Applying Trademark Through an Attorney

Applying for a trademark is a legal procedure which requires in-depth knowledge of the Trademark Act and Trademark Rules. Trademark attorneys and agents are the qualified professionals who have the knowledge as well as experience in trademark field.

The knowledge of the Trademark Act and Trademark Rules is required not only to ensure the protection of the trademark but also for the registration process to go smoothly, overcoming all the possible objections and oppositions that one faces while getting a registration done. The qualified professionals who have experience in this field and are familiar with all the stages of the registration process are:

• Trademark Attorneys
• Trademark Agents

How to become a trademark attorney?

Trademark attorneys and Trademark agents are the persons who possess the qualifications as set out by the Registry to apply for a trademark and have all the know-how of the registration process and are entitled to practice before Trade Mark Registry.

In order to become a Trademark Attorney/ Trademark Agent, the person needs to (Qualifications to become a Trademark Attorney):

• Pass a qualifying examination which is conducted by the Trademarks Registry or
• Be an Advocate within the meaning of the Advocates Act, 1961 or
• Be a member of the Institute of Company Secretaries of India.

Other qualifications to become an agent are prescribed under the Trademarks Act of 1999 and Trademark Rules.

Where to find the registered trademark attorneys?

A Registered Trademark Agent is a Trademark Agent whose name is on the Register of Trade Mark Agents maintained by the Registrar of the Trademark Registry. 

A list of Registered Trademark Agents/ Trademark Attorneys is available on the website of Office of the Controller General of Patents, Design & Trademarks at ipindia which is accessible to the general public and especially to those who are looking forward to applying for a Trademark.

Why do you need a Trademark Attorney?

People often make the mistake of trying to register a trademark that simply doesn’t qualify for registration. Applying for a Trademark through a Trademark Agent/ Attorney can be very helpful as the Trademark Attorneys:

• can provide the best advice to the proprietor regarding the class in which the Trademark should be applied in.
• also, provide the proprietor with the different obstacles that can come his way in registering a particular Trademark.
• assist the client by searching the trademark and ensure the availability of the trademark for registration.
• are familiar with all the forms that are required to be filed while applying for a Trademark by virtue of having experience.

What are the legal requirements to apply for a Trademark through an attorney?

In order to apply for a trademark through a Trademark Attorney or Agent, a form TM- G (Trademarks Agent Registration) needs to be executed which establishes an agency between the proprietor and the Agent/ Attorney which gives the authority to Agent/Attorney to act on behalf of the proprieto.

Upon such authorisation, all the communication from the Registry is directed towards the Agent/Attorney which include:

• Service of documents relating to the proceedings
• Appearance before the Registry in relation to any matter connected with the registration process