Agents from other EEA MS providing cross border services
Section 85 (4A, B and C) of the Trade Marks Act, 1996 provides that a person established in a EEA state and entitled under the law of that state to act as a trade mark agent may carry on the business of acting as a trade mark agent for others in connection with the registration of a trade mark or any procedure relating to a registered trade mark. The Controller of Patents, Designs and Trade Marks is the Competent Authority for receipt of notifications by trade mark agents established in another EEA States who wish to provide services in Ireland.
The notification requirements are set out in the following statutory instruments:
- Trade mark Amendment Rules - S.I. 621 2007
- European Communities (Provision of Services Concerning Trade Marks and Industrial Designs) Regulations 2007 - S.I. 622 of 200
and are summarised as follows:
On or before the first occasion on which a person acts on behalf of another before the Controller in connection with the registration of a trade mark or any procedure relating to a registered trade mark, the person must notify the Controller and provide to the Controller evidence relating to –
(i) the person’s being established in an EEA state,
evidence of establishment in another member state can be: an entry in a relevant register (companies register, commercial register, listing in a directory of a professional body) specifying the location of the person’s registered office, central administration or principal place of business or other proof of its location in an EEA state,
(ii) the person’s being qualified under the law of that state to act as a trade mark agent in that state,
evidence of qualification can be a copy of a diploma or certificate, or other evidence of formal qualifications, awarded by the competent authority of the State concerned which indicates that the person is qualified to act as a trade mark agent in that state;
(iii) in the case of an individual, a national of an EEA state the nationality of the person
a copy of a passport, national identity card or other proof of nationality;
(iv) in the case of a person which is a company or firm formed in accordance with the law of an EEA state
a copy of a certificate of incorporation, an entry in a relevant register (companies register, commercial register, listing in a directory of a professional body) or other proof of the possession of the required legal personality in an EEA state
If any document furnished in compliance with the foregoing requirements is in a language other than English, then a certified translation into English must also be furnished.
The Patents Office will accept notifications and accompanying evidentiary documents which are sent by means of post or e-mail. Communication by Email is preferred and will allow quicker completion of all formalities. Notifications and attachments in pdf format should be sent to the following Email address: firstname.lastname@example.org
Processing of notifications
The Office undertakes to acknowledge enquiries from EEA based agents within 2 working days of receipt and the acknowledgement will include information on the procedures to be followed and the documentation to be submitted.
Within 3 working days of receipt of a notification accompanied by all the correct documentation, the agent will be sent confirmation that he or she may act before the Controller.
Within 3 working days of receipt of a notification accompanied by incomplete or incorrect documentation, the agent will be sent a request to furnish additional documentation. If an agent does not furnish the required material within a period of two months from the date of the request, the Controller will not recognise the agent’s entitlement to act on behalf of an Applicant/Holder and will pursue the prosecution of an application or other proceedings directly with the Applicant/Holder. The agent will be informed accordingly as soon as possible.
Within 3 working days of receipt of all the correct documentation in respect of a previously incomplete notification, the agent will be sent confirmation that he or she may act before the Controller.
If an agent has a complaint regarding the Office’s handling of the notification formalities, he or she may pursue the matter by writing directly to the Controller. Any complaint will be immediately acknowledged and investigated and a further reply will issue within 10 working days.
Responsibility of agent post notification
Rule 51(b) of the Trade Mark (Amendment) Rules 2016 requires that if, subsequent to the provision of the evidence (set out above) already provided in compliance with Section 85(4A-C), there is any material change of circumstances affecting the persons continuing to be qualified to act as a Trade Mark agent, the person shall, forthwith notify the Controller in writing of that change of circumstances.
Where an agent is acting, on behalf of another in connection with the registration of a trade mark or any procedure relating to a registered trade mark, the agent must use the applicable professional title (if any) The title is to be expressed in the official language or one of the official languages of the EEA State of establishment. Where the use of the title is not likely to be understood it is sufficient if the use of the title concerned is accompanied by an indication of the EEA State in which the person concerned is established as a trade mark agent. If there is no applicable professional title, then the agent when acting, shall indicate that he or she possesses the applicable qualifications and those qualifications shall be expressed in the official language or one of the official languages of the EEA State of establishment.