Fox Mandal's intellectual property services span the full IP lifecycle from searches, filing and prosecution to portfolio management, transactions, and enforcement.
Talk to our Experts!Today, entities are operating with an innovation mindset to unlock new values and drive progress. Intellectual Property (IP) has therefore become a significant asset and value determinant for any successful business. Appropriate protection, enforcement and commercialisation of IP are indispensable for the attainment of business goals. Our IP team helps clients design and implement IP strategies best suited to their specific business needs.
Our team comprises of attorneys with not just legal & technology expertise but also an understanding of critical business issues. We have professionals with technical qualifications from diverse areas including Electronics, Telecommunications, Software, Life Sciences, Biotechnology, Mechanical Engineering. This combination of technical, legal and industry knowledge equips us to better understand how IP impacts your business, thus allowing us to provide efficient solutions in the context of your business approach and operations.
India has a TRIPS compliant, robust, equitable and dynamic IPR regime. We enable our clients to design and implement strategies to optimise protection, and commercialise and enforce our IP in India and the worldwide.
Fox Mandal’s intellectual property services span the full IP lifecycle from searches, filing and prosecution to portfolio management, transactions, and enforcement.
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Read More BCCI–NSGA Overlap Raises Questions Over Governance of Cricket BodiesIndia’s intellectual property regime is governed by a range of distinct statutes and legal frameworks. Key statutes include the Patents Act, 1970 for inventions, the Trade Marks Act, 1999 for brands, the Copyright Act, 1957 for creative works, the Designs Act, 2000 for the appearance of products, the Geographical Indications of Goods (Registration and Protection) Act, 1999 for geographical indications, and the Semiconductor Integrated Circuits Layout-Design Act, 2000. Trade secrets and confidential information, while not governed by a standalone statute, are protected through contractual obligations, equitable principles, and provisions under the Indian Contract Act, 1872, as well as common law remedies. These rights are administered by the Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM). The firm’s IP practice works across the full spectrum of rights together rather than treating them in isolation, so that a client’s portfolio is managed as a whole.
On patents, the team advises on patentability and freedom-to-operate searches before filing, prepares and prosecutes provisional and complete specifications, and manages the application through to grant, whether filed directly in India or through the national phase of an international application, and once a patent is granted, on licensing and commercialisation. The team also advises on the filing and prosecution of applications through the Paris Convention for the Protection of Industrial Property, 1883, and the Patent Co-Operation Treaty.
On designs, the team advises on design searches and prosecutes applications from filing through registration.
On trade marks, the team conducts availability and knockout searches, files and prosecutes applications through to registration, and handles objections and oppositions that may arise. It also acts in infringement and passing-off matters where a mark is used without authorisation, and manages renewals and portfolio maintenance as a brand’s protection matures.
On copyright and related rights, the team advises on copyright registration and on what can be protected as a geographical indication under the Geographical Indications of Goods (Registration and Protection) Act, 1999. Where a work is used without permission, it acts in copyright infringement and enforcement matters, drawing on the same enforcement capability that runs across the wider IP practice.
Transactional work includes technology transfer, agreements governing commercialisation of IP, IP due diligence, IP licensing, assignment, and franchising, while enforcement extends to anti-counterfeiting, opposition and cancellation proceedings, alternative dispute resolution and litigation before Indian courts and the IP Office.
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In a straightforward case without objections or oppositions, trademark registration presently takes approximately 14–18 months. This timeline may vary depending on the workload of the Indian Trade Marks Registry. A trademark search before filing helps identify potential conflicts early.
Yes.
No.
IP due diligence typically involves verifying ownership and chain of title for patents, trademarks, copyrights and designs; identifying disputes, oppositions or potential risks; and reviewing existing licences to confirm that the IP assets are valid, subsisting and transaction ready.
A patent search reviews existing patents and published literature worldwide to assess whether an invention is likely to meet the patentability requirements (novelty, inventive step, and industrial applicability) and whether it falls under the non-patentability exclusions under the Patents Act, 1970, before a patent application is filed.
Once filed, a trademark application is examined by the Trade Marks Registry under Section 9 and Section 11 of the Trade Marks Act, 1999, for distinctiveness and potential conflicts with existing marks. If accepted, the application is published for opposition from interested third parties. Thereafter, the trademark receives registration for a period of 10 years, if no opposition is filed or once any opposition is resolved in the applicant's favour.
Trademark infringement occurs when an unauthorised party uses an identical or deceptively similar registered trademark in relation to the same or similar goods or services in a manner likely to cause confusion among consumers, as provided under Section 29 of the Trade Marks Act, 1999.
Patent licensing permits a patentee to authorise another party to manufacture, use or sell the patented invention on agreed terms, typically in exchange for royalties or other consideration. The patent owner retains underlying ownership of the patent.
An assignment transfers ownership of an IP right to another party. A licence permits the licensee to use the IP without transferring ownership; the original owner retains title, subject to the terms of the licence.
Yes. Filing or defending a trademark opposition, together with related cancellation and rectification proceedings before the Trade Marks Registry, forms part of the firm's IP enforcement practice.
Businesses should consider whether the invention is likely to meet the patentability requirements, whether to file in India alone or also in other jurisdictions, and how patent protection fits into their broader commercial and licensing strategy.
In certain cases, yes. For example, a logo may qualify as an artistic work protected under the Copyright Act, 1957 and may simultaneously be registered as a trademark under the Trade Marks Act, 1999, as the two forms of protection serve distinct purposes. If the work is capable of being used in relation to goods or services, the applicant must first obtain a No-Objection Certificate (NOC) from the Trade Marks Registry before filing the copyright application.
Franchising arrangements typically involve licensing the franchisor's trademarks and other IP rights to the franchisee, together with contractual terms governing the use of those rights. This is handled as part of the firm's IP transactions practice.
The remedies and course of action depends on the nature and scale of the infringement. Fox Mandal assists and coordinates in carrying out investigations, issuance of cease and desist notices and legal notices, social media takedowns, coordination with customs authorities to prevent the import of counterfeit goods, civil/criminal proceedings and appearing before Courts, depending on the circumstances and the appropriate course of action.
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