Swati Sharma

Her expertise and practice areas are provided below.

Intellectual property- Advisory, strategy & prosecution

Swati specialises in IP portfolio management involving the entire life cycle of IP, advising on know-how, business process, inventions, brand adoption/ selection, protection, enforcement and commercialisation process in India and SAARC regions. She has serviced IP portfolios of Fortune 100 companies and large and top conglomerates in India and internationally.

Her IP advisory and strategy practice involves giving businesses the confidence to launch or expand new products or services with complete IP protection and commercialisation and monetisation recommendations and models, enabling them to realise the true value from IP. She has also been involved in creating strategy for companies towards achieving a well-known status for their brands.

Her IP advisory experience extends to:

Internet laws and privacy laws: Swati has handled several INDRP and UDRP complaints and received favourable orders such as bing.in, houzz.in. Handled a significant domain name take over transaction for Trent Ltd. involving the domain name www.westside.com, www.zudioapparels.com. She has extensively advised on piracy and privacy related issues on the internet, data protection, intermediary liability, privacy policies and the like.

Advertising Laws: Swati has experience in advising on Advertising Laws in India and the regulations of the Advertising Council of India. She has reviewed numerous advertising campaigns to be published in electronic and print media and advised on legal issues relating to advertising, privacy and Intellectual Property Laws, unfair competition, most prominently for Tata, Flipkart, Moet & Chandon.

Intellectual property- commercial & transactional

Swati’s experience ranges from IP audits, IP due diligences and identifying value in IP emanating from takeovers, mergers and acquisitions, sale, collaborations and similar commercial transactions.

She specialises in conducting IP diligence in mergers and acquisitions to identify degree of protection, extent of protection, value from IP to the company, potential risks and opportunities. She provides strategic advice to safeguard, protect and enhance IP assets throughout the transaction process, ensuring a smooth transition and optimal IP management post-merger.

Her experience varies from drafting, review, and negotiating contracts related to IP transactions, including licensing, franchising, collaboration agreements, tie-ups, business transfer agreements, joint ventures, assignments, research and development agreements, and technology transfer, technology collaboration, joint development agreements. Her expertise ensures that the client’s interests are protected and that contractual terms accurately reflect the value of their intellectual property.

She has conducted numerous IP portfolio audits and diligences for takeover, merger and similar commercial transactions including for the TATA- Pepsi JV “Nourishco”, acquisition of brands for Cargill Inc. Swati has worked on several confidential and high-stake time sensitive acquisitions, prior to brand launches. Some significant transactions have been handled for clients such as Air India, Cargill Inc., Tata Sons Pvt. Ltd., Flipkart, Cleartrip, TCNS, Tata SIA Airlines, and many international companies listed in Fortune 100, to name a few.

Intellectual Property contentious & disputes

Swati has extensive experience in contentious matters including developing strategies for a comprehensive global protection and enforcement mechanism for IP. Her IP contentious and disputes experience ranges from Trademark and Patents oppositions and cancellations before the 5 Trademarks office (TMO) in India, Reviews and Appeals before the TMO, Appeals and cancellations before the Intellectual Property Appellate Division- High Court (IPD), Settlement negotiations and alternative dispute resolution, Enforcement and protection strategies.

Her experience in contentious matters also extends to international territories and includes IP international clearance, strategic counselling, domestic and international prosecution, brand enforcement, cease and desist work, oppositions and cancellations, dispute resolution, assignments/coexistence agreements, multi-jurisdictional licenses, recordation issues, and domain name disputes.

Swati has also worked closely on the Unreal Campaign of INTA that deals with creating awareness and educating students internationally on counterfeiting issues. The role involved educating school and university students on the value of original goods, genuine goods and the impact of counterfeit goods on the economy.

• Assisted in re-branding of Air India, post the acquisition by Tata.
• Argued and got TCS, T logo of Tata Sons and Flipkart declared as well-known trademark and entered into the Register of well-known trademarks under Rule 124, Trademarks Act;
• Assisted Estee Lauder in their commercial and strategic tie-up with Nykaa to conduct Beauty Awards in November 2022 and 2023;
• Was involved with the disputes team in successfully filing a writ petition on behalf of Bridgestone against an order passed by the Controller General of Patents, Designs and Trademarks, where the Delhi High Court in a notable judgment on October 12, 2022, observed that the inaction/negligence of the Registrar of Trademarks in this case should be unpardonable, if the slogan of ‘Ease of doing business in India’ is to be truly achieved’. The Hon’ble Judge accordingly set aside the orders passed by the Respondent and restored the oppositions filed by the petitioners. The Hon’ble Judge further directed that the protection extended to the international trademark applications under Madrid Protocol would remain suspended till the oppositions of the petitioners are decided and that the applicants in respect of the said trademarks shall abide by the same.
• Assisted in representing Bose Corporation before the Hon’ble Delhi High Court on January 17, 2023 in an appeal from the order of the Trademarks office refusing to register the mark SOUNDLINK. In allowing the appeal and directing the Trade Marks Registry to allow the trademark SOUNDLINK in class 9 to further proceed towards advertisement in the Trade Marks Journal, it was held that a designation may have a suggestive significance in connection with the goods which does not render it inappropriate for use as a trade-mark. The test is the imaginativeness involved in the suggestion, that is, whether the suggestion is so close and direct that it is apparently descriptive and generally useful in approximately that form to all merchants marketing such goods or so remote and subtle that it is fanciful and not needed by other merchants of similar goods.

*Experience listed above is that of the Partner before she joined the Firm.

• Bar Council of Delhi, India
• Member of International Trademarks Association (INTA) where she is a part of INTA committees since 2009 and current co-chair of the Programming sub-committee and the Brands & Innovation Committee of INTA (2022-2023)

• Recognised as “Leading Lawyers in Intellectual Property” by Legal Era, 2022 & 2023 listing
• Recognised by BW Legal World 40 under 40 list of exemplary lawyers, 2022
• Received “Star Woman Lawyer of the Year 2021” – Legal Era Women in Excellence Awards