“Navigate the recent confusion on whether Company Secretaries can act as Trademark Agents. Explore the qualifications outlined in Rule 144 of Trade Mark Rules, 2017, and ICSI’s Council decision in the 290th meeting. Receive clarity on the eligibility of Company Secretaries and understand the need for proactive communication to resolve any potential issues.”
In recent times, a response letter dated 05.05.2023, related to an application for registration as a Trademark Agent, has been circulating on WhatsApp. This response has raised questions regarding the eligibility of Company Secretaries to act as Trademark Agents. The letter suggests that the Company Secretaries Act, 1980, does not list the Trade Marks Act, 1999, as a qualification for practicing as both a Company Secretary and a Registered Trademark Agent. This article aims to address this issue and provide clarity on whether Company Secretaries can indeed act as Trademark Agents.
Qualifications for Trademark Agents:
According to Rule 144 of the Trade Mark Rules, 2017, a person can be registered as a Trademark Agent if they meet the following qualifications:
1. Citizenship and Age: The person must be a citizen of India and at least 21 years old.
2. Education: The applicant should be a graduate of any university in India or possess an equivalent qualification. Additionally, they should have passed the examination prescribed in Rule 148. Alternatively, they can be an Advocate as defined in the Advocates Act, 1961 (25 of 1961) or a member of the Institute of Company Secretaries of India (ICSI).
3. Fit and Proper Person: The Registrar should consider the applicant as a fit and proper person to be registered as a Trademark Agent.
ICSI’s Stand on Company Secretaries as Trademark Agents:
In its 290th meeting held on 14th October 2022, the Council of the ICSI granted general permission to Company Secretaries in practice to offer various services, including acting as an Intellectual Property Rights (IPR) agent. This decision was aimed at expanding the scope of services that Company Secretaries can provide.
Conclusion:
Based on the provisions mentioned in Rule 144 of the Trade Mark Rules, 2017, and the decision of the ICSI’s Council in their 290th meeting, it is evident that a member of the ICSI can act as both a Company Secretary and a Trademark Agent simultaneously. However, the recent response letter circulating on WhatsApp has caused confusion and raised doubts about this eligibility.
To resolve this issue, it is essential for the ICSI to proactively reach out to the concerned Trademark authorities and clarify that a Company Secretary is indeed allowed to act as a Trademark Agent under the provisions of the Trade Marks Act, 1999, and the rules made thereunder. This clarification will not only save time for Company Secretaries but also prevent potential loss of clients and unnecessary complications.
In the meantime, anyone who receives a letter similar to the one mentioned should respond by providing a copy of the outcome of the 290th meeting of the ICSI. This will help to address the confusion and ensure that the rights and qualifications of Company Secretaries as Trademark Agents are duly recognized and upheld.
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Disclaimer: The author is based in Jabalpur and is a Practicing Company Secretary dealing in Corporate, Legal & Taxation services. The information contained in this write up, as provided by the author, is to provide a general guidance to the intended user. The information should not be used as a substitute for specific consultations. Author recommends that professional advice is sought before taking any action on specific issues.
The author can also be reached at cstanveersaluja@gmail.com.
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