing and search procedures for greater efficiency, aiming at cutting costs through a centralised system. Although rights are not granted unless and until patents are granted in individual countries, time involved with the PCT process allows for deferral of significant expenses in international filings. For trademarks, it can also be a resourceful cost management tool compared to opting for multiple direct national filings.

Don’t forget copyright or design protection

Often viewed as less important forms of protection, designs and copyrights also cost less than utility patents and trademarks. Yet, for the right creations and artistic discourse, these forms of IP can be used effectively to protect innovation. First ensure all contractual agreements and compliances are in order and up-to-date.

Work through opportunities

Despite the challenges of the current business climate, there may be opportunities to acquire IP rights from third parties, whether from debt-ridden companies or companies looking to earn money from their portfolios. The licensing of IP assets such as trademark or patent portfolios could be beneficial to well-known brands, providing them with an additional revenue stream in the form of royalties.

Tactfully manage legal expenditure

Companies should be able to identify IP assets which no longer are of benefit to them or are not important to their business plans or strategy – by way of abandonment due to non-renewal or not complying to any further formalities by just letting them lapse in the process, settling for any ongoing opposition, consulting with foreign lawyers in key jurisdictions for your business or by way of sale to any third party who may be better placed to capitalise on that IP.  

Enforcement: take the plunge?

Companies should be able to anticipate and brainstorm about their legal position with their local and foreign lawyers when it comes to making a decision on the enforcement of their IP rights before the courts, IP forums, tribunals, etc. Assessment on the chances of success, their impact on business, how similar or identical is the other party’s mark, likelihood of confusion in the market, loss of reputation and goodwill caused by the impugned mark, alternatives such as cease and desist letters instead of filing a notice of opposition, focusing all contentious activity on core IP assets, etc are some of the factors to be considered before going on the litigation route and thereby incurring unnecessary expenditure.

Conclusion

Companies and brand owners should aim for a strategic revision for the protection of their IP assets such as cost-effective planning, filing and enforcement of IP rights, recovery of counterfeit products, out-of-court settlements, criminal sanctions, etc. They should therefore make assumptions and assessments with the help of an experienced counsel providing them with a holistic business-oriented advice catering to different jurisdictions, efficiently balancing an IP portfolio to help its owner make their way through the Covid-19 pandemic.