Intellectual Property and Business Law in Mumbai

Trade secrets appear nowhere in this table because there is no registry for them in India — protection rests on contract and the action for breach of confidence.

The table above says where a matter goes. This one says why, and it is the part that catches businesses out. Each right and each forum uses a different connecting factor, so the same company in Mumbai can be answerable to offices in several different cities at once depending on what the matter is about.

Intellectual property is the firm’s primary practice area. Indian law recognises six categories, each governed by a different statute and administered by a different office.

The firm advises on eight practice areas. Each page sets out the forum that applies in Mumbai and the procedure that governs it.

The composition of a city’s economy determines the kind of legal work that comes out of it. These are the sectors in Mumbai where questions of intellectual property and commercial protection most often arise.

• Financial services and fintech — the city hosts the Reserve Bank of India, both national stock exchanges and the head offices of most Indian banks and insurers. Class 36 is crowded, and objections under Section 11 are common.
• Film, television and entertainment — title protection, character names and merchandising, at the boundary of trade mark and copyright.
• Pharmaceuticals — deceptive similarity between drug names is judged strictly, following Cadila Health Care Ltd v Cadila Pharmaceuticals Ltd, (2001) 5 SCC 73.
• Advertising and media — agency and publication marks, and campaign taglines.
• Food processing and FMCG — packaging, shape marks and colour combinations, with a high incidence of look-alike products.
• Real estate — project and developer names, generally in Classes 36 and 37.

Sector context is set out here to describe the local economy and to indicate where questions of this kind arise. It is not a statement about the firm’s clients or engagements.

Across every practice area, a small number of statutory periods dispose of more matters than the merits do. None of these is extendable in the ordinary way, and several cannot be extended at all.

Two of these are absolute. The 120-day written statement period in a commercial suit has been held by the Supreme Court to be incapable of extension, and the period to set aside an arbitral award under Section 34(3) may be extended by thirty days and no more. A missed request for examination under Section 11B of the Patents Act, 1970 is equally final — the application is treated as withdrawn and cannot be revived.

Businesses rarely arrive with a legal category. They arrive with a situation. These are the ones that come up most often, and the route each one takes for a party in Mumbai.

• Someone is selling under our name. If the mark is registered, an infringement action; if not, passing off, which is preserved by Section 27(2) of the Trade Marks Act, 1999. Either way the suit goes to the City Civil Court at Mumbai, sitting as a Commercial Court or, on valuation, higher. A cease-and-desist letter usually comes first, drafted carefully — a careless one can invite a groundless threats action.
• We are about to launch a product. Anything requiring novelty is filed before disclosure. A patent needs worldwide novelty and a design must not have been published anywhere, so a trade fair, a product page or a crowdfunding listing can destroy both. The trade mark search happens before the name is committed to, not after the packaging is printed.
• Our developer or agency has left with the work. An ownership question before it is an infringement one. A contractor engaged under a contract for service owns what they create unless there is a written assignment under Section 19 of the Copyright Act, 1957, and paying the invoice does not transfer it.
• A key employee has gone to a competitor. A post-employment non-compete is generally void under Section 27 of the Indian Contract Act, 1872. A confidentiality obligation is not, because it restrains use of specific information rather than the right to work. What can be protected depends entirely on what was drafted beforehand.
• The bank has issued a notice. Which statute matters more than the amount. Under SARFAESI the borrower has forty-five days from the enforcement measure to apply to the Debts Recovery Tribunal, Mumbai (Benches I, II and III) under Section 17, and negotiating with the bank does not stop that period running.
• Possession of our flat is years late. A complaint to the Maharashtra Real Estate Regulatory Authority (MahaRERA), not a civil suit — Section 79 bars the civil court where the authority can decide. The allottee elects under Section 18(1) between a refund with interest and staying in the project with interest for the delay, and the choice is worth thinking about before it is made.
• We have received a reassessment notice. The first question is whether the procedure under Section 148A of the Income-tax Act, 1961 was followed. If it was not, the defect is jurisdictional and can be raised by writ before the Bombay High Court without first exhausting the appeal.
• The contract has an arbitration clause and we want to sue. Section 8 of the Arbitration and Conciliation Act, 1996 obliges the court to refer the parties to arbitration on an application made before the first statement on the substance of the dispute. Filing a written statement first can waive the point.

Nothing formal is required to have an initial conversation, and there is no fee for it. It is more useful if a few things are to hand.