Section 145 of Trademark Act, 1999 is an important provision for advocates, businesses and individuals navigating the trademark system. It makes sure that proceedings are handled by qualified representatives which promotes professionalism and efficiency. Without proper representation, trademark applications or oppositions could face delays or procedural hurdles. This article explores Section 145 of Trademark Act in detail, breaking down its provisions, eligibility criteria, related rules and practical implications. By understanding this section, law practitioners and stakeholders can better appreciate how it streamlines trademark processes while maintaining high standards of conduct.
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What is Section 145 of Trademark Act
Section 145 of Trademark Act, found in Chapter XIII (Miscellaneous) of the Trademark Act, 1999, deals with "Agents." It outlines the categories of individuals authorized to perform acts before the Registrar on behalf of others. The full text reads as follows:
"Where, by or under this Act, any act, other than the making of an affidavit is required to be done before the Registrar by any person, the act may, subject to the rules made in this behalf, be done instead of by that person himself by a person duly authorised in the prescribed manner, who is:
(a) a legal practitioner or
(b) a person registered in the prescribed manner as a trade marks agent, or
(c) a person in the sole and regular employment of the principal."
This provision is straightforward yet pivotal. It allows delegation of responsibilities in trademark proceedings, such as filing applications, responding to oppositions, or attending hearings, to qualified agents. The exception for affidavits ensures that sworn statements remain personal, preventing misrepresentation.
The purpose of Section 145 of Trademark Act is to professionalize trademark practice. By limiting representation to specific groups, it safeguards the integrity of the registry and protects public interest. This section works in tandem with the Trade Marks Rules, 2017 (which replaced the 2002 Rules) which provide detailed procedures for agent registration and conduct. For instance, Rule 144 emphasizes that agents must be authorized via prescribed forms like TM-M. Overall, Section 145 of Trademark Act balances accessibility with expertise, ensuring that only competent individuals handle sensitive intellectual property matters.
Know How to Name a Trademark in India.
Eligible Persons under Section 145 of Trademark Act
Section 145 of Trademark Act categorizes three types of eligible representatives and each with distinct roles and qualifications. This classification ensures flexibility while upholding professional standards.
Legal Practitioners
Legal practitioners as defined under the Advocates Act, 1961 include advocates enrolled with a state bar council. They can represent clients in any trademark proceeding without any additional registration as a trademark agent. This broadens access to justice and allow lawyers to handle trademark cases alongside other legal matters. However, they must adhere to the Bar Council of India's ethical guidelines and their authorization must be documented, typically through a power of attorney.
Registered Trade Marks Agents
The core focus of Section 145 of Trademark Act is on registered trade marks agents. These are specialized professionals who have passed a qualifying examination conducted by the Controller General of Patents, Designs and Trade Marks. Registration as an agent grants them exclusive rights to practice before the Trademark Registry. This category is essential for non-lawyers with expertise in intellectual property, such as those with backgrounds in commerce or science, who wish to specialize in trademarks.
Employees of the Principal
The third category under Section 145 of Trademark Act includes individuals in the "sole and regular employment" of the principal (the trademark owner or applicant). This allows in-house employees, like corporate legal officers in order to represent their employer without needing agent registration. However, this is limited to acts not requiring affidavits and the employee must be duly authorized. This provision is practical for large organizations managing their trademark portfolios internally, reducing external costs.
In practice, these categories prevent unauthorized practice, which could lead to invalid proceedings. For example, unauthorized representation might result in the rejection of an application, emphasizing the need for compliance with Section 145 of Trademark Act.
Learn How to Check Trademark Availability.
Qualifications and Registration of Trade Marks Agents
In order to become a registered trade marks agent under Section 145 of Trademark Act, individuals must meet stringent qualifications outlined in Rule 144 of Trade Marks Rules, 2017. These ensure that agents possess the necessary knowledge and integrity.
First, the applicant must be an Indian citizen and at least 21 years old and a graduate from a recognized university (or hold an equivalent qualification). Alternatively, advocates or company secretaries qualify automatically without the exam. The process begins with an application in Form TM-A, accompanied by a fee which are subjected to updates).
A key requirement is passing the Trade Marks Agent Examination, held periodically by the Intellectual Property Office. The exam covers trademark law, procedures and case studies, with a written test (minimum 40% marks) followed by a viva voce (minimum 60% aggregate). Successful candidates are then registered upon payment of an additional fee and submission of character certificates.
The Registrar of Trademarks maintains a register of agents, publishing details in the Trade Marks Journal. Registered agents must renew annually with a fee of ₹2,000 and adhere to continuing education requirements. This rigorous process under Section 145 of Trademark Act ensures agents are well-versed in the Act's nuances, such as absolute and relative grounds for refusal under Sections 9 and 11.
Disqualifications and Removal from Register
Section 145 of Trademark Act is supported by disqualifications in Rule 145 to maintain ethical standards. Individuals are ineligible if adjudged of unsound mind, insolvent without clearance, convicted of serious offenses or found guilty of professional misconduct (e.g., as a lawyer or accountant).
Removal from the register can occur under Rule 153 for misconduct such as misleading the Registrar or violating the code of conduct. The Registrar issues a show-cause notice and appeals lie with the Intellectual Property Appellate Board which is now integrated into high courts post-2021 amendments. These safeguards protect the trademark system's credibility.
Rights and Privileges of Agents
The Agents authorized under Section 145 of Trademark Act enjoy significant rights including signing documents, attending hearings and negotiating settlements on behalf of clients. They can enter compromises in good faith. Privileges include access to registry records and priority in proceedings.
However, these rights are not absolute; agents must act within client instructions and avoid conflicts of interest.
Duties and Code of Conduct
Duties include diligent representation, confidentiality and accurate advice. The code of conduct, published by the Registrar, prohibits false claims or undue influence. Violations can lead to suspension which ensures accountability under Section 145 of Trademark Act.
Case Laws Interpreting Section 145 of Trademark Act
The judgements given below interprets Section 145 of Trademark Act. In Anglo French Drug Co. v. Tinaiker (1984 Bom HC), the court held that agents can compromise unless expressly restricted, emphasizing their autonomous role.
In Columbia Pictures Industries Inc. v. Siri Cable Network Ltd. (2001 Del HC), it was ruled that an advocate cannot dual-role as counsel and attorney, reinforcing distinct categories under the section.
Jolen Inc. v. Shobanlal Jain (2004 Mad HC) addressed misconduct, leading to agent disqualification for ethical breaches.
The Police Trade Mark case (2004 UK) influenced Indian interpretations and denied adjournments based on unnecessary client presence.
These cases shows how courts enforce Section 145 of Trademark Act to prevent abuse and ensure fair proceedings.
Summary
Section 145 of Trademark Act is vital for orderly trademark administration in India. By defining eligible agents, it fosters expertise and ethics, benefiting the legal ecosystem. As trademark disputes grow, understanding this section remains essential for effective representation. Future amendments may evolve it, but its core principles endure.
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Section 145 of Trademark Act: FAQs
Q1. What is Section 146 of the Trademark Act?
Section 146 allows the court to award costs and damages to the winning party in a trademark infringement lawsuit, including attorney fees if the case is frivolous or in bad faith.
Q2. What are the 4 types of trademarks?
The four main types are standard character marks (words or phrases), design marks (logos or symbols), service marks (for services) and collective marks (used by groups to indicate membership).
Q3. What is Section 142 of the Trademark Act?
Section 142 provides for notice of trademark registration by the U.S. Patent and Trademark Office and its publication in the Official Gazette for public review and potential opposition.
Q4. What is Section 144 of the Trademark Act?
Section 144 states that a trademark registration is effective from the filing date of the application and lasts for 10 years, renewable indefinitely if properly maintained.
Q5. What is Section 141 of the Trademark Act?
Section 141 requires the Director of the USPTO to issue a certificate of registration for a trademark once it's approved and all formalities are completed.
