Wednesday, June 27, 2012

Trademark Attorney in India

A Trademark is almost like the identity of a good or service. The name, symbol, mark or anything that distinguishes one good from another, can be a trademark. And for maintaining the unique identity of a good or service, it is essential to protect its trademark from being copied or being infringed upon. And that is where the expertise of a Trademark Attorney comes into use. And it is an upcoming profession in India, where more and more lawyers are venturing into the laws of trademark, patents and copyrights.
Trademark Attorney
A Trademark Attorney is a person who is expert in matters relating trademark laws and designs and practices and provides legal advice regarding the matter. He is a professional having extensive knowledge of trademarks and usually deals with court cases relating to Trademark.
In India, any person who has taken a course of study in the rules of practice in patent office i.e. trademark laws, has graduated from a law school and is a member of bar can be a trademark attorney. The attorney must be registered to practice trademark laws before the IPAB (Intellectual Property Appellate Board) or the trademark office and must also be registered to practice law in at least one of the states in India. He must also have passed the IPAB Trademark Law Bar Exam. Many attorneys may also have technical engineering degrees and they can practice law outside the trademark office.
Role of a Trademark attorney
A trademark attorney in India assists trademark holders in every way. They not only provide guidance and counsel on registration and subsequent use of trademarks but also make sure that a trademark does not infringe upon the rights of any other. They are also hired by big corporate companies and firms to provide assistance and guidance in matters relating to trademarks of the company.

A trademark attorney helps ensure that an application is properly registered with the applicable trademark office. During this process, the attorney generally advises his or her client on the probability of the application becoming a registered trademark. Also the attorney evaluates whether any risks are involved with adopting a certain slogan, word, or logo. The attorney also helps the client to check and ensure a potential mark or name does not violate the rights of any other person or entity. If the client decides to move forward with pursuing the mark, the attorney files the application and communicates with the trademark office as needed.
In an infringement or dilution case, a trademark attorney can represent either a plaintiff or defendant. In this role, the attorney must evaluate evidence and develop a theory of his or her client’s case. Other responsibilities include preparing and filing any appropriate paperwork with the court, facilitating the discovery process, and interviewing or deposing witnesses. If the case goes to trial, the attorney represents his or her client in court. If the case is settled outside of court, the attorney usually spearheads negotiations for his or her client.
There are quite a few different trademark attorney jobs available for someone with a law degree and a background in trademark or patent law. One common type of job is at a trademark office, reviewing applications for trademarks and assisting in research for potential infringement cases. An attorney with experience on trademarks can also work with clients interested in bringing a lawsuit against another party over trademark infringement. There are also trademark attorney jobs that involve assisting clients in filling out the paperwork necessary to officially register a trademark.
There are also trademark attorney jobs for lawyers and attorneys interested in working with clients and pursuing litigation. These jobs often involve representing clients in civil lawsuits, usually in suits brought against a defendant based on claims of trademark infringement. In these cases, there are typically trademark attorney jobs available for both the plaintiff and the defendant, and lawyers working in these types of jobs specialize in understanding the requirements of proving infringement.
Some trademark attorney jobs may also include working with clients, but are not directly involved in the adversarial process of civil litigation. These jobs often involve assisting clients with filing for official trademark registration. While the assistance of a lawyer is typically not required to file for registration of a trademark, it can often be helpful to ensure that a trademark will be registered. These trademark attorney jobs usually involve working with a client, reviewing paperwork, filing for registration on behalf of a client, and following up on a registration to ensure the satisfaction of the client.
Trademark attorney and Trademark Agent
Matters of trademark in India are governed by the TRADEMARK ACT, 1999 and the Trademark rules, 2002. The act doesn’t specify anything about a trademark attorney. Thus though it is not compulsory to appoint an attorney for application of a trademark but it is always advisable to do so since a trademark attorney is specialized in matters of trademark. Another person who can be approached for matters of trademark is the Trademark Agent who is described in the Trademark Act, 1999.
There is quiet a difference between a trademark attorney and a trademark agent. Trademark attorneys are lawyers who are members of the bar whereas agents are not lawyers. An agent is registered to practice trademark law before the IPAB of trademark office. He has to have successfully passed the IPAB Trademark Office Exam or has served for four years or more as a IPAB trademark examiner before entering private trademark practice. An agent specializes in registering trademark and practices before the IPAB trademark or Trademark Office, and does not practice law outside but since attorneys are lawyers, they can practice law outside the IPAB Trademark Office. Also they can charge high fees since they can negotiate contracts and represent their clients in court which an agent cannot do as he is not an attorney and thus his fee is also average.
The difference is a technical one. A Trademark Agent may draft and file a trademark application and conduct business with the Indian IPAB or Trademark Office. Once the trademark application has been placed, the agent may track the life of the application. The attorney may represent the application in court also.
In short, a trademark agent is a non-lawyer with a qualification in the trademark arena whereas an attorney is a lawyer with qualifications in the trademark arena.
Scope in India
In India, the status of a Trademark Attorney is not a recognized one. Any lawyer having knowledge about Trademarks can be a trademark attorney. They hold no better place in the legal field than any other lawyer. And most of their work revolves around registration of trademarks. The best job a trademark attorney can get is in a law firm which deals especially in intellectual properties or in corporate firms or companies, which require attorneys to take care of their intellectual issues. There are many reputed IPR law firms in India, which employ trademark attorneys to deal with matters of trademark, patents, copyrights, geographical indications and industrial designs.
They also play the role of private consultants who provide guidance about choosing the trademark, procedure of registration, importance of registration, paper works required, information about validity, renewal and advice regarding right available in case of infringements or other problems. Litigation lawyers also represent their clients in courts in cases of trademark infringement or other violations. The court proceedings take place according to the Civil Procedure Code (CPC).

But on the whole, the job of a trademark attorney is a very lucrative one, since the field of intellectual property i.e. trademarks, patents, copyrights, geographical indications and industrial designs is a less visited one. Common people generally don’t have much knowledge or interest in this field, especially in India. Thus it is required to have good and experienced attorneys to bail the common people out of the difficulties in this field of Intellectual Property.

By Anisha Pal

Sunday, June 17, 2012

Need for Patent Registration & Patent Attorneys in India

Patents are the limited exclusive rights granted by the state for the inventor for his invention. It is an acknowledgement of the inventor’s idea. It is the reward given for the truthful disclosure of the working of the invention. This right is guaranteed for a period of 20 years from the date of filing the patent application. The object of invention need to be novel or new, contain inventive step and have utility. These are the important criteria necessary to pass for anything to be patented as per the Indian Patent Act, 1970. To be novel it must not have been anticipated through any prior publication anywhere. To be inventive it need to provide some technical or economical benefit and also not obvious to a person who has expertise in that field. Moreover this invention need to be have some kind of industrial usefulness that it brings commercial success to the inventor and also useful to the people. Again it is necessary that this invention should be patentable which implies that it must belong to certain category of subjects which are eligible to be provided with patents. So we can see that the patent obtaining is a very complex process as it needs to follow all these tests perfectly. But unlike the Copyright or Trademark the invention is not conferred with a Patent once it’s been created or is in use. For getting a statutory protection like patent it is an absolute necessity to get it registered.

Why so?
In the context of patents there is a concept called public domain which can be said in simple terms as everything outside the patent protection. It consists of all those materials which are free for everyone to use or destroy. As per the Patent Act, 1970 patent is granted only as per the Act. So if a patent is not obtained it simply means the invention or whatever just goes into the public domain. In the present situations, the development of new idea is the mantra. Innovation has been added to the essentialities of human survival. If one needs to stay then one needs to bring something new. The recognition of one’s intellectual knowledge is been attributed great importance as intangible property. But for this one need the recognition of law, that too for right person and at right time. Here comes the role of patents.
A patent, by providing various legal rights upon the inventor for his inventions, safeguards him when a question of ownership or any other kinds of problem arises. The primary benefit of holding a patent is that one can control who uses the patented invention and can usually charge people to use it. Unpatented technology can be used by anyone in any way, and the inventor has no legal ground to charge for use or to prosecute users.
The benefits of having a patent include:
1.   Jurisdictional benefit: The patents are territorial in nature and hence, the applications of the patents are to be filed in the local patent offices within the territory specified by the Act, even if any one of the co-inventor is domiciled in India. Hence jurisdictional problem is avoided.

2.   Rights available:  A patent grant gives the patentee the exclusive right to make or use the patented article. He can prevent all others from making or using the patented process also. A patentee has also the right to assign the patent, grant licenses under it, or otherwise deal with it for any consideration.

3.   Exclusive : As a patent gives exclusivity, the patent holder has time to market the invention without competition making him/her able to charge higher prices

4.   Right to sue: It gives the right to initiate legal action against anyone that is making or selling, without permission, the patent holder invention.

5.   Priority in Claims: It gives one priority over third parties wanting to register their patents in countries that do not require registration.
Thus, we can see that only if an invention has been registered as patent that all these benefits accrue to the inventor. Only if these benefits are available, that a person can avail legal protection.
Brief on how patents are applied:
·         The normal procedure for the application for patent is submitting of patent application form which includes the details about the inventor, small briefing about the invention and its usefulness and also declaration that the applicant is first and true inventor or so authorized by the true inventor along with a fee.
·         Next, the patent office does a search as to whether such inventions exist anywhere else.
·         If the said search is negative, the patent office notifies applicant to submit a detailed description of the invention along with the patent claims and specifications with a fee prescribed.
·         Upon analyzing the patent claims and specifications only the patent office grants the patents.

Role of Patent Attorney:
Therefore, it is solely upon the patent claims and specifications that the patent is granted. The drafting of patent therefore, needs to be very accurate and crafty. It requires a special knowledge and experience to draft such claims. Patent attorneys are the best persons for this work as they are legal people with specified knowledge. Patent attorneys are able to appropriately place a balance between the legal requirement and the patent claim which is technical in character. The whole process of obtaining patent is very legal and complicated. Henceforth, it is crucial that the claims and so called specifications which together determines what-all- are and to –what- limit the patent is made, are drafted in very neatly. Patents Attorneys  research upon whether the invention would be patentable, draft their claims and specifications, keep track with the status of application, also make sure that there happens no procedural default, thus ensuring that the inventor is ensured with the benefit of his invention within reasonable period. 


Thursday, June 14, 2012

Trade Mark Registration: Why it is Important?

Today Brands define a man's status. People go for those brands which promise them not only good quality goods but also good status. When a man enters a room, the reasons present there judge him based on the suit he is wearing- “is it Raymond?”- The brand of his watch- “wow its RADO” - the mobile phone he is using. Brands produced a new consumer culture, where the quality and credibility of goods and services where no longer judged by the traditional way, that is by really using it but by looking at the brand name. Brands project the personality of its source, if we put it in another way brands helps the consumers in identifying the source of the product. It is precisely for this purpose brands, or if we rather use the technical term, trademarks have been created.

This concept originated in the Middle Ages when craftsmen and merchants wanted to differentiate their products or services from those offered by competitors. Thus trademark simply means identity card of a company. This very reason makes trademark the most powerful Intellectual property concept. It cost company a lot of time, money and resources to build a credible trademark in the market. Trademark may be names, like well known mobile phone brand 'NOKIA' or famous service provider 'idea' with an inverted 'i' , it may be symbols, for example 'the apple' symbol of APPLE co.. Whatever form it may have it is the most powerful communication tool a company has to communicate with its consumers. A study conducted at Columbia University found that for consumer products and services, well-managed brands typically represent 50 to 80 percentage of the entire value of their companies. For business to business products and services, the percentages were lower but still significant - 20 to 30 percentage. Thus now we are in agreement to the fact that trademark is very important for a company. This importance of trademark makes it very vulnerable too, because there is a chance of others abusing your trademark, for their profit, by playing with your credibility and reputation. Nobody wants all of his/her efforts to go in vein and again if a trademark is to be protected in all the way the law can it is important to get it registered under proper authority. If you are not willing to protect your trademark there is no need for building one. Precisely because otherwise you won't be able to enjoy any of the following rights, which you will lose only because you didn't get it registered and trademark registration becomes important due to following reasons:

  • Without registration, a latecomer may register a mark identical or similar to the company's mark, which may prevent the unregistered trademark owner to expand his business to other areas with the same trade mark or may block his attempt to register the trademark later. If you cannot stop your competitor from using a trade mark which is the same as or similar to yours, then your competitor may “get a free ride” on your reputation. In many cases, a reputation is the result of having high quality goods or services, providing superior service, or an effective marketing strategy. These usually involve a significant investment in money, time, and know-how.
  • Trademark registration gives the trademark holder to file cases against trade mark violations or abuse of trademark like unfair comparative advertisement.
  • Trademark registration establishes the presumptive right of the trademark owner to use the trademark throughout the country.
  • For those companies that wish to expand internationally, the date of registration may be used as the priority date in other countries, if they are a member of an international treaty, such as the Paris Convention.
  • Discourages others from using confusingly similar marks in the first place by making the mark easy to find in a trademark availability search, thereby preventing problems before they even begin.
  • Protects against registration of confusingly similar marks.
  • Entitles you to certain statutory damages in case of infringement of your trademark related rights.

By registering it becomes part of your valuable asset, and you can sell it, lease it, mortgage it, and transfer it.

By Aruna A.

Tuesday, June 5, 2012

The Copyright Amendment Bill, 2012

The Copyright Amendment Bill, 2012 is successfully passed in the Parliament, is now waiting to be signed by the President. This bill marks a historic turning in the foster of Copyright laws in India. It introduces many pertinent changes in the Copyright laws. One of the characteristics of the Bill is that it has tried to make certain definitions. It defines commercial rental, Rights management information, visual recording.

Cinema is one of the craziest stuff that we, Indians have promoted and enjoyed a lot. Thus, the amendment with regard to the royalties payable to the music composers and lyricists is very much celebrated by the people. Right from the Oscar holder A.R.Rahman to the celebrities like Javed Akhtar & Shankar Mahadevan had struggled a lot to get this amendment pass in the Indian Legislature.  Under the former provision these music composers and lyricists didn’t have right to claim royalty equally. The problem was especially with regard to the cinematographic works or generally cinemas. The copyright for the movie either goes to its producer or its director. The lyricist and the music composers usually assign their copyright for their work to these people for the money considerations thus lacking right to claim any equal amount of royalty. Now the amended law has made eligible for the music composers and the lyricists to claim an equal share of royalties and consideration payable in case of utilization of their work.

Another interesting amendment is that to relinquish the copyright, the author may merely give a public notice. The Bill also amends that the photographs shall enjoy copyright protection as that of any artistic, literary, musical work (cheers to the photographers…). The Bill in addition enables the author to license any of his work by mere writing document not necessarily signed. Again the Bill proposes that the compulsory license shall be granted for any works rather than ‘ Indian works’ which is indeed a really good provision as it facilitates for more availability of works to the people. Another significant amendment is that it allows any person working for the benefit of persons with disability on a profit basis or for business, to apply to the Copyright Board for a compulsory license to publish any work in which copyright subsists, for the benefit of such persons. Moreover these applications need to be disposed off as soon as possible in a favorable manner. This Bill also makes a provision with regard to the cover version copies, which shall be made only after 5 years of making the original. It requires that the cover version be of same medium as the original. So if the original is on a cassette, the cover cannot be released on a CD. Also strict regulations are made like the cover version should claim it to be the cover version & not to be misleading, royalty to be paid in advance if 50, 000 copies are to be made, no alterations to be made except for the technical necessities.

This Amendment Act also inserts that every copyright society shall be registered for a period of five years and may be renewed from time to time before the end of every five years on a request in the prescribed form. This bill also elaborates more upon the performers rights like he/she can claim for royalty in case of making of the performances for commercial use; performer of a performance shall, independently of his right after assignment, either wholly or partially of his right, have the right to claim to be identified as the performer of his performance and  to restrain or claim damages in respect of any distortion, mutilation or other modification of his performance that would be prejudicial to his reputation.

Again the fair dealing provisions are now applicable to all the works and also says that the transient or incidental shortage of a work or performance purely in the technical processor electronic transmission or communication to the public or for the purpose of providing electronics links,access or integration, where such links, access or integration has not been expressly prohibited by the right holder will be an exception.This is available only till he/she who does such storage a complaint from the copyright holder alleging it to be infringement.In such a circumstance he/ she shall not use this works for a period of 21 days or till he/she gets a court order prohibiting them to continue.

Another vital provision is again to people with disabilities. The amendment act allows the use of any work or performance in any accessible format for the using it by the persons with disability on non - profit basis.Another remarkable amendment is the introduction of the provision which punishes any person who would puncture any technological measure taken to ensure the copyright for a period of 2 years.Also there has been a modification to the moral rights of the authors.Moral rights are the inherent right available exclusively to the author even after the assignment or the licensing or expiration of the copyright.The amendment has now allowed the legal representatives of the author to claim the right to claim authorship along with the other rights which was not allowed in the earlier act.

Biswajit Sarkar