This interview has been published by Anshi Mudgal and The SuperLawyer Team
With your vast experience and accomplishments in the legal field, could you share what initially sparked your interest in law? Was there a defining moment that led you to pursue this career, and what drew you specifically to specialize in intellectual property law?
The greatest reason or inspiration for taking up law was my maternal grandfather who came from a family having many generations of lawyers including his father and uncles. My grandfather was himself a lawyer by qualification but joined the Sales Tax Department and retired as Commissioner of Sales Tax, Government of Maharashtra. He was extremely passionate about law and on behalf of the Sales Tax Department, briefed and closely interacted with many distinguished lawyers of his time including the then Advocate General Mr. H. M. Seervai whom he deeply admired. The countless anecdotes he narrated to me and the zeal he had for the legal profession had a profound impact on me, unknowingly and when the time came for me to choose my profession, law came as a natural choice.
While Law was in the family, Music, Literature and Art also ran deeply in my family, my mother being a Hindustani Classical Vocalist and my grandmother, a vocalist, poet, playwright and writer. They would often participate in seminars on copyright in relation to the fields of music, literature and art. I would accompany them and listen to the sessions with great interest. That sparked my curiosity and by the time I completed my graduation in law, I found IP to be a fascinating and an ever-evolving subject having an application across industries and I was convinced to take it up as my field of specialization.
You began your career as an Associate with a law firm. What were some of the key experiences during this early phase that helped deepen your understanding of the law, especially intellectual property law, and laid a solid foundation for your expertise in this area?
I began my career with a full-service law firm Desai & Diwanji where I mainly worked on corporate and commercial transactions. My experience in intellectual property law began when I joined my present firm in the year 2008. Exposure to myriad cases in the areas of IP prosecution, legal advisory, contentious matters, anti-counterfeiting, IP transactions etc. involving different kinds of IP including trade marks, copyright, designs and some aspects of patents, right in the beginning of my tenure, gave me many opportunities to research, learn, resolve issues and deepen my understanding of the subject. Also, I firmly believe that there can be no substitute for hard work in laying a strong foundation, especially in the initial years of your career. I spent a lot of time reading, researching, studying the suggestions of my seniors and colleagues which I continue to do as learning is a never-ending process and updating yourself from time to time ensures you never feel complacent or stagnant.
Throughout your career, you have worked on complex IP transactions in industries such as media, entertainment, pharmaceuticals, and FMCG. What do you believe are the primary challenges businesses face when dealing with commercial transactions involving IP rights?
As for already existing IP of the parties involved, gaps in IP ownership, lack of proper documentation for securing IP rights, third party claims to IP, vulnerability of registered IP to revocation are some challenges seen in commercial transactions involving IP rights. Similarly, while negotiating strategic collaborations or service contracts, differentiating between already existing IP and IP generated under the contract, deciding upon an ownership structure for the IP generated out of such services or collaboration could be challenging.
Your experience spans both domestic and cross-border IP disputes. How do international IP issues differ from domestic ones?
IP disputes per se, such as infringement, passing off etc., governed by Indian laws and taking place in India may not have material differences only by reason of one of the parties being a foreign entity. However, where these disputes emerge from cross-border contracts governed by foreign laws and have elements of IP protectable or enforceable under Indian laws, there could be challenges. Similarly, when an Indian entity wishes to enforce its IP rights against a foreign entity for acts done outside India, foreign laws may apply. Although IP laws worldwide have many commonalities, they are not completely harmonized. Concepts of authorship, ownership of IP, infringement, exceptions to infringement, availability of overlapping protection under different types of IP laws such as Copyright & Designs or Trade Mark & Designs, subject-matter of trade marks, copyright, designs or patents (more so in light of emerging technologies) might vary from jurisdiction to jurisdiction. Accordingly, these disputes may have different nuances.
Could you share your insights from handling domain name disputes under ICANN’s UDRP? In addition, what role does arbitration play in resolving international IP disputes, particularly within frameworks like the ICC?
The domain name dispute resolution process under ICANN’s UDRP is effective particularly when disputes arise out of cybersquatting or prima facie bad faith registration of domain names. In my experience, this process has been cost effective, expeditious and helpful especially where the adverse party is not located in India or where the registrant’s name and address is not disclosed by domain name registrars. Institutional arbitration, such as under the ICC Rules, plays an important role in resolving multi-jurisdictional / international IP disputes. However, these are typically disputes arising out of contracts and lawyers play a crucial role in informing the arbitrator (who may be qualified in laws other than the governing law of the contract) of nuances in the laws that are applicable to the dispute.
Intellectual property is often crucial in mergers, acquisitions, and private equity transactions. How do you ensure that IP rights are effectively safeguarded during these processes, and what is their role in such transactions?
Intellectual property is often the driving force for most acquisitions, mergers and collaborations. Effectively identifying IP, particularly unregistered IP, ensuring a proper and seamless transfer of all IP, registered or unregistered in favor of the acquirer, designing an efficient IP matrix in cases of joint IP ownership / collaboration, identifying third party contribution, claims or rights in IP creation and devising appropriate techniques to secure all IPR through documentation and statutory filings are some aspects to be considered during such transactions.
What advice would you offer to aspiring IP lawyers or those considering a career in intellectual property law? Also, could you share some resources or strategies you use to stay current with global legal trends, particularly in the IP domain?
To aspiring IP lawyers, I would like to say that IP is a fascinating subject having many dimensions and is ever evolving particularly with newer and emerging technologies. IPR is relevant across industries and with the growing awareness of IP, career opportunities in this field are increasing. You could choose sub-areas of your interest to practice such as IP prosecution, litigation or transactions and advisory. However, aiming for holistic exposure to various kinds of IP cases especially in the initial years will certainly help in the long run. Needless to say, like in any other field, hard work and a well-balanced approach helps one grow in the profession and also as an individual. These days there are several online platforms, newsletters, digital publications and media offering information and updates on IP related transactions and disputes, both domestic and international. There are also many subscription-based databases where one can find articles, copies of judgments and orders for detailed reading.
Get in touch with Kavita Mundkur Nigam –
