Position of Trademark Agent in India – Trademark Registration in Cochin
Comparative Reference
This Section corresponds to Section 122 of the Trade and Merchandise Marks Act, 1958 which specifies the position of the Trademark Agent.
Definition of Trademark Agent
The process of getting your trademark registered is now available online as well as the physical form. This process initially comes across to be fairly simple, something that a common man can felt difficult while receiving objections from the Trademarks Registry and Opposition from the opponent. For clear this above kind of difficulties, everyone needs a person who has the complete awareness and direct dealing with the Trademarks Registry. The Trademark Agent acts like a bridge between the Trademark Registry and the applicant. Trademark registration is a simple process and procedure and a lot of details required, which is easiest process for trained eye. Expertise is required from the very beginning of the registration process and he will have the complete knowledge about the Trademarks act and Rules. Choosing a right trademark is not an easy task. You need to ensure that it is not similar to any already preceding trademark and that it is in compliance with the relevant legislations in India. The trademark attorney and the trademark agent makes the above steps easier and also proceed the process easier for you.
The trademark agent/attorney helps you in choosing a right trademark for your product after ensuring compliance with the legal norms and regulations and thus leveraging the chances of refusal of your trademark application.
The second step is the filing of an application for trademark registration. Filing process requires some specific details that can be dealt with by ease by a trademark attorney in India. Apart from this, if there are any objections from the Trademarks registry to the trademark registration, it is duty of the attorney to reply to the objection and provide you with an alternative way. The trademark attorney is prosecuting the trademark applications indispensable. If any infringement arises, the attorney provides important advice about the nuances of trademark infringement to the applicant. And also the trademark attorney simplifies the long time process and reduces the risk. And also providing a complete guidance over the trademark gets registered.
Position of Trademark Agent
A trademark registration is a process of registering the word mark as given by the entrepreneur and registering it by the help of Trademark Agent. A trademark agent name must be in the Trademarks Registry as the registered agent for Trademark. He is may be a single person or an entity or an agency. Whether the agency is an industry or not? This question has been elaborately discussed by Mitter. J. in paragraph 22.
“Under Rule 152 a person desirous of qualifying himself as a trademark agent must poses a detailed knowledge of the provisions of the Act and the Rules and a knowledge of the elements of trademarks law and appear at a written examination in the subjects. It is, therefore, clear that a person or body of persons who practice as trademark agents must be fully qualified and possess sufficient working knowledge of the Act and the Rules. They have to advise clients about the procedure to be followed and the steps to be taken for compliance with the provision of the Act and for protecting their rights under the Act. So long as they confine their activities to these things it may be said that they pursue a liberal profession which would be outside the scope of Industrial disputes Act. But I venture to think that if they overstep that limit and help their clients or do things for them not in an advisory capacity, nor merely in a representative capacity permitted under the Act but indulge in other activities which may help their clients in complying with the formalities prescribed by the Act and the rules for protecting or perfecting their rights under the Act, they may be said to pursue an industry. No conclusion on this can be arrived at unless an examination is made of the manner in which the activities of the firm are carried on and an estimate is made of the volume of the transactions effected which are not purely advisory or representative. For instance, it is no part of the business of the trademark agents to prepare labels or supply printing blocks are supplied only casually it could hardly be said that the trademark agents were pursuing an industry, but, if such labels or printing blocks were prepared and supplied regularly to meet the needs of the clients, I see no reason why such activity would not constitute an industry if there was a regular co-operation between the agents and their employees. I do not find it possible to hold that any and every activity of trademark agents which would help their clients in acquiring or securing their rights under the Trade and Merchandise Marks Act, 1958 id attributable to the practice of their profession as agents and as such outside the ambit of the word “industry” in the Industrial Disputes Act. If after taking full evidence with regard to the items mentioned in paragraph 8 of the affidavit of Joseph the conclusion to be arrived at is that the predominant activity of the firm is outside the Act and those mentioned in paragraph 8 are only minor and causal activities carried on by the subordinate staff’ it must be held that the work of the firm does not constitute an industry. In my view, no conclusion is possible before evidence is adduced with regard to the activities of the De Penning’s, the manner in which the items of work mentioned in Paragraph 8 of the affidavit of Joseph is executed and the part played by the employees rendered with regard thereto. If it be found that the firm transacts a considerable volume of work which does not have to be performed by trademark agents under the Act with the help of the employees it must be held that the work of the firm constitutes an industry”.
Delay in Filing
Gross misdemeanors and inaction on the part of the agent of trademarks are considered to be “sufficient cause” for the condonation of delay. And also this section protects the rights of the proprietor of a trademark. If his Trademarks Agent or representative attempts to register or registers the mark in his own name, without authority, the proprietor is entitled to oppose the application or to apply for rectification or to apply for renewal so as to bring him as the registered proprietor. The time within which such action has to be taken is three years from the date he is aware of the conduct of the particular Trademark agent.
Reciprocity
This section corresponds to section 132 of the Trade and Merchandise Marks Act, 1958. This section contains provisions as to reciprocity. If any country or country which is a member of a group of countries or union of countries or inter-governmental organizations, does not accord to citizens of India the same rights as to registration and protection of trademarks as it accords to its own nationals, no national of that country or country which is a member of a group of countries or union of countries or Inter-governmental organizations, as the case may be, is entitled to apply for registration of a trademark, to apply for registration as a registered user of trademark or to be registered as the assignee of the registered proprietor of a trademark in India. Trademarks Registry has a number of indexes which is used to separate the trademarks as status wise according to the section 124 of the Trade and Merchandise Marks Act, 1956. Section 124 provides especially for keeping different indexes at the Trademarks Registry, which are indexes of registered and pending trademarks, registered proprietor’s index and index of registered users.
Application under Reciprocal Arrangement
Every application claiming priority under section 154 by reason of an application to register trademark having been made in a convention country, so declared under sub-section (1) of section 154, which specified country shall be named, shall present the date of that application and the applicant shall get a certificate by the Registrar or other registering authority of that country or shall otherwise verify the application made therein to the satisfaction of the Registrar. The applicant must satisfy the provision under the Act. The section affords no answer to an application for rectification of the register by removal of a mark which was originally entered without sufficient cause. For instance in Vignier’s T.M. the trademark ‘Monobrut’ for champagne although duly registered in France was held to be wrongly put on the register and that the mark was descriptive or ought to be removed from the Register.