In this editorial author shall discuss a copy of letter circulating on the Social Meeting in respect of questioning Practicing Company Secretary to act as Trademark agent.
As per Trademark Rules 2017:
“agent” means a person authorized to act as such under section 145 of the Act;
Part IV of Rules states about the Trademark Agent.
Extract of Rule 144 of Trademark Rules 2017 states about Qualifications for registration. — Subject to the provisions of rule 145, a person shall be qualified to be registered as a trademark’s agent if he—
(i) is a citizen of India,
(ii) is not less than 21 years of age.
(iii) is a graduate of any university in India or possesses an equivalent qualification and has passed the examination prescribed in rule 148 or is an Advocate within the meaning of the Advocates Act, 1961 (25 of 1961) or is a member of the Institute of Company Secretaries of India.
(iv) is considered by the Registrar as a fit and proper person to be registered as a trademark agent.
QUESTION FOR DISCUSSION
QUE: WHETHER A PRACTICING COMPANY SECRETARY ACT AS TRADEMARK AGENT?
ANS: As mentioned in Rule 147 a person is eligible to act as Trademark Agent if such person is member of Institute of Company Secretaries of India (ICSI).
However, as per the letters circulated on the social media dated 05-05-2023 it is mentioned by the authority that “The CS Act, 1980 doesn’t list the Trademark Act, 1999 for simultaneously Practicing before the Trade Mark Registry”. I am directing to inform you that you are required to submit an affidavit stating that after registration as Trademark Agent you will not be practicing as Company Secretary”.
However, as per Section 2(2)(f) of the CS Act, 1980 read with Resolution passed by the ICSI Council in its 232nd Meeting (Adjourned) on 29/12/2015. However, as per the s 290th meeting held on 14th October 2022 ICSI passed the Resolutions providing for the services which can be rendered by Company Secretary in practice.
“As per II) The Council has granted general permission to the Company Secretaries in practice for the following: I) to act as IPR agent, ISO Consultant.”
After reading the Section 2(2)(f) of the CS Act, 1980 read with resolution passed in 290th meeting held on 14th October 2022 one can opine that “A Practicing Company Secretary can act as Trademark Agent.”
Therefore, if anyone receives this type of letter from the Trademark Authority they can submit a copy of ICSI Act along with the resolution passed in 290th Meeting of ICSI.
Author – CS Divesh Goyal, GOYAL DIVESH & ASSOCIATES Company Secretary in Practice from Delhi and can be contacted at firstname.lastname@example.org).