Services

Trade Mark Attorney Services

Introduction

In a competitive market, registration of trademark is vital for protection of your brand. A registered trademark gives exclusive right and protections to use the mark. A trademark is defined under The Trademark Act, 1999 (“Act”) as, “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours.”

Role of a Trade Mark Attorney

A Trademark Attorney is a legal professional who specializes in the field of intellectual property law, particularly the area that deals with trademarks brand names, logos, symbols, or slogans that distinguish one’s goods or services from others. Their primary role is to help individuals and businesses protect and enforce their brand identity.

One of the main responsibilities of a trademark attorney is to advise clients on the selection and use of trademarks to ensure that the mark is unique and does not infringe on existing rights. They also conduct trademark searches to verify the availability of a proposed mark before applying for registration. Once a suitable mark is identified, the attorney prepares and files the application with the appropriate trademark office in India, this is the Office of the Controller General of Patents, Designs and Trade Marks.

Beyond registration, a trademark attorney handles examination reports, objections, and oppositions that may arise during the registration process. They represent clients before the Registrar or High Court in case of disputes. They are also responsible for enforcing trademark rights, which may include issuing cease-and-desist notices or initiating infringement proceedings in Court.

In addition, trademark attorneys manage trademark portfolios for clients who own multiple marks, ensuring timely renewals, assignments, and licensing.

Trade Mark Registration Process :

Trademark Search and Filing of Application

Before applying, choose a unique and distinctive trademark that is not descriptive of goods or services. Trademarks are categorized into 45 classes under the NICE Classification, and it is important to identify the correct class for goods or services. Conduct an online search on the IP India website to check for similar or identical marks. If no conflict exists, file the application in Form TM-A online or offline with the prescribed fee at the concerned Trademark Registry. Once the acknowledgment is received, the applicant can use the ™ symbol with the mark.

Examination of Trademark

After filing, the Registrar examines the application to ensure compliance with the law. If objections arise, an examination report is issued, and the applicant must respond within 30 days. If required, a hearing is held to allow the applicant to defend the mark. Upon acceptance, the trademark is published in the Trademark Journal for 4 months for public opposition. If no opposition is filed, the mark is registered, and a registration certificate is issued. The trademark remains valid for 10 years and can be renewed thereafter with the prescribed fees.

Third Party Opposition

Any person may oppose a trademark within 4 months of its publication by filing Form TM-O with the applicable fee. The applicant must reply with a counterstatement within 2 months, after which both parties can file evidence and attend a hearing. If either party fails to appear, the matter may be dismissed or treated as abandoned. After the hearing, the officer issues an order, and an appeal may be filed before the Appellate Board within 3 months.

Even after registration, it is essential for trademark owners to regularly monitor new filings and oppose any marks that may infringe their registered trademark.