Essenese Obhan

Practice Areas

Essenese Obhan is a managing partner and heads the IP practice at Obhan & Associates. Mr. Obhan is a lawyer and patent agent with a degree in mechanical engineering. His expertise includes contentious and non-contentious matters in the software, mechanical, pharma, chemical, plant variety, and telecom sectors.

Career

He has drafted, prosecuted, and litigated cases in the mechanical, chemical, pharmaceutical, software, telecommunication, and agricultural sectors. He has also been at the forefront of several high-stakes IP licensing and litigation matters in India, including- representing the Indian seed industry in their licensing dispute concerning genetically modified seeds, representing various Indian mobile manufacturers in their SEP discussions with SEP owners. He advises many companies, including some from the Fortune 500 and India’s leading businesses, on developing and managing their patent portfolios, IP strategy, and licensing.

Essenese Obhan has been recognized as a leading lawyer for IP by various publications, including Chambers Asia Pacific, Intellectual Asset Management, Managing Intellectual Property, Asialaw Profiles, and Legal 500.

Professional Memberships

FICPI, INTA, APAA, AIPPI, AIPLA, ECTA, GRUR & MARQUES

Publications

Obhan Essenese “Patent Attorney Privilege in India” WIPO Standing Committee on the Law of

Patents Thirty-Fifth Session (October 18, 2023); Obhan Essenese “No Secrets Possible in Public Domain” India Business Law Journal (July 11, 2023); Obhan Essenese “Speed the Best Prescription for Regulating E-Pharmacies in India” India Business Law Journal (April 11, 2023); Obhan Essenese “Transborder Reputation in India Means You Must Be Here” India Business Law Journal (March 8, 2023); Obhan Essenese “Suing AI Will Need Better Human Law” India Business Law Journal (January 13, 2023); Obhan Essenese “Patently Obvious That Errors Can Be Corrected” India Business Law Journal (August 4, 2022); Obhan Essenese “Online Advertising Must Not Overstep the Mark” India Business Law Journal (June 7, 2022); Obhan Essenese “FSSAI Notification Gives Major Boost to Hemp Industry” India Business Law Journal (March 30, 2022); Obhan Essenese “Hazards of Exporting Dual-Use Technology” India Business Law Journal (February 11, 2022); Obhan Essenese “What Is the Law Around Joint Patent Ownership in India” Managing IP Correspondent (September 10, 2019); Obhan Essenese “Copyright Irrelevant for Proving Use as Trademark” Mondaq (March 4, 2019); Obhan Essenese “Is Not-Working of A Patent in India Against Public Interest?” Mitteilungen der deutschen Patentanwälten (February 2018); Obhan Essenese “Monsanto vs. Indian Seed Companies: Enforcement of Rejected Patent Claims” Spicy IP Patent, Plant Variety Protection (March 23, 2017); Obhan Essenese “Brand Enforcement: The Use of The Advertising Standards Council of India as An Effective Tool” World Intellectual Property Review (October 01, 2011); Obhan Essenese “Strategies for Assigning Patents” Managing Intellectual Property Strategies for Assigning Patents (September 01, 2009) ; Obhan Essenese “Software Patenting in India” Spicy IP Guest Post on Software Patenting in India (February 28, 2009)

Clients

TATA Chemicals; AGFA Group of Companies; Mitsubishi Heavy Industries; Aditya Birla Science & Technology Co. Pvt. Ltd.; Steer Group of Companies; Pine Labs; G4S Plc. (G4S Security Solutions (India) Pvt. Ltd.); The Doon School; Vending Updates India Private Limited; Bolt Technology OÜ; CoinDCX; Akasa Air (SNV Aviation Private Limited), Promoshirt SM SA

Work Highlights

Mr. Obhan has represented the following clients for their various matter. (1) Promoshirt SM SA- Mr. Obhan and his team have successfully defended the preliminary objection pertaining to maintainability of the letters patent appeal challenging the single judge's judgement. The Hon’ble High Court held that Letters Patent Appeal can be filed before a division bench against a judgement passed by a single judge in an appeal against an order of the Registrar of Trademarks. The matter will now proceed to be argued on its merits, that is registrability of the trademarks “SWISS MILITARY” wordmark and device mark; (2) Matra Mobili Private Limited - Mr. Obhan and his team is defending Matra Mobili Private Limited, which was sued by Madanpalle Retail Private Limited for allegedly using the trademark 'Sunday' in Class 20 in Class 24. He and his team have successfully vacated an ex-parte injunction that had been granted against our client by the District Court of Bangalore by filing an appeal against the injunction order at the Karnataka High Court.; (3) AGFVA NV - Mr. Obhan and his team represented Agfa NV in an appeal challenging the impugned order passed by the Controller of Patents and Design and was successful in setting aside the order passed by the Patent Office.; (4) Pine Labs Private Limited- Mr. Obhan lead his team in representing Pine Labs in a patent infringement suit in the FinTech space before the Karnataka High Court and was able to successfully obtain a vacation of an ad-interim injunction that was passed against Pine Labs by the District Court.; (5) M.K Srinivasan Systems Pvt. Ltd.- Mr. Obhan and his team have filed the infringement suit on behalf of M.K. Srinivasan against Mr. Magesh Jayaraman, Transgrid Test and Measurement LLP and Motwane Manufacturing Company Private Limited for infringing and using M.K. Srinivasan’s registered patent. An ad interim- injunction was granted in favour of our Client for patent and copyright infringement by the Delhi High Court.; (6) Mountain Valley Springs India Private Limited- Mr. Obhan and his team is representing Mountain Valley Springs India Private Limited in a trademark infringement suit. Validity of the trademarks registered by Baby Forest Ayurveda Private Limited has also been challenged by way of rectification petitions. He and his team were successful in obtaining an interim injunction, wherein the Baby Forest Ayurveda Private Limited has been restrained from using marks “SAUNDARYA” and “BABY ESSENTIALS”.; (7) G4S Plc. (formerly known as Group 4 Securicor Plc.) – Mr. Obhan leads his team in representing G4S Plc., a leading security services company, before the High Court of Delhi in various disputes with third party infringers. He and his team through focussed investigations and targeted civil actions has successfully prevented and obtained injunctions against various third parties from adopting identical or deceptively similar trademarks likely to cause brand dilution.

Languages Spoken

English

Education

Awards