Rule 147- Alarming situation for CS in proposed TM Rules

                 (on the letter head or send in the mail)

Additional Secretary to the Government,

Ministry of Commerce and Inustry,

Department of Industrial Policy and Promotion,

Udyog Bhawan, New Delhi – 110011

Sub.: Objections/suggestions to the proposed Trademark Rules, 2015 dated 17^th November, 2015.

Dear Sir/Madam,

This is in reference to the draft Trademark Rules, 2015 (“Draft Rules”), published by the Government of India and as shown on the website of Registrar of Patents and Trademark we would like to submit certain suggestions/observation to the said draft rules before your good office.

We are practicing as Company Secretaries and undertake the assignments for registration of trademarks on behalf of Public at Large. We also spread the knowledge and make people aware about their Intellectual Property Rights.

In reference to the draft Rules our Objections/Suggestions are as follows:

Rule 147: Exclusion of Company Secretaries to be qualified as Trademark Agent

We would like to submit before the Department that Government of India vide Standing Order bearing No. 1396, dated 23^rd March, 1985 (w.e.f. 6^th April, 1985) substituted Rule 148(iii) of the Trade and Merchandise Marks Rules, 1959, and inserted the provision that a Member of the Institute of Company Secretaries of India is also qualified to be registered as a trade marks agents.

Whereas, Rule 150 of the Trade Marks Rules, 2002, carried the same provisions and provides as follows:

“150. Qualifications for registration: Subject to the provisions of rule 151, a person shall be qualified to be registered as a trade marks agent if he:

(i)        is a citizen of India;

(ii)      is not less than 21 years of age;

(iii)  has passed the examination prescribed in rule 154 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 a graduate of any university in India or possess an equivalent qualification; and

(v)       is considered by the Registrar as a fit and proper person to be registered as a trade mark agent.”

However, in the proposed Rules the Member of the Institute of Company Secretaries of India are excluded from the provisions of qualification of Trademark Agents. Rule 147 of the Draft Rules provides as follows:

“147. Qualifications for registration: Subject to the provisions of rule 148, a person shall be qualified to be registered as a trade marks 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 151 or is an Advocate within the meaning of the Advocates Act,1961 (25 of 1961);

(iv)     is considered by the Registrar as a fit and proper person to be registered as a trade mark agent.”

The members of the Institute of Company Secretaries of India (“the ICSI”) are actively participating in the various fields of law very effectively and are being recognized by the Government of India and public at large as efficient legal representatives before legal authorities such as:

(i)                 Company Law Board.

(ii)               National Company Law Tribunal.

(iii)             Competition Commission of India & Competition

(iv)             Appellate Tribunal.

(v)               Securities Appellate Tribunal.

(vi)             Registrar of Companies.

(vii)           Consumer Forums.

(viii)         Telecom Disputes Settlement and Appellate Tribunal.

(ix)             Tax Authorities.

Company Secretaries are well efficient to handle Trademark registration and representation before the Trademark Authority.  Since, 1985, after getting recognition by the Government of India are actively participating for Trademark Registration and providing services to the public at large.

Our Recommendation:

We request your good office to include the Company Secretaries within the ambit of Rule 147(iii) to provide better Trademark Registration services to the public at large.

We do hereby submit our observation/recommendation on the Draft Rules for your kind perusal. We shall be glad to provide any other detail as required by your good office.

Thanks and Regards

For ..(Name of Firm)….

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