Intellectual Property

The height by great men reached and kept were not attained by sudden flight, but they, while their companions slept, were toiling upward in the night.

A former adjudicator (member) of the Intellectual Property Appellate Board of India (IPAB), Ms Lakshmidevi Somanath was part of the Bench that adjudicated in numerous cases on various key intellectual property law issues. Before the appointment to the IPAB, she successfully practised as an advocate for about 20 years and was arguing counsel in many cases concerning significant jurisprudential questions in intellectual property law interpretation and application and has several reported cases to her name. She also filed and prosecuted many applications before the Indian Trade Marks, Design and Copyright Offices and coordinated the filing of trade marks and patents worldwide. Ms Lakshmidevi is a regular contributor to several legal publications, a panellist in various seminars and conferences and an Associate Editor, Chennai Law Times, 2007-2012.

1. What was your main inspiration to choose law as a career?

Now, it would be a good time to bring forth the names of great jurists, but the truth is that I have no one legal person I can refer to as my inspiration for taking up law as a career. I can say that my teachers in my initial years collectively nudged me towards that direction

I am a first-generation lawyer. I won my first extempore oratory competition when I was 7 years old and went on to win several State and national level extempore oratory and debate competitions during my schooling. My teachers used to congratulate me and tell me to consider taking up a career in law (being layman having seen the long drawn-out courtroom dramas on the tinsel screen, where the lawyers shout objections, make grandiose speeches, and mesmerise the Judge). Little did they and I know at the time, that the practice of the law was much more than this.

Bearing this in mind, I applied to law school.

2. How was life for you and for women around you during the time you were pursuing your undergraduate degree in law?

I come from a family of educated and strong-minded women. Therefore, open-minded dialogues were commonplace, among the persons of various genders at home.

However, women in general, at that time, in society, who were pursuing professional education, were generally encouraged to take up medicine, engineering, CA or CS, or otherwise the pure sciences or teaching. Anything but the law. Studying and then practising law was not generally encouraged for women, given the rigour of litigation practice. However, my parents wholeheartedly supported me and paved the way for my joining law school.

In our widened social community, there was much introspection when I took up the law as my field of study. It was considered more “convenient” for women law graduates to pursue a career in teaching law or take up a bank legal officer job or a corporate job, in that order, to facilitate balancing home and work. My social community assumed that I would do the same, instead of litigating in the courts.

In law school, my professors were always encouraging, and one of them told me to make sure to take up litigation once I completed my law. Moot courts exposed me to the in-depth study of newer areas of law, courtcraft, the finer aspects of the practice of law and also helped me network among peers from various law schools throughout the world. It strengthened my resolve to be a litigator after completion of law school.

3. Can you please share your experience having been a practising advocate, a Judge at the IPAB, and now, the partner of Surana & Surana? How has the transition been from one to the other?

Following my LLM, I joined Surana & Surana in its intellectual property practice for 2 years and then started my independent practice along with my spouse, N. Surya Senthil, who wholeheartedly encouraged me and was my strong critic. I practised up to July 2020 before the High Courts and the tribunals, mainly the Madras High Court. Although I took up all civil matters, the bulk of my practice was intellectual property and writ matters. We had client ranging from big corporations and mid-size companies, to startups and individuals. Due to this myriad clientele, my practice experience was an eclectic combination of the life of a street lawyer and corporate lawyer, and every minute was exhilarating.

In August 2020, I was appointed to the Intellectual Property Appellate Board as a member. The IPAB was unique, being a national tribunal with base in Chennai and New Delhi, with Circuit Benches, where the members would sit in Delhi, Chennai, Mumbai, Kolkata and Ahmedabad. The selection was done by the panel headed by Retd. Mr Justice S.A. Bobde (then a Judge of the Supreme Court of India). The panel also had Retd. Justice Manmohan Singh (then Chairman, IPAB), and three department secretaries. I was selected at the top of the list, along with 4 other members.

During the selection, I met the panel first. Following this, since Surya had also applied, when meeting him, Retd. Mr Justice S.A. Bobde asked him whether he was related to me. He replied in affirmative. Later, when the panel was debating on the selection of one or both of us, given the legal relationship between us, we came to know that Retd. Mr Justice S.A. Bobde objectively viewed us both as two separate and talented individuals, and put forward his decision accordingly, to appoint both of us to the IPAB, me as the Member – Trade Marks, and Surya as the Member – Copyrights.

During my tenure in the IPAB, Retd. Mr Justice Manmohan Singh was my mentor and guided me with his immense wisdom, immaculate subject knowledge, deftness in perception and humility. On my first day on the Bench, he allowed me to conduct the proceedings and pronounce the order in the reserved matter for the day. I wonder which other person would have done so. During my tenure in the IPAB, under his able guidance and mentorship, we conducted almost daily virtual hearings from August 2020 to April 2021 and disposed several matters. In ORA/68/2013/TM/AMD, on behalf of the Bench, I declared GOODDAY to be a well-known mark.

Under the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021, the IPAB was abolished on 4-4-2021.

Following this, on resuming practice, I was invited to head the intellectual property practice of Surana & Surana International Attorneys, and that is where I am now. As the Partner, Intellectual Property (IP), I oversee the whole gamut of IP filing, prosecution, and transactional work and appear before the Delhi High Court in IP litigations.

Work and its transition to each stage has always been full of adventure, in all its avatars till date, it is all about how you choose to approach it. A supportive and encouraging family, my juniors, and my friends have all backed me to the hilt and cheered me on, at every stage.

4. It is incredibly commendable that you have been practising intellectual property laws for 20 years now. How did intellectual property rights become a passion for you? Was there a driving factor behind this choice?

I was a participant in the 1st Raj Anand Intellectual Property National Moot Court Competition, 1998 and our team was adjudged the second best team. That moot exposed me to intellectual property law, even before I had it as a subject for study in my degree course. The concept of attributing value and according legal protection to intangible property, and the importance of intellectual property in the knowledge-based economy piqued my interest.

Following this, I read IP law in my BAL, LLB and various specific aspects on intellectual property law in my LLM and found it to be an interesting and rewarding area of study. I then commenced my practice in the area of IP prosecution and litigation.

The first case I independently argued was towards the interim relief in Khaja Mohammed Azeemuddin v. Anees International1, before the High Court of Madras. The case was regarding the use of the trade mark INTORICA on handloom cotton fabrics. There were various interesting issues raised, including the registration of the trade mark, the rights of the plaintiff over such mark, intorica being a type of traditional fabric commonly used in Africa, the common use of the term by all traders, and therefore, descriptive of the goods, goodwill, and distinctiveness, usage and reputation. Although I did not win interim relief, this case reinforced my determination to practise in intellectual property.

5. How have the intellectual property laws developed in India? With fast-paced technology taking over the world, can we expect a shift in the dynamic of protecting one’s IP?

Yes, with advances in technology, the way of protecting intellectual property is evolving. Digital innovations have made it easier to produce and distribute creative works, but they have also made it easier to infringe on IP rights.

The current legal framework for IP rights was established before the widespread use of the internet and digital technology and may not be fully equipped to deal with the challenges posed by these developments. For example, in the present times, the authorship of a work has become hazy. Similarly, the patent term of 20 years for inventions may become obsolete. Again, Section 3(k) of the Patents Act, 1970 (patentable subject-matter) needs to be amended to keep pace with the latest global trends.

In the coming years India will need to:

  1. Strengthen enforcement mechanisms: This can include providing additional resources to IP enforcement agencies, as well as creating more effective legal tools to combat IP infringement.
  2. Clarify the scope of protection: This may involve refining the definitions of what constitutes a patentable invention and the scope of protection provided by a patent.
  3. Address issues related to the digital economy: This can include provisions for protecting IP rights in the context of online commerce and digital economy.
  4. Balance the interests of creators and users: This may involve finding ways to ensure that IP rights are protected while also promoting innovation and access to creative works.
  5. Harmonise with international IP laws and treaties: This can involve aligning the country’s IP laws with international standards and best practices, to facilitate cross-border trade and cooperation in the protection of IP rights.

6. A huge congratulations on your most recent accolades including the Legal Era Woman Lawyer of the Year, 2022, and a leading individual in IP in India by the Asia-Pacific Legal 500, 2023 and the WTR-1000, 2023. What is the one thing you would like to say to our female readers who wish to create an identity for themselves in law?

Thank you for your kind words. I would say that the blessings of the Universe come naturally to those who believe there is no substitute to structured and consistent hard work. My young female colleagues would do well to:

  1. Build a strong reputation for being knowledgeable go-getters, reliable, and ethical in their work.
  2. Stay up to date on the latest developments in the legal field and continuously educating themselves.
  3. Develop a unique area of legal expertise and becoming an expert in that field of practice.
  4. Build a strong personal brand through social media, writing articles, speaking at conferences, and participating in creating value to organisations.
  5. Network and build relationships with other professionals in the legal fraternity.
  6. Mentor and support other women in the legal fraternity.
  7. Seek out and take on leadership roles in professional organisations and within their law offices and law firms.

7. You have represented India in various international moot rounds, with high individual rankings. Prior to the introduction of online legal databases such as SCC Online, how were you able to conduct legal research? Further, how important is legal research, according to you?

Let us just say that due to the non-availability of online databases in those days, we got to travel through the country visiting major libraries, instead of pegging it away in front of a laptop.

The research we did for these moots was exhaustive, gruelling and stretched into several months before the competition. Two months, immediately after the moot problem was announced, were spent in Delhi, researching at the Indian Law Institute (ILI) library and the Indian Society of International Law (ISIL) library. We also used to rely on the British Council Library and the American Library, both in Chennai. Legal research in the 1990s was limited to traditional sources such as books, case law reports, and statutes. The internet and online databases were in their infancy and not yet widely used for legal research. While the SCC, AIR and MLJ case reporters provided the pertinent judgments, for the latest articles we turned to the Indian Bar Review, Journal of the Indian Law Institute, Indian Journal of International Law, Harvard Law Review, Yale Law Journal, University of Pennsylvania Law Review, Columbia Law Review, Duke Law Journal, and others.

We spent hours looking up information, making notes, and searching for relevant cases. As the competition loomed near, we used to return to base camp (home) lugging along huge cartons of photostats of relevant cases and articles for further reading. It was a challenging process, requiring a great deal of patience, persistence, and attention to detail. However, it also provided a solid foundation of knowledge that was essential for effective legal research and analysis.

Other than the 1st Raj Anand Intellectual Property National Moot Court Competition in 1998, I also represented India in the 2000 Philip C. Jessup International Moot Court Competition, USA and ranked the best speaker from India, and the 16th best speaker overall among 400 participants. I also represented India in the Afro-Asian International Moot Court Competition, 1999 and was adjudged the second best team.

In contrast, researchers now have access to a wealth of information through online databases, legal research tools, and search engines including SCC Online, Manupatra, LexisNexis, Westlaw India, Bharat Law, Google Scholar and others. This has made legal research faster, more comprehensive, but also increased the need for researchers to be able to critically evaluate the quality and reliability of the information they find online.

The role of prior legal research is now downplayed, with the availability of various tools to provide instant information, in the middle of the court arguments, without skipping a beat. However, the long-term retention of such information in the subconscious and reapplication of such data the next time you come across the same legal factum, will be seamlessly feasible for the human intellect only if it has partaken in the process of analysing the information in relation to the legal issue, to form a comprehensive understanding of the legal issue and the law surrounding it. Therefore, prior in-depth legal research for every matter you handle, is a must.

8. You were awarded a gold medal in your LLM. Can you please share with our readers advice on how to create opportunities and excel in law school?

Being a lawyer is having an intellectual superpower, you can argue your way out of any crisis.

However honing those super skills begins from Day 1 at law school. The formula is very simple – “The height by great men reached and kept were not attained by sudden flight, but they, while their companions slept, were toiling upward in the night.”

There is no substitute to hard work. At the same time, unstructured perseverance is of no consequence. Blindly plugging away is not enough – you need to have a focused plan in place if you want to see results.

Every law student is different. I would ask you to identify your strengths, recognise and acknowledge your pain points, and plan accordingly. You can:

  1. Build a strong foundation: Study consistently, stay organised, read all the latest judgments, keep track of legislative changes, peruse relevant news and legal articles to stay informed on current trends and issues in the field, and actively participate in class discussions.
  2. Participate in moot court and mock trial competitions: These events help develop legal writing, research, and public speaking skills.
  3. Get hands-on experience: Structure your internships carefully, keeping in mind what you want to specialise in (area of law/industry), where (litigation/law firm/in-house).
  4. Network: Attend events, join student organisations, and reach out to alumni in your desired field.
  5. Find a mentor: Seek guidance from a practicing lawyer or professor in your desired field, willing to guide you.

Thank you for taking part in the interview. I really appreciate you taking your time out and answering these questions. I am sure our readers will be inspired by your experience and achievements. We wish you a continued remarkable journey in IPR.

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One comment

  • I thoroughly enjoyed reading this insightful interview with Lakshmidevi Somanath, Partner at Surana & Surana International Attorneys. Her two decades of experience in intellectual property law practice truly stand as a testament to her dedication and expertise in the field. It’s inspiring to see her journey and the impact she’s had in shaping the legal landscape, especially in the realm of intellectual property. Kudos to Ms. Somanath for her remarkable achievements, and thanks to SCC Online for sharing her valuable insights with us.

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