Prachi Agarwal

• Rising Star by Managing Intellectual Property
• IP Falcon Award at the Lextalk World Conference in Dubai in 2021
• Recognized as a leading lawyer in Trademark Litigation and Prosecution by Leaders League’s 2022

Some of the significant landmarks in her career include:

• Procured multiple decrees in favor of Super Cassettes (T-series) against infringement of copyright and got extensive damages of INR 21 lakhs
• Assisted in drafting the petition in Dr. Aloys Wobben and Anr. vs. Yogesh Mehra & Ors. – wherein the Supreme Court of India in a landmark judgment dated 2^nd June, 2014 settled the controversy concerning multiple remedies that can be adopted in proceedings for revocation of patents
• Roche v Cipla order dated 27^th November 2015 and 8^th December 2015: this is India’s first pharma patent infringement case in a post TRIPS world wherein the Hon’ble Division Bench held that the Patent is valid and infringed. This is also a landmark judgment on Patent Law in India
• Roche v Natco order dated 2^nd February 2017–This laid down the guidelines regarding expert evidence in Patent matters
• Zippo v Raja Bhai and Anr., CS(COMM) 758/2018, order dated 3^rd October 2018, by virtue of which the Zippo Trademark, Logo and shape mark were declared well-known
• Havells India Limited v. Rajeev Chawla CS (COMM) 176 of 2019 order dated 15th October 2019, by virtue of which the trademark LLOYD was declared well-known
• Procure multiple injunctions for BMS regarding their Patent pertaining to the anti-coagulant drug APIXABAN during the year 2019-2022
• Bristol Myers Squibb Holdings Ireland & Ors. Vs. Natco Pharma; CS (COMM) No. 342 of 2019, order dated 23^rd January 2020- wherein it was held that a suit for declaration of non-infringement filed under Specific Relief Act and not under the special law being the Patent Act, is an abuse of process of the Court

Prachi has been building her own thought leadership and spreading the message of IP through extensive writing and speaking engagement. Some of her engagements are as below:

ARTICLES

• Article titled “IP Waiver for Covid 19- an unfitting solution”, published with Legal Era Magazine, July 2022
• Article titles “Rising prominence of store layouts in IP disputes”, published with India Business Law Journal, April 2022
• Article titled “Patents and Public Health – an Indian perspective”, published with Lextalk World, June 2021
• Article titled“Too quick to judge: decoding conceptual similarity of trademarks”, published in the Trademark Lawyer Magazine of INTA in Nov 2020
• Article titled “Salient features of the High Court of Delhi Rules Governing Patent Suits, 2020” published in Asia IP, October 2020
• Article titled “Damages in Copyright Litigation”, published in Media Law International, 2018
• Article titled “Delhi High Court grants injunction against identical AMIR’S mark India”, published in World Trademark Review, Nov 24, 2017
• Article titled “India focus: a roadmap for success”, published in World Intellectual Property Review, Oct 2, 2017
• Article titled “Exploring expert evidence in patent matters”, published in Asia Business Law Journal, June 19, 2017
• Article titled “Are Characters Copyrightable in India?” published in Media Law International, June 2017
• Article titled “Cultivating New Business Strategies for Brand Owners via Associated Trademarks in India”, published in Asia IP, April 18, 2017
• Article on Patent Trolls in India-“Fit for India” published in IBLJ- May 2016
• Article on “Copyright Issues in Cover Versions and Version Recordings” published in Media Law International, April 2016
• Patent Troll: The Brewing Storm of Patent Reform in the United States of America, 15 J. Marshall Rev. Intell. Prop. L. 63 (2015)
• Defining Patent Utility: Potential of a Patent or Commercial Viability of the Patented Product?” published in IP Era, March-April 2016
• Defining Patent Utility: Potential of a Patent or Commercial Viability of the Patented Product?, Asia IP, Vol 8 Issue 1, December 2015-January 2016
• Competition Commission balances IP rights and anti-competitive practices in car spare parts case, World Trademark Review, 7^th September 2015
• Gillette fails to remove CHAMPION marks from register-M/s Gillette India Ltd v M/s Harbans Lal Malhotra & Sons Pvt Ltd, World Trademark Review, 24^th July 2013.

• Conducted a panel discussion on ‘Arbitration and Mediation: Better Options for IP Cases’, April 2021, Dubai.
• Prepared Lecture series for an online LLM program that Jindal Global Law School is conducting in collaboration with UPGRAD in January 2021
• Conducted IPR webinar series with Symbiosis Law School, Noida in October 2020
• Talk on Trademarks and Brand Building as well as Copyright Act 1957 and issues concerning management of IP such as infringement, protection and judicial remedy at an Intellectual Property Rights Conference on Startups at Banasthali Vidyapath, Jaipur, 7^th February 2018 organized in collaboration with Consortium of Women Entrepreneurs of India (CWEI)
• Conducted a session with middle and high school students of Gargi Sarvodaya Kanya Vidyala organized by CIPAM on 15^th December 2017
• Invited as a guest lecturer to the summer school organized by WIPO in collaboration with Rajiv Gandhi National Institute of Intellectual Property Management (RGNIIPM) and Maharashtra National Law University (MNLUN) at Nagpur, November 2017
• Talk on ‘Issues of fake, forgery, authentication and IP in art’ organized at ‘Art Exhibit 2016 – Masters of Modern Art’, organized by Global Art Hub, an online marketplace of art galleries and buyers

CHAPTERS OF BOOKS

• Updated the 2017 edition of the Halsbury Laws of India for GI, Privacy, Semi-conductors and Plant Varieties
• Updated the 2018 edition of the India Chapter for BBNA Bloomberg’s International Patent Litigation
• Updated the 2021 edition of the India Chapter for Legal 500 on Patent Litigation
• Updated the 2022 edition of the India Chapter for Legal 500 on  Patent Litigation
• Himalaya v Pureca Laboratories, CS (COMM) 170/2020 order dated 15^th June 2020 and 6^th August 2020- an injunction was obtained regarding use of the trademark PURE HANDS for sanitizers during the pandemic
• Hari Chand Shri Gopal v. Evergreen International, CS (Comm) 315 of 2020, order dated 13^th August 2020- an injunction was obtained regarding use of the mark KRISHNA 100, KRISHNA 351 and KRISHNA 355, found to be conceptually similar to the GOPAL trademarks of the Plaintiff. Both ‘Krishna’ and ‘Gopal’ portrayed the same idea of Lord Krishna
• H. Lundbeck A/S and Anr. v. Hetero Drug Ltd. and Anr., CS (Comm) 565 of 2020, Order dated March 26, 2021- The Delhi High Court while permitting the Defendants to export the API under Section 107A of the Patents Act (Bolar exemption) set out detailed terms and conditions regulating such export by the Defendant. The terms include among others the requirement to disclose to the Plaintiffs along with requisite proof, the particulars of any party (to whom the Defendant has supplied the API) commercializing the API, as soon as the Defendant becomes aware of the same