One of the most important steps for businesses in India to secure their identity is to get a trademark. Trademark Registration is a legal phenomenon which sound simple but needs expert handling because of its complexity. The trademark attorneys ensure smooth and successful registration process under the provisions of the Trademarks Act, 1999.
In this article, you will find the main duties of trademark attorneys and reasons that distinguish between hiring either of them when it comes to the protection of your brand.
Who is a Trademark Attorney?
A trademark attorney is a legal professional who has undergone training in the laws relating to intellectual property (IP), specifically trademarks. They are trained and qualified to offer trademark legal advice, prepare and file applications, respond to refusals, and other trademark disputes.
Trademark attorneys are typically reputed trademark agents or IP lawyers with a proper knowledge of trademark laws and procedures.
The Role of a Trademark Attorney and Why You Need One
- a) Performing a Trademark Search
The first step to file a trademark application is to check if there are no similar marks already in the database. A trademark attorney assists in the following,
- Conducting a Full Fledged Trademark Search on the IP India Portal
- Spotting potential conflicts with other trademarks.
- Conducting Searches and Issuing Legal Opinions As To Trademark Availability
- This decreases the probability of rejections based on similarity between your application and an existing mark.
b) Submit the Application for Trademark Registration
The application for a trademark should be correctly prepared so that it does not face unnecessary objections, and it does not delay unnecessarily. A trademark attorney helps in determining:
- Selecting the correct class of goods/services (according to the Nice Classification) end
- Preparing a trademark description that is both clear and legally sound.
- Submitting the application through the IP India e-filing portal.
- Making sure that all relevant documents are filed correctly.
c) Answering Exam Reports (Office Actions)
- Once filed, the trademark registry will examine the application and issue an examination report in case of objections. Here is the help to you by a trademark attorney:
- Anticipating and dissecting the hesitations.
- Preparing a solid response for examination report (Form TM-M)
- Legal arguments to convince the Registrar
- Improve : If objections are not handled in the right way then your Application can get rejected or go on appeal.
- d) Third party oppositions
- So when a trademark is published in the Trademark Journal, third parties can oppose your trademark on the grounds that it violates their rights. A trademark attorney will help with:
- Advocating in favour of the application.
