The Most Happening Thing to Learn in IP law
October 10, 2019
“It takes 20 years to build a reputation and five minutes to ruin it. If you think about that, you’ll do things differently.” – Warren Buffett
Brand is the reputation of a business. It is what people remember. It is not always just a word or an image, but what people think or the feelings they experience when they think of a product, service or business.
For instance, over many decades, Coke has tried to associate its cola with happiness, and spent billions of dollars in advertising to make that happen.
Now imagine how it would be if I could take a bottle, pour some black water into it, and put up a label calling it Coke, and started selling on a street corner. It would be a pandemonium, right?
This is where trademark law steps in to make brands and significant investments that go into building a brand viable and protected from infringement and misuse.Trademark, therefore, is a basic foundational concept of capitalism – without it, our economic system would collapse!
Also, trademark was not important in the local economy. When everyone lived in a village or a small town, and all produces were local and sold through trusted traders, there was no need for trademarks. However, as the economy grows, and products are sold throughout a country or even the world, trademark becomes more important. And this is why, protection of trademark has been a key feature of globalization through the WTO and other bodies.
Internet and global economy has only continued to increase the value oftrademarks as we deal with strangers more and more in terms of commerce and trade. We cannot trust a human being or business as easily as we trust in brands because brands are valuable and take time to build!
If you had to travel to Africa or Australia, and needed to buy a laptop or phone, you may go for an Apple product rather than a brand you have not seen before, because you have trust in the quality of Apple products. And this is what allows Apple to charge a premium for its products. You may go to any corner of the world and expect a certain kind of service from Uber or a Hilton hotel. That is the magic of branding, which is only possible thanks for trademark protection.
Trademarks are more widely used than other forms of IP. Business organisations in almost every sector of the economy employ trademarks to protect their brands. Businesses that fail to build a brand are often wiped out by the ones that manage to build a strong brand in any market. Also, businesses that focus on building a brand are usually far more successful and profitable than the ones that do not focus on building brands.
However, while trademarks are becoming increasingly valuable and critical to businesses, it is also now most vulnerable to infringement. Apart from infringement, there are many types of disputes that frequently arise over these extremely valuable assets.
One major area of work for lawyers in trademark law is filing, licensing and drafting various kinds of agreements that relate to trademark. Here are the most important ones you must learn to draft:
- Trademark registration and filings
- Licensing Agreement
- Franchising Agreement
- Assignment Agreement
- Merchandising Agreement
- Trademark and licenses portfolio management
- Opposition and objections during registration of trademark
- Domain name and squatting disputes
- Infringement and passing off
- Disputes over licensing, merchandising and franchising
- Review, rectification and cancellation of trade marks
- Monitoring and preventive measures
The most lucrative areas of work for IP lawyers related to trademark happen to be in the industries that cater to mass market as well as luxury. Bigger the business, the more it is sensitive about its trademark protection, which translates into substantial legal budgets. We have provided a comprehensive list of industries which spend big bucks on trademark.
Trademark licensing, prosecution and litigation consists of the vast majority of work that IP lawyers do in India. Despite that, there are absolutely no courses that teach the practical aspects of this work. All courses currently available in the market are restricted to teaching merely sections from statutes and a few case laws. This does not help the learners to accomplish the actual tasks that clients bring to their table.
In this context, in order to teach the most relevant and specific skills one needs to thrive in this profession doing trademark law, we have launched this course on Trademark Licensing, Prosecution and Litigation. This is meant for serious practitioners of IP law, those looking to make an inroad as an IP lawyer or litigator, or get a job in an IP law firm.
This is the most detailed trademark course in India which focuses on providing important skills based on industry needs and application. This course provides a detailed understanding of strategy, creation, registration, monetization, prosecution and handling of trademark disputes in India and offshore, with multiple practical examples and case studies.
Trademarks are frequently monetized through a variety of contracts in different industries. Some of them have their own set of commercial jargon based on the commercial intent behind the transaction. Knowing what the jargon means and then learning how to draft such contracts are effectively crucial to build a career in this area. Plenty of sample contracts and drafting exercises are included.
And of course, there is a massive need for an army of talented lawyers who create contracts, register intellectual property, enforce agreements and IP rights, resolve disputes, handle investment agreements, JV contracts, licensing of various IP rights, protecting legal interests of the media companies, ensure compliance to myriad laws and keep the industry in shape.
What is the career potential after doing this course?
Trademark litigation has been a major area of interest for many lawyers because it is the biggest area of IP practice and litigation related to trademarks are always very well paid work as stakes are big.
There are mid sized IP law firms (appointing between 50-200 lawyers) which engage in registration of trademark, managing trademark portfolios, enforcement of trademark, disputes and litigation over trademark, licensing and assignment oftrademark and such other work. These law firms provide a great opportunity to have a rewarding career in trademark law to young lawyers.
Other than registration, trademark law practitioners have to deal with licensing, assignments, objections, oppositions etc. Trademark litigation has massively increased in volume over the years, turning trademark practice a very lucrative profession.
Apart from the top tier law firms, there are plenty of boutique law firms and many independent lawyers catering to startups and SMEs with respect to their trademark law needs. These lawyers also need these same skills and make very good money.
There is a lot to be done in the next 3 years. Also, the space has become highly litigious given tons of complaints, objections to misuse of marks etc having become routine. As a result, lawyers who can handle trademark litigation are in very high demand.
If you want to pick up some expertise and knowledge in trademark litigation, this is a great time. The market is not saturated and very few lawyers have comprehensive knowledge of these laws. It will definitely go a long way to make your CV stand out, impress the interviewer, get the next promotion, or even start your own practice.
You cannot learn these things by studying any particular statute, regulations or rules, and there are no substantive books or online sources that can help you here. Success in trademark law practice requires skills which are more varied than merely knowing the provisions of various stat
- FMCG and retail
- Food and beverages
- Sports and entertainment
- Fashion and apparel
- Export – import
- Decision makers and officers in brand-based companies, media and entertainment companies
- Lawyers looking to specialize in trademark litigation, the most prominent practice in the area of Intellectual Property Laws
- Lawyers looking to build a pra
- Practice in trademark disputes or licensing
- Law students looking to work in IP law firms or IP or TMT teams in big law firms
- Law students looking to work with product based MNCs
- Lawyers working for technology, e-commerce, media houses, FMCG companies that engage in a lot of advertising activities
- Entrepreneurs and directors who want to master legal aspects oftrademark
- Access to basic study material through online learning management system, Android and iOS app
- Hard copy study material modules to be couriered to your address
- 2 practical exercises every week, followed by feedback
- Based on the exercises, there will be live online video classes. You can ask questions, share your screen, get personal feedback in these classes.
- Classes are held after regular work hours. Typically classes are kept on Sunday afternoons or 8-9 pm on other days.
- You can ask questions, get your doubts cleared live or later through other online fora.
- What will you learn?
- Learn all the strategic work involved in trademark selection and creation of a trademark portfolio
- Assignments and licensing agreements
- Trademark disputes over unauthorised use, comparative advertising, infringement, passing off etc
- Learn how to handle the entire process of trademark registration fromtrademark search, classification, application including handling objections and opposition
- Learn how to create or assess trademark strategy for a business
- Learn how to calculate damages for trademark infringement
- Understand the commercial aspects of trademark transactions
- Learn how to act on behalf of large brand/ label
- Learn how to enforce trademark
- Apart from statutory knowledge, develop strategic thinking
- Draft various documents, petitions, applications until you are conversant with each
- Contracts for monetization of trademarks such as assignment, franchising, licensing and character merchandising.
- Optimally select trademark classes so as to minimize objections from registrar, competitors and third parties
- Accurately draft and file trademark applications to minimize defects and maximise the scope of protection of the brand
- Effectively draft and file pre-publication objections to prevent registration of marks that can impact your brand
- Respond to examination reports from the Trade Marks Registry to aggressively pursue registration
- Procedure to draft and file submission in a show-cause hearing before theTrademarks Registry
- Draft an effective User Affidavit
- Prevent competitors from exploiting your brand unfairly through effectivetrademark watch and initiation of opposition proceedings
- Combat frivolous oppositions through filing a counter statement in response to Notice of Opposition
- Learn how to draft different kinds of affidavits for submission of evidence in opposition proceedings
- Initiate proceedings for trademark infringement and passing off
- Calculate damages for infringement correctly
- Draft effective cease and desist notices that lead to faster settlement and avoid prolonged litigation
- Take strategic calls on matters such as review of decisions of the Trade Marks Registry
- Procedure of rectification before the Trade Marks Registry
- Learn how to draft and file a cancellation petition before IPAB
- Effectively drafting and filing an appeal before IPAB in connection with an impugned decision
- Deal with disputes regarding trademark infringement on the internet and cybersquatting
- How to prevent import or export of infringing goods by giving notice to Customs Commissioner
- Register non-conventional trademarks to protect and enforce mark
- Create a trademark monetization strategy for brand owners
- Structure and draft a contract for a franchising deal
- Strategise and draft a merchandising agreement
- Create a monitoring system for a portfolio of intellectual property
- Successfully draft various kinds of licensing and assignment agreements
- Prevent misuse of trademark by competitors in comparative advertisements etc.
- Get infringing content quickly removed from the internet by using a Takedown Notice
- Safeguard a brand’s reputation by preventing misuse of trademark
- Get quick injunctions to protect trademark and prevent loss of business
- Obtain international registration and enforcement of trademark
- Research and map trademark strategy of competitors
- Mortgage or pledge trademark to raise finance
- Draft effective trademark protection and assignment agreements in employment and consultancy agreements
- Defend your client or organization in trademark litigation
- Provide advice to brands and celebrities on how to deal with cybersquatters
- Use the UDRP process, .in registry process and Indian legal system effectively in domain name disputes and cybersquatting
- Advise parties on domain name sale transactions and draft contracts for them