TRADE MARK AGENT

[Mr. M. GOVINDARAJAN]

Section 145 of Trade Marks Act, 1999 (‘Act’ for short) specifies the following persons who can appear before the Registrar of Trade Marks in respect of proceedings:

• A legal practitioner;
• A person registered in the prescribed manner as a Trade Marks Agent;
• A person in the sole and regular employment of the principal.

Rules 148 to 162 of Trade Mark Rules, 2002 (‘Rules’ for short)    prescribe detailed rules for registration as a Trade Mark agent and allied matters.

Qualification for registration

Rule 150 prescribes the qualifications for registering as a trade mark agent as detailed below:

• He shall be a citizen of India;
• He is not less than 24 years of age;
• He has passed the examination prescribed or is an Advocate or the Member of Company Secretaries of India;
• He is a graduate of any university in India or possess an equivalent qualification; and
• He is considered by the Registrar as a fit and proper person to be registered as a trade mark agent.

Disqualifications

Rule 151 prescribes the disqualification for becoming a trade mark agent.   A person shall not be eligible for registration as a trade mark agent if he-

• Has been adjudged by a competent court to be of unsound mind;
• Is an undischarged insolvent;
• Being a discharged insolvent has not obtained from the court a certificate to the effect that his insolvency was caused by misfortune without any misconduct on his part;
• Has been convicted by a competent Court, whether, within or without India of an offence punishable with transportation or imprisonment, unless the offence of which he has been convicted has been pardoned or unless on an application made by him, the Central Government by order in this behalf, has removed the disability;
• Being a legal practitioner has been held guilty of professional misconduct by any High Court in India or by any Court beyond the limits of India;
• Being a Chartered Accountant, has been held guilty of negligence or misconduct by a High Court; or
• Being a registered trade mark agent has been held guilty of professional misconduct by the Registrar.

Procedure

• A person desiring to be registered as a trade marks agent shall make an application in Form TMA – 1 in triplicate along with a fee of ₹ 1,000/-;
• The applicant shall furnish such further information bearing on his application as may be required of him at any time by Registrar;
• On receipt of application, the Registrar, if satisfied that the applicant fulfils the prescribed qualification, shall appoint a date in due course on which the candidate will appear before him for a written examination in Trade Marks Law and practice followed by an interview;
• The candidate will be expected to posses a detailed knowledge of the provisions of the Act and the rules and knowledge of the elements of Trade Marks Law;
• The qualifying marks for the written examination and for interview shall be 40% and 60% respectively and a candidate shall be declared to have passed the examination, only if he obtained an aggregate of 50% of the total marks;
• After a candidate has been interviewed and any further information bearing on his application, which the Registrar may consider necessary has been obtained and if the Registrar considers the applicant eligible and qualified for registration as a trade mark agent, he shall send an intimation to that effect to the applicant and any person so intimated may pay the prescribed fee;
• On receipt of the fee the Registrar shall cause the applicant’s name to be entered in the register of trade marks agents and shall issue to him a certificate of his registration as trade mark agent;
• The continuance of person’s name in the Registrar of Trade Mark Agent shall be subject to his payment of the fees ₹ 1000/-

Rule 148 provides that the Registrar of trade marks shall maintain a register of trade mark agents wherein shall be entered the name, address of the place of residence, address of the principle place of business, the nationality, the qualification and date of registration of every registered trade mark.  The Registrar may publish in the Journal a code of conduct for registered trade marks agent authorizing them to act as such.

Authorization of an agent

The authorization of an agent is to be executed in Form No. TM – 48.  When there is a proper authorization, service upon the agent of any document relating to the proceeding shall be deemed to be served upon the person so authorizing him.  The Registrar, however, may require the personal signature or presence of an applicant or opponent, proprietor, registered user or other person in any particular case.

Once a trade mark agent is authorized he is entitled to perform any act required to be done before the Registrar on behalf of his client.  He is even entitled to enter into a compromise acting in a bona fide manner unless there are express directions to the contrary as held in ‘Anglo French Drug V. Tinaiker’ – 1957 (2) TMI 59 - Bombay High Court. 

In ‘Police Trade Mark’ – (2004) RPC 35 case a request for adjournment of the hearing on the ground that the client was abroad receiving medical treatment and wished to attend, was refused.   On appeal to the appellate authority the appellate authority held that the applicant would have little if anything to contribute if she were to be present.

Once an Advocate is to be appointed as a constituted attorney by a party for a case he cannot act as a counsel as well as for the purposes of a case as held in ‘Columbia Pictures Industries Inc. V. Siri Cable Network Limited’ – 2001 (3) TMI 1017 - DELHI HIGH COURT.  But in the case ‘Jolen Inc. V. Shobanlal Jain’ – 2004 (4) TMI 570 - Madras High Court it was held that if an Advocate is appointed to act a Power of Attorney Agent, he can very well act as an Advocate also and nothing prevents him from acting as Power of Attorney so long as there is no conflict of interest, in the discharge of his professional duty and his duty as Power of Attorney Agent.

Section146 of the Act provides that if an agent or a representative of the proprietor of a registered trade mark, without authority uses or attempts to register or registers the mark in his own name, the proprietor shall be entitled to oppose the registration applied for or secure its cancellation or rectification of the register so as to bring him as the registered proprietor of the said mark by assignment in his favor.   Such action shall be taken within three years of the registered proprietor of the trade mark becoming aware of the conduct of the agent or representative.

Removal of agent’s name

Rule 157 provides for the removal of trade mark agent’s name from the register of trade marks.   The Registrar shall remove from the Register of Trade Marks Agents the name of any registered trade mark agent-

• From whom a request has been received to that effect; or
• From whom the annual fee has not been received on the expiry of three months from the on which it becomes due.

The Registrar shall remove from the register of trade marks agents, the name of registered trade marks agent-

• Who is found to have been subject at the issue of his registration or thereafter has become subject, to any of the disabilities in Rule 151; or
• Whom the Registrar has declared not to be a fit and proper person to remain in the Register by means of any act of negligence, misconduct or dishonesty committed in his professional capacity;
• Whose name has been entered in the register by an error or on account of misrepresentation or suppression of material fact.

Before making such declaration the Registrar shall call upon the person concerned to show cause why his registration should not be cancelled and shall make such further enquiry, if any, as it may consider necessary.  The Registrar shall remove from the register of trade mark agents, the name of any registered trade marks agent who is dead.   The removal of the name of any person shall be notified in the journal and shall, wherever possible, be communicated.

Restoration of removed names

Rule 159 provides that the Registrar may, on the application made in Form TMA – 2 within six months from the date of removal of his name from the Registrar of trade marks agent accompanied by the fee ₹ 1000/-, restore his name to the register of trade marks agents and continue his name therein for a period of one year from the date on which his last annual fee became due.   The restoration of a name shall be notified in the journal and shall be communicated to the persons concerned.

Power of Registrar to refuse to deal with certain agents

Rule 158 provides that the Registrar may refuse to recognize-

• Any individual whose name has been removed from, and not restored to the register;
• Any person, not being registered as a trade mark agent, who in the opinion of the Registrar is engaged wholly or mainly in acting as agent in applying for trade marks in India or elsewhere in the name or for the benefit of the person by whom he is employed;
• Any company or firm, if any person whom the Register could refuse to recognize as agent in respect of any business under these rules, is acting as a director or manager of the company or is a partner in the firm.

The Registrar shall also refuse to recognize as agent in respect of any business, under this rule, any person, who neither resides nor has a place of business sin India.

Alternation in the name of trade marks agent

Rule 160 provides that a registered trade marks agent may apply in Form TMA-3 for alteration of his name, address of the place of residence, address of the principal place of business or qualifications entered in the register of trade marks agents.  On receipt of such application along with the fee of ₹ 200/- the Registrar shall cause the necessary alteration to be made in the register of trade mark agents.  Every alteration make in the register of trade marks agents shall be entered in the journal.

Publication of the register of trade mark agents

Rule 161 provides that the Registrar shall ordinarily publish the list of agents in the register of trade mark agent shall be published in the journal from time to time and at least once in two years together with his address as entered in the register, the entries being arranged in the alphabetical order of the surnames of the registered trade mark agents and copies thereof shall be placed for sale.

Appeal

Rule 162 provides that an appeal shall lie to the Intellectual Property Appellate Board from any order or decision of the Registrar in regard to the registration or removal of trade marks agents under Part V of these Rules and the decision of the Appellate Board shall be final and binding.11