Introduction
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.
Qualifications
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.
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
For Biswajit Sarkar
