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6 1996

TRADE MARKS ACT, 1996

PART V

Trade Mark Agents

Authorised agent may act.

83. —(1) Subject to rules made under section 90 , whenever, under this Act, any act has to be done by or to any person in connection with the registration of a trade mark or any procedure relating to a registered trade mark, the act may be done by or to an agent—

(a) who is authorised by that person orally or in writing; and

(b) who is a registered trade mark agent.

(2) A person duly authorised by another person under subsection (1) to act as his registered trade mark agent may (subject to any provision to the contrary in any agreement between the agent and that person), on giving notice to the Controller and the other person, cease to act as registered trade mark agent for the other person.

Register of Trade Mark Agents.

84. —The Register which, immediately before the commencement of this section, was known as the Register of Trade Mark Agents shall continue to be known as such and to be maintained by the Controller; and in this Part—

(a) “the Register” means the Register of Trade Mark Agents;

(b) “registered trade mark agent” means a person whose name is entered in the Register; and

(c) “registration”, in relation to a person who is or has been a registered trade mark agent, means the entry of that person's name in the Register.

Business to be carried on only by registered trade mark agents &c.

85. —(1) Subject to the provisions of this section, an individual who is not a registered trade mark agent shall not—

(a) carry on a business (otherwise than in partnership) under any name or other description which contains the words “registered trade mark agent”, or

(b) in the course of a business otherwise describe or hold himself out, or permit himself to be described or held out, as a registered trade mark agent.

(2) A partnership shall not—

(a) carry on a business under any name or other description which contains the words “registered trade mark agent”, or

(b) in the course of a business otherwise describe or hold itself out or permit itself to be described or held out, as a firm of registered trade mark agents,

unless all the partners are registered trade mark agents or the partnership satisfies such conditions as may be prescribed for the purposes of this section.

(3) A body corporate shall not—

(a) carry on a business (otherwise than in partnership) under any name or other description which contains the words “registered trade mark agent”, or

(b) in the course of a business otherwise describe or hold itself out, or permit itself to be described or held out, as a registered trade mark agent,

unless all the directors of the body corporate and any manager who is not also a director are registered trade mark agents or the body satisfies such conditions as may be prescribed for the purposes of this section.

(4) With a view to the fulfilment by the Government on behalf of the State of any international agreement to which the State is a party, the Minister may permit any person who is not a registered trade mark agent but who is a citizen of a state which is also a party to that international agreement, upon application made by that person, to act on behalf of others in relation to trade marks subject to any conditions that the Minister considers appropriate.

(5) The legal personal representative of a deceased registered trade mark agent may carry on the business or practice of the deceased agent for a period not exceeding three years from the agent's death, or for such further period (if any) as the Court allows if the personal representative—

(a) is authorised by the Court to manage the business or practice; or

(b) employs another person who is so authorised to manage the business or practice on behalf of the personal representative.

(6) Any person who contravenes any provision of this section shall be liable on summary conviction to a fine not exceeding £500 in the case of a first offence and, in the case of a second or subsequent offence, £1,000; and, notwithstanding section 10 (4) of the Petty Sessions (Ireland) Act, 1851, proceedings for an offence under this section may be commenced at any time within twelve months from the date of the offence.

(7) Nothing in this Act shall be construed as prohibiting solicitors or barristers from taking such part in proceedings under this Act as has heretofore been taken by solicitors or barristers in connection with a trade mark or any procedure relating to a trade mark or the registration thereof.

(8) A registered trade mark agent shall not be guilty of an offence under section 58 of the Solicitors Act, 1954 (which prohibits the preparation for reward of certain instruments by persons not legally qualified), by reason only of the preparation by the agent of—

(a) a deed assigning the property in a trade mark application or trade mark; or

(b) any document (not being a deed) for use in proceedings under this Act before the Controller or the Court.

(9) No offence is committed under any enactment restricting the use of certain expressions in reference to any person not qualified to act as a solicitor by use of the term “Community Trade Mark Attorney” in reference to a Registered Trade Mark Agent.

Entitlement to be registered as trade mark agent.

86. —(1) Any person who—

(a) resides in the State or in such other state as may be prescribed,

(b) has a place of business in the State,

(c) possesses the prescribed educational and professional qualifications, and

(d) complies with the prescribed conditions,

shall be eligible to be a registered trade mark agent and a partnership shall be so eligible if every partner is registered in accordance with the provisions of this section; and, on application in the prescribed form and manner and on payment of the prescribed fee, a person or partnership so eligible shall be registered.

(2) Persons and partnerships whose names were entered in the Register under the Act of 1963 immediately before the commencement of this Act shall continue to be registered trade mark agents.

Removal from Register.

87. —The Controller may, upon the application of any person who is a registered trade mark agent, remove that person's name from the Register.

Suspension and erasure of registration of trade mark agent.

88. —(1) Where, in the opinion of the Controller, a person who is a registered trade mark agent ceases to be eligible to be registered or has been guilty of conduct disgraceful to that person in the capacity of a registered trade mark agent, the Controller may, after giving that person an opportunity to be heard, decide that the name of that person should be erased from the Register or that, during a period of specified duration, that person's registration should not have effect.

(2) On making a decision under subsection (1), the Controller shall forthwith send by post to the person to whom the decision relates (in this section referred to as “the person in default”), at that person's address as stated in the Register, a notice in writing stating the decision, the date thereof and the reason therefor.

(3) On giving notice to the Controller in the prescribed manner, the person in default may, within the period of 21 days beginning on the date of the decision in question, apply to the Court for cancellation of the decision; and, if that person so applies, the Court, on hearing the application, may either—

(a) cancel the decision, or

(b) declare that it was proper for the Controller to make a decision under subsection (1) in relation to the person in default and either (as the Court may consider proper)—

(i) direct the Controller to erase the name of the person in default from the Register; or

(ii) direct that, during a specified period (beginning not earlier than 7 days after the decision of the Court), the registration of the person in default shall not have effect.

(4) If at any time the Controller satisfies the Court that the person in default has delayed unduly in proceeding with an application under subsection (3), the Court shall, unless it sees good reason to the contrary, declare that it was proper for the Controller to make a decision under subsection (1) in relation to the person in default and either (as the Court may consider proper)—

(a) direct the Controller to erase the name of the person in default from the Register; or

(b) direct that, during a specified period (beginning not earlier than 7 days after the decision of the Court), the registration of the person in default shall not have effect.

(5) Where the person in default does not, within the period of 21 days beginning on the date of the decision in question, apply to the Court for cancellation of the decision, the Controller may apply exparte to the Court for confirmation of the decision; and, if the Controller so applies, the Court on the hearing of the application shall, unless it sees good reason to the contrary, declare accordingly and either (as the Court may consider proper)—

(a) direct the Controller to erase the name of the person in default from the Register; or

(b) direct that, during a specified period (beginning not earlier than 7 days after the decision of the Court), the registration of the person in default shall not have effect.

(6) The decision of the Court on an application under subsection (3) or subsection (5) shall be final, save that, by leave of the Court or the Supreme Court, an appeal by the Controller or the person in default from the decision shall lie to the Supreme Court on a specified question of law.

Notice of erasure or suspension: subsequent restoration.

89. —(1) Upon the erasure of the name of a person from the Register the Controller shall forthwith send by pre-paid post to that person, at that person's address as stated in the Register, notice in writing of the erasure.

(2) Where a decision is made under section 88 that, during a specified period, a person's registration shall not have effect, the Controller shall, before the commencement of that period, send by pre-paid post to that person, at that person's address as stated in the Register, notice in writing of the decision.

(3) The name of any person which has been erased from the Register may at any time be restored to the Register by direction of the Controller but not otherwise; and, when a person's name is so restored to the Register, the Controller may attach to the restoration such conditions (including the payment of a fee not exceeding the fee which would be payable by the person for registration if that person was being registered for the first time) as the Controller thinks fit.

(4) Where a person's registration has ceased to have effect under section 88 for a specified period, the Controller may, if he so thinks fit, on application made to him by that person, terminate the suspension.

Rules relating to trade mark agents.

90. —(1) The Minister may make rules for the management of the Register and may, by those rules, prescribe any matter or thing referred to in this section or section 85 and, in particular, may so prescribe the educational and professional qualifications and the conditions (including conditions relating to nationality or citizenship) for eligibility for registration and the maximum fees which may be charged by any person who is registered for such services in connection with trade marks as may be specified in the rules.

(2) Rules under subsection (1) may authorise the Controller to refuse to recognise as agent in respect of any business under this Act any person who does not satisfy the requirements of section 85 .

(3) Rules under this section may authorise the Controller to refuse to recognise as agent in respect of any business under this Act a company or firm of which any director, manager or partner (as the case may be) is an individual whom the Controller could refuse to recognise as an agent.

Privileged communications.

91. —(1) This section applies to communications in respect of any matter relating to the protection of a trade mark or in respect of any matter involving passing off.

(2) Any communication to which this section applies—

(a) between a person and his registered agent, or

(b) for the purposes of obtaining or in response to a request for information which a person is seeking for the purpose of instructing his registered agent,

is privileged from disclosure in legal proceedings in the State in the same way as a communication between a person and his solicitor or, as the case may be, a communication for the purpose of obtaining or in response to a request for information which a person seeks for the purpose of instructing his solicitor.

(3) In subsection (2)registered agent” means—

(a) a registered trade mark agent;

(b) a partnership entitled to describe itself as a firm of registered trade mark agents; or

(c) a body corporate entitled to describe itself as a registered trade mark agent.