R. K. Dewan & Co. > Chennai, India > Firm Profile

R. K. Dewan & Co.
DARE HOUSE ANNEXE, 4TH FLR, NO 44
2ND LINE BEACH
CHENNAI 600001
India

Intellectual property Tier 1

IP specialist R. K. Dewan & Co. is adept across all aspects of filing, prosecution, and transactional and contentious IP, with extensive experience in sectors such as life sciences, manufacturing, automobile and IT. The firm’s principal Mohan Dewan has considerable expertise in patent and trademark litigation and commercialisation, while patents head Niti Dewan is renowned for handling a significant volume of domestic and international patent portfolios. In New Delhi, recent arrival Anju Agrawal – a senior advocate and litigator – has represented various international and national entities before the Delhi High Court, Bombay High Court, Kolkata High Court and Delhi District Courts. Other recommended individuals include international trademarks head Dinesh Nair and registered patent agent Disha Dewan. All named lawyers are based in Mumbai unless otherwise noted.

Practice head(s):

Mohan Dewan; Niti Dewan; Disha Dewan; Nirbhay Bhardwaj; Anju Agrawal; Dinesh Nair; Amar Prakash Singh; Rakesh Singh; Arvind Patre; Ameet Deshpande; A K Balaji; Nithya Somasundaram

Key clients

Emerson group

Reliance Industries Limited

Parle Products Ltd.

Eduspark International Private Limited

Hem Corporation Private Limited

Meetee Infotainment

Bajaj Auto Limited

Finolex Cables

Tata Consultancy Services & Tata Classedge

M/s. Sunshine Velvet Private Limited

M/s. Atomberg Technologies Private Limited

Rishabh Plastic Products LLP.

Captain Tractors Private Limited

Electronica Hi-tech Machine Tools Pvt. Ltd.

Kamal & Sons

Carl Freudenberg KG

Mahindra Group

National Payment Corporation of India

Malpani Group

Huawei Technologies Co., Ltd.

Kute Sons Dairys Limited

Tenneco Clean Air Indian Pvt. Ltd.

Cooper Corporation

Nilkamal Limited

Kleenage Products India Private Limited

Addprint India Enterprises Pvt. Ltd.

Automobile Lamborghini S.P.A

Work highlights

  • Assisted Kamal & Sons in taking criminal action against trademark infringement in the United Arab Emirates.
  • Assisted Parle Products in filing a suit for permanent injunction against Britannia Industries in relation to disparagement, infringement and unfair competition regarding video and print advertisements.
  • Advised Reliance Industries and its subsidiaries on patent drafting, patent searching, prosecution and post-grant maintenance requirements in India.

Intellectual property > PATMA: patent and trade mark attorneys Tier 1

R. K. Dewan & Co. is the first port of call for leading domestic and international clients operating in India, including Fortune 500 companies, which seek the team’s extensive services in the filing and prosecution of patents and trademarks. The main names to note include the firm’s principal Mohan Dewan and head of patents and business development Niti Dewan, both of whom are based in Pune, and the Mumbai-based duo of Disha Dewan and Amar Prakash Singh, who have impressive expertise in trademark-related matters, an area in which recent arrival Anju Agrawal (in New Delhi) also excels.

Practice head(s):

Niti Dewan

Work highlights

  • R K Dewan has completed over 80 years of dedicated and excellent service in the IP field, one of the longest standing IP law firms in India with the highest reputation for quality, honesty, and expertise representing over 5,000 corporate and individual clients worldwide reflecting top Indian companies, multinationals & Fortune 500 companies across a broad spectrum of industries & all technology sectors.
  • DOMESTIC WORK: Almost 70-75% of R K Dewan’s work is domestic. We cater to all types of clients’ right from individuals to Fortune 500 companies. Thousands of Indian companies have chosen R K Dewan after vetting us, based on our extensive knowledge of IP in India and on the superior quality of our work be it prosecution or litigation. These companies have visited our offices, interacted with our attorneys, seen our work first-hand and have decided to continue to entrust their IP matters to us for decades. This is a real testimony to R. K. Dewan’s expertise in the IP arena, when clients visit various IP firms in India and choose us after careful consideration.
  • INDIA-CENTRIC WINNING STRATEGIES: R K Dewan is highly involved in IP litigation across India i.e. we have a pan-India presence when it comes to litigation. There are 736 District Courts in India and we are uniquely poised to file and defend suits in most of these Courts; and we carry out litigation in these District Courts, apart from the High Courts of New Delhi, Bombay (Mumbai), Kolkata & Madras (Chennai) and at the IPAB. Currently we are handling 130+ on-going litigation matters across India.
  • Another vertical of our Litigation team also handles Civil Non-IP cases for our clients mainly Recovery and Cheque Bouncing Cases in various jurisdictions.
  • Furthermore, R K Dewan is witnessing more and more new clients discovering our firm, be it through our work which speaks for itself or our reputation – and coming to us with matters from all over the world (USA, China, Europe, Korea, Taiwan, Brazil, New Zealand etc).
  • R K Dewan also has a very strong team in both prosecution & litigation across all verticals including Life Sciences, Information Technology, mechanical, automotive etc. R K Dewan has over 450 clients in the Life Sciences & work is not restricted to pharmaceuticals alone but also includes voluminous amounts of work.
  • The R K Dewan team is extremely well equipped to handle all Patent, Trademark, Design, Plant Varieties, National Biodiversity Authority and other matters relating to even life sciences in India. This is evident by the increasingly large number of life science cases being transferred to R K Dewan by international clients and associates, especially in the patents sector, due to our expertise in obtaining patent grants in India.
  • Recent Developments at the firm
  • Increased number of major trademark portfolios (both domestic & international) transferred to R K Dewan from other Indian law firms, evidencing the growing international recognition of the firm (as evidenced by the case studies provided)
  • R K Dewan successfully completed 5 years of our liaison office in Dallas, USA as well as 4 years of our China office in Dalian leading to an increase in business from China by 30%
  • There is a major amount of hiring activity being undertaken at R K Dewan – and the patent team is rapidly expanding. We have recruited 1 Joint trademark registrar and 5 trademark examiners in the last year alone.
  • R K Dewan has successfully been audited and approved for the new ISO 9001:2015 standard– a certification that is provided only after rigorous auditing of a firm’s management systems, working procedures and practices, ensuring compliance with the high standards of the International Organization for Standardization (ISO), Switzerland.
  • R K Dewan has introduced software-based tools and incorporated robotic processes and artificial intelligence to improve the client experience and service.

 

Statistical Highlights:

PATENT

·       Over 1250 Indian patent applications filed

·       Over 300 patent applications filed for domestic clients in 42+ countries globally

·       Total number of patent specifications drafted in-house per year (in nearly all areas of technology) – Approximately 850

·       Over 600 patent grants obtained for clients worldwide

·       Over 150 patent searches conducted in-house including patentability, novelty, prior art, technology maps, invalidation and infringement analysis searches.

 

TRADEMARKS

·       Nearly 2500 applications at Indian Trademarks Registry filed in 2020

·       100% increase in international trademark filings in 2020 to present over previous year (filings in over 62 countries)

·       Over 3000 trademark searches conducted

·       300+ Madrid refusals have been attended to.

·       600+ trademark oppositions filed and over 500+ trademark oppositions defended

·       650+ Design & Copyright applications filed in India; 100+ applications internationally

·       Numerous active opposition (pre & post grant), revocation & infringement proceedings on-going in Courts across India (160+ active litigations in the country)

RECENT AWARDS:

  • 2022 Corporate INTL Global Awards (International Patent Prosecution Law Firm of the Year in India)
  • ASSOCHAM IP Excellence Awards 2021 (Top Firm in IP Portfolio Management)
  • The Global IP Awards presented by IAM & WTR (Globe Business Media Group) – Winner of the Trademark Firm of the Year (2019), Ceremony in London.
  • Managing Intellectual Property Asia Pacific Awards – Winner of Trademark Prosecution Firm of the year 2019
  • RKD awarded under the category of ‘Intellectual Property Enforcement – Indian Law Firm Awards 2020 by India Business Law Journal.
Department Name Email Telephone
Principal Dr Mohan Dewan dewan@rkdewanmail.com +91 20-66871222
Patent & Trade Mark Attorney | Head of Patents & Business Development Dr Niti Dewan niti_dewan@rkdewanmail.com +91 20-66871224
Photo Name Position Profile
A K Balaji photo A K Balaji Senior Legal Associate
Nithya S photo Nithya S Senior Legal Associate
Patent Attorneys, Associates and Agents : 75
Lawyers and Trademark Agents : 35
Patent and Trademark Paralegals : 40
Administrative staff : 20
English (fluent)
Hindi (and several Indian regional languages)
INTA - International Trademark Association
AIPPI (Association for the Protection of Intellectual Property)
American Intellectual Property Law Association (AIPLA)
Asian Patent Attorney Association (APAA)
Chartered Institute of Patent Attorneys (CIPA)
International Federation of Industrial Property Attorneys (FICPI)
LES (Licensing Executives Society)
:

  • At RKD, our Diversity and Inclusion (D&I) mission is to emerge as a leader through insight, innovation, diversity and inclusion. We put our people first as we work to deliver excellence in service to our clients. We accomplish this by integrating our goals and concepts into the way in which the firm manages its people and business.
  • Our D&I efforts are initiated and led from the very top of the global firm by our senior management team, holding our leaders accountable. Firm resources − including our Professional Development, Marketing and Recruiting departments − are aligned to actively support the implementation of our Group Diversity and Inclusion Action Plans.
  • These plans are tailored to each group’s unique D&I priorities, needs and culture, demonstrating how each group would focus on such goals as advancement, retention and equitable utilization of team expertise. Practice group leaders are responsible for managing their action plans and the results stemming from them.
  • Our firm’s recruitment process is based on merit and merit alone. We do not discriminate on any basis including religion, caste, age, sex, disability, or economic and social background. We have team members from 16 states in India that speak over 10 different languages and come from different religions. We celebrate our differences and practice respect for everyone and that is the basis of our strength.
  • The firm’s strategy focuses on recruitment, retention, advancement and promotion of the best lawyers. Our three strategic pillars being:
  1. Workforce – The objective is to build an inclusive and sustainable pipeline for succession in leadership and promotion.
  2. Workplace- The objective is to create an inclusive work environment that values differences and promotes respect, support and a sense of belonging to retain talent across all lawyer levels.
  3. Marketplace – The objective is to proactively engage clients in discussions around effective D&I strategies to support all communities and foster effective outreach to diverse suppliers.
  • These pillars provide a framework for the firm to address all aspects of the following areas:
  1. Recruitment – Increasing the representation of lawyers across all cultures, backgrounds and experiences.
  2. Engagement – Creating an inclusive and supportive environment for all RKD associates and employees
  3. Advancement and Promotion – Ensuring that opportunities for success and leadership are accessible to everyone
  4. Pipeline Programs – Supporting the education and development of future legal professionals from diverse cultures, backgrounds and experiences
  5. Supplier Diversity – At RKD, we consistently track the firm’s engagement with certified women-owned and minority-owned businesses. The goal is to diversify our supplier network with these businesses over time.
  • As we work toward identifying specific benchmarks, we strongly encourage our attorneys to consider and recommend women-owned and minority owned-businesses as opportunities arise. This initiative is important to us and reinforces our commitment to our clients, our communities and our people.

  1. Category – Trademark (Passing Off) Litigation 

Grand View Research (GVR) is an India & U.S. based market research and consulting company, headquartered in San Francisco, having revenue of $60 Million, and database featuring statistics and analysis on 46 industries in 25 major countries worldwide.

Type of work –

  • A company named ‘Grand View Report’ was found in passing off GVR’s registered trademark by adopting a nearly identical company name, acronym and colour combination in its logo and providing identical services under the marks ‘GRAND VIEW REPORT’, ‘GVR’.
  • R K Dewan & Co. has successfully protected the client’s trademark in India and simultaneously initiated a passing off action against Grand View Report. Accordingly, several trademark applications were filed for the protection of the marks. The passing off suit was also filed amidst the ongoing pandemic before the Pune District Court and now the matter has been settled and a decree has been obtained in Client’s favour. Grand View Report’s website has been taken down and is not in operation any more.
  1. Category – Trademark (Infringement) Litigation, Investigations – UAE

Kamal & Sons, (annual turnover 50 Cr) a Star Export House and the owner of the renowned “S.B. DEER BRAND” ® Sat Isabgol (Psyllium Husk & Powder)

  • R K Dewan & Co. assisted Kamal & Sons in taking criminal action against trademark infringement in the United Arab Emirates through our representatives and with the assistance of the Dubai Police. Upon investigation by the Dubai Police, the Case was sent to the Public Prosecution and then to the Criminal Court for hearing and issuance of a Decision.
  • September 2022, the Court passed a Decision in favor of Kamal & Sons. The Court has also imposed a penalty of AED20000 (INR 4, 45,000 Approx.) to be paid by the Infringer and ordered the destruction and confiscation of three truckloads of counterfeit products weighing about 7.41 tons (6722 Kilograms) under the infringing “STAG” trademark.
  1. Category – Patent Searches, Drafting, Filing, Prosecution and Portfolio Management, Out-Licensing.

Mahindra Group (USD 21-billion-dollar multinational, multi-industry Indian conglomerate, presence in more than 21 countries)

Type of work –

  • Since 2019, R K Dewan & Co. has filed over 75 patent applications for Mahindra and drafted over 150 provisional and complete specifications from scratch.
  • Prosecuting patent applications and obtaining grants at the Indian Patent Office and also in the USA, Europe, South Africa, Brazil and Sri Lanka as well as handling oppositions (both pre-grant & post-grant) at various Patent Offices.
  • Currently the firm handles a portfolio of over 300 patent applications worldwide.
  • In the past year, R K Dewan & Co. has conducted more than 25 Freedom to Operate searches for Mahindra including in European countries, India and South Korea and assisted in licensing out its paint spraying technologies (for cars) to other industries by drafting and executing licensing agreements.
  1. Category – Trademark, Trade Dress Litigation & International Prosecution

Parle Products Ltd. (India’s largest manufacturer of biscuits and confectionery for 80+ years, revenue ranging in USD 6000 Million, 70% share of the global biscuit market.)

Type of work –

  • Britannia v. Parle (Bangalore): Britannia Industries Ltd filed a suit for trade dress infringement against Parle for use of the phrase “Twenty Twenty” for biscuits, at the Bangalore City Civil Court which passed an ex parte interim injunction. R K Dewan & Co. on behalf of Parle appealed to the Karnataka High Court against the Order. Due to R K Dewan’s efficient argument at the City Civil Court, the Interim Injunction order against Parle was stayed by the Court. Further, The High Court allowed disposal of the biscuits which have been already manufactured by Parle.
  • Parle v. B & B Bake (New Delhi): A suit for passing off was filed in District Court of Delhi against Parle Products Pvt. Ltd. by B & B Bake Pvt. Ltd. seeking injunction against use of the trademark AMERICANA for its bakery products, of which the plaintiff claimed to be the prior user. An ex parte injunction was granted in favour of Plaintiff by the District Judge and after hearing the parties confirmed the ex parte
  • Against the order of Ld. ADJ, R K Dewan filed an appeal at the Delhi High Court and had of the order of the District Court vacated, stating that since the word was a dictionary word evoking the affinity of the product to America, the plaintiff could not claim exclusive rights to it.
  • Addtionally, R K Dewan & Co. handles the Parle International Trademarks Portfolio comprising a total of 700+ marks in 75 countries worldwide as well as Parle’s domestic trademark portfolio, now amounting to 600+ marks which includes the mark ‘Parle-G’, the largest selling biscuit brand in the world by volume.
  1. Category – All round IP protection

Reliance Industries Limited (RIL, a Fortune 500 Indian multinational conglomerate company with annual revenues >$60 billion, engaged in energy, petrochemicals, natural gas, retail, telecommunications, mass media, and textiles. India’s largest exporter – 7% of India’s total merchandise exports in over 100 countries.)

Type of work –

  • R K Dewan & Co. has worked with RIL and its various subsidiaries for patent drafting, patent searching, prosecution & post-grant maintenance requirements in India and abroad for over 10 years.
  • Overall patent portfolio: The firm handles the entire patent portfolio comprising a total of approximately 800+ Indian patent applications/patents and approximately 1250+ international patent applications/patents covering diverse technologies in over 31 countries/regions.
  • Trademarks: R K Dewan & Co. files trademark applications in India and internationally and assists RIL in navigating the hazards in IP in all sectors.
  • Advises regarding Copyrights and Design in the artificial intelligence space and trade secrets. RKD has filed & obtained multiple Design registrations for the client.

 

ANALYSIS OF 10 CHANGES BROUGHT ABOUT BY THE INDIAN PATENTS (AMENDMENT) RULES, 2024.

CHANGE 1: Change in Rules relating to submitting of details of corresponding applications (Section 8 Form 3) for a patent application under amended Patents (Amendment) Rules, 2024.

R K Dewan & Co. Opens New Office in Noida

R K Dewan & Co. is pleased to inform that, we have recently reallocated our Delhi branch office to a larger space in Noida, marking a strategic expansion for our firm in the National Capital Region.

India jumps to sixth position in patent filings

Worldwide intellectual property registrations in 2021 have shown an increase over the previous years. 3.4 million patent applications have been received by various patent offices around the world, out of which more than one-third have been received by the local patent offices of China. Receiving 1.59 million patent applications, China registered an increase of 5.5% over the previous year. USA was a distant second with 591,473, followed by Japan (289200), Republic of Korea (237998) and EPO (188788). Leap frogging of China is highlighted by the fact that if the filings of 2nd to 13th country are added up, they match up to the filings of China.

RKD News

R K Dewan & Co. is delighted to share that Dr. Mohan Dewan was invited by the Korea Intellectual Property Association (KINPA) to deliver a bilingual presentation in Korean and English on “The Importance of registration of IPR and the process involved in India” for the members of the KINPA on 9th August, 2022.

PCT Third Party Observations

World Intellectual Property Organization (WIPO) introduced Third Party Observations Service (TPOS) (under section 801(a), 804(b)) on April 13, 2017. This service allows third parties to make observations through the ePCT system (i.e., by accessing ePCT designated offices (DO) function) by citing prior art(s) which they believe to be relevant to the question of whether the invention claimed in the international application is novel and/or involves an inventive step.

Price of Service

The Government has issued new guidelines for hotels and restaurants with regards to levying of service charge.

Litigants do not have to go to Courts; Courts will come to the Litigants

On Tuesday 5th of July 2022, the Hon’ble Delhi High Court directed creation of 42 new Commercial Courts in the National Capital within six months, to expedite the speedy disposal of commercial disputes. The Court issued the directions while hearing a Public Interest Litigation (PIL) which stated that the 42 new Commercial Courts which were notified and/or sanctioned by the Delhi Government on April 13, 2021 were not setup.

The Tata Group !!!!

We, R K Dewan & Co. are proud to be associated with the Tata Group.