Is an attorney required to register a trademark?

Nikhil Nair

A trademark attorney is someone who has is an expert in matters relating to trademark laws, designs and practices. He provides legal advice and assistance in fields relating to trademark laws and other laws relating to IPR (Intellectual Property Rights). He is a person with a vast knowledge of trademark laws and fights cases with his expertise regarding the topic.

A trademark attorney must be registered to practice before the IPAB (Intellectual Property Appellate Board). A Trademark attorney assists a trademark holder or a potential trademark holder in every way possible by guidance and legal support. He also makes sure that the trademark he is applying for does not infringe with any other trademark holder.

The question whether an attorney is required to file for a trademark registration is debatable but if measured on a weighing scale, the side to appoint an attorney becomes heavier. Yes, it is possible for a common man filing a trademark to not appoint an attorney, especially when all the laws and rules are properly laid down for a trademark to be filed. Any layman who wants to register a trademark can apply himself. But when the practical applicability is considered, appointing an attorney will ease the process to register a trademark. Certain procedures are to be followed to apply for a trademark.

  • An application is filed.
  • The all India record is searched thoroughly to identify any similar registered trademark.
  • The Trademark Office takes about 2 years to consider or grant the applied trademark and post in in the Trademark Journal.
  • In case of any opposition from a party claiming a similar trademark, it has to be settled by fighting a case and proving the originality of the filed trademark.
  • Only if the case is won, is the trademark granted by the Office/Court.

Applying for a trademark is a big and vast process. It generally is a tiresome process and appointing an attorney suits the purpose.

Why an attorney should be appointed ?

  • If a situation arises when an objection is raised against a filed trademark, an attorney is the only qualified person to argue the matter and settle it so that the registration is granted making the appointing of an attorney important.
  • Secondly, having an attorney appointed always has a good result in future. In the unforeseen circumstances of the death of the person who filed for the trademark, the attorney can act as a legal representative of the dead with the consent of the deceased person’s legal heir. There are jobs like renewing the Trademark every 10 years and such which if left to the attorney will save more time.
  • He will take the burden off the shoulders of his client and the client does not have to do every job personally.

The work of filing a trademark can be either delegated to a Trademark attorney or a trademark agent. A trademark agent is not a lawyer unlike a trademark attorney. He can only practice in trademark laws and that too after fulfilling various conditions of the IPAB whereas a trademark attorney has more knowledge and is a qualified lawyer and practices law outside the IPAB Trademark Office as well and so have an upper edge over the agents.Any person who himself is an attorney and is filing for a trademark can do away with appointing a trademark attorney because he might know his set of laws clearly to be able to file a trademark. He can afford to do away with an attorney. But it is recommended that an expert trademark attorney is appointed who gives legally sound opinions to the layman who has no knowledge about law. Apart from this, a trademark attorney can also be instrumental in giving proper legal knowledge after consultation.

Nikhil Nair
Vivekananda Institute of Professional Studies,
GGSIP University, New Delhi