Legislation on eligibility of trademark agents amended
Certain provisions of the Irish Trademarks Act 1996 and the Trademarks Rules 1996 on the eligibility of persons established and qualified in other EU member states to act as trademark agents have been amended to allow such persons to act for another party in relation to trademark matters before the controller of patents, designs and trademarks in Ireland.
First, the European Communities (Provision of Services Concerning Trademarks and Industrial Designs) Regulations 2007 introduced an amendment to the act.
Prior to September 5 2007, a person wishing to register or deal with a trademark in Ireland through a trademark agent was obliged to do so through an Irish-registered trademark agent. Following the amendment, a trademark agent who is qualified to act as such in his or her own member state may also act for his or her client in Ireland. On or before the first occasion on which such an agent acts for his or her client in connection with a trademark matter in Ireland before the controller, he or she must provide to the controller evidence that he or she is established in another member state and is qualified under the law of that state to act as a trademark agent. The agent must also provide evidence of his or her nationality or, in the case of a company or firm, evidence of its status as a company or firm within the meaning of Article 48 of the EC Treaty.
In acting for clients before the controller, a non-Irish registered agent will be required to use the professional title that he or she uses by virtue of being qualified to act as a trademark agent in the member state in which he or she is established or qualified. If no such title exists, the agent must indicate that he or she possesses the applicable qualifications that a trademark agent must possess under the law of the member state in which he or she is established or qualified. Such title must be expressed in the official language or one of the official languages of that member state. If the title is expressed in English (or Irish), it must not give the impression that such a person is registered under the Trademarks Act. However, such a title will be sufficiently distinct from its Irish counterpart if it is accompanied by an indication of the member state in which the agent concerned is established or qualified.
The provisions of the act relating to entitlement to be registered as a trademark agent and privileged communications have also undergone some minor amendments to allow for non-Irish registered agents.
Second, the Trademarks (Amendment) Rules 2007 (which deal with address for service, applications for registration as a trademark agent and the controller's ability to refuse to deal with certain agents) have been altered as a consequence of the amendments contained in the regulations.
The address for service for all correspondence in relation to a trademark application may now be within the European Union, as opposed to Ireland (as was the position before September 5 2007).
Any person seeking to be registered as a trademark agent must now apply in writing to the controller (such application to be accompanied by the prescribed fee) and provide:
- his or her full name;
- date of birth;
- private address;
- name or style under which he or she proposes to carry on business as a registered trademark agent;
- the address at which he or she proposes to carry on business; and
- full particulars of educational and professional qualifications.
Similar provisions exist for partnerships.
In order to be approved for registration in the Register of Trademark Agents, a person must have:
- sat a leaving certificate examination (the Irish terminal examination of post-primary education); and
- obtained a pass at ordinary level or attained a qualification of equivalent standing.
The applicant must also demonstrate a satisfactory knowledge of the law and practice of trademarks. These requirements may be waived if, based on the applicant's educational and professional qualifications, he or she is judged fit to perform the professional duties of a registered trademark agent. The applicant may be required to take a written or oral examination in the law and practice of trademarks.
Applicants must supply the following as evidence of nationality and qualifications:
- Evidence indicating that they are established in the member state concerned for the purpose of pursuing the relevant activities;
- Evidence of their applicable qualifications, such as a copy of a diploma or certificate, or other evidence of formal qualifications awarded by the competent authority of the member state concerned which indicates that the person is qualified to act as a trademark agent in that state;
- When proving nationality, a copy of a passport, national identity card or other proof of nationality; and
- Corporate bodies must provide a certificate of incorporation, an entry in the relevant register or other proof of the possession of the required legal personality, or a copy of a certificate or an entry in a relevant register specifying the location of the legal person's registered office, central administration or principal place of business or other proof of its location.
Any material change relating to an agent's qualification to act as a trademark agent in the member state concerned must be notified in writing to the controller without delay.
Finally, the scope afforded to the controller when considering which agents he or she may refuse to recognize under the act has been widened. The scope now also takes in those persons who:
- no longer satisfy the requirements of establishment/qualification in their own member state; and
- are not in compliance with the aforementioned evidential requirements.
The controller may also refuse to recognize individuals who fail to inform him or her of any material change in their standing as trademark agents in their own member state.
Brian McElligott, DFMG Solicitors, Dublin
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