STATUTORY INSTRUMENTS
S.I. No. 622 of 2007
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EUROPEAN COMMUNITIES (PROVISION OF SERVICES
CONCERNING TRADE MARKS AND INDUSTRIAL DESIGNS)
REGULATIONS 2007
(Prn. A7/1687)2[622]
S.I. No. 622 of 2007
EUROPEAN COMMUNITIES (PROVISION OF SERVICES
CONCERNING TRADE MARKS AND INDUSTRIAL DESIGNS)
REGULATIONS 2007
I, MICHEA ´L MARTIN, Minister for Enterprise, Trade and Employment, in
exercise of the powers conferred on me by section 3 of the EuropeanCommunities Act 1972 (No. 27 of 1972) and for the purpose of—
(a) giving full effect to Article 49 of the Treaty establishing the European
Community with regard to freedom to provide services to which the followingregulations relate, and
(b) making such incidental, supplementary and consequential provisions as
appear to me to be necessary for the purpose of those regulations,
hereby make the following regulations:Citation.
1. These Regulations may be cited as the European Communities (Provision
of Services Concerning Trade Marks and Industrial Designs) Regulations 2007.
Definitions.
2. In these Regulations—
“Act of 1996” means the Trade Marks Act 1996 (No. 6 of 1996);
“Act of 2001” means the Industrial Designs Act 2001 (No. 39 of 2001).Amendment of section 83 of Act of 1996.
3. Section 83 of the Act of 1996 is amended—
(a) in subsection (1), by substituting the following paragraph for para-
graph ( b):
“(b) who is—
(i) a registered trade mark agent, or
(ii) a person referred to in subsection (4A) of section 85 and
the relevant provisions of that section with regard to the
person’s acting as agent in the foregoing circumstances arecomplied with.”, and
(b) by substituting the following subsection for subsection (2):
Notice of the making of this Statutory Instrument was published in
“Iris Oifigiu ´il” of 14th September , 2007.[622] 3
“(2) A person referred to in paragraph ( b)(i) or (ii) of subsection
(1) who is duly authorised by another person under that section to actas his agent may (subject to any provision to the contrary in any agree-ment between the person so authorised and the other person), on giv-ing notice to the Controller and the other person, cease to act as agentfor the other person.”.
Amendment of section 85 of Act of 1996.
4. Section 85 of the Act of 1996 is amended by inserting the following subsec-
tions after subsection (4):
“(4A) Notwithstanding subsections (1) to (3) but subject to subsec-
tions (4B) to (4E), a person established in a Member State of theEuropean Community (other than the State) and qualified under thelaw of that state to act as a trade mark agent in that state may carryon the business of acting as a trade mark agent for others in connectionwith the registration of a trade mark or any procedure relating to aregistered trade mark.
(4B) On or before the first occasion on which a person acts, in
reliance on subsection (4A), on behalf of another before the Controllerin connection with the registration of a trade mark or any procedurerelating to a registered trade mark, the person shall provide to theController such evidence as may be prescribed relating to—
(a) the person’s being established in another Member State of
the European Community,
(b) the person’s being qualified under the law of that state to
act as a trade mark agent in that state, and
(c) whichever of the following is appropriate—
(i) the person’s nationality, or
(ii) the person’s falling within paragraph ( b) of the definition
of ‘person’ in subsection (4F).
(4C) In acting, in reliance on subsection (4A), on behalf of another
in connection with the registration of a trade mark or any procedurerelating to a registered trade mark, the person shall use the applicableprofessional title (if any) but its use in the State shall be subject to thefollowing requirements—
(a) the title is to be expressed in the official language or one of
the official languages of the Member State referred to insubsection (4A), and
(b) in a case where the language in which the title is expressed
is also an official language of the State, the use of the title4[622]
is not such as is likely to be understood as indicating that
the person is a trade mark agent registered under this Act.
(4D) It shall be sufficient compliance with subsection (4C)( b)i ft h e
use of the title concerned is accompanied by an indication of theMember State in which the person concerned is established as a trademark agent.
(4E) If there is no applicable professional title, then the person, in
acting as mentioned in subsection (4C), shall indicate that the personpossesses the applicable qualifications and those qualifications shall beexpressed in the official language or one of the official languages ofthe Member State referred to in subsection (4A).
(4F) In this section—
‘applicable professional title’, in relation to a person, means the pro-
fessional title that, by virtue of the person’s being qualified to act as atrade mark agent in the Member State referred to in subsection (4A),the person is entitled to use in that state;
‘applicable qualifications’, in relation to a person, means the qualifi-
cations that the person must possess, under the law of the MemberState referred to in subsection (4A) so as to be qualified to act as atrade mark agent in that state;
‘person’ means—
(a) in the case of an individual, a national of a Member State of
the European Community, and
(b) in the case of a person which is not an individual, a company
or firm (within the meaning of Article 48 of the Treatyestablishing the European Community) formed in accord-ance with the law of a Member State of the European Com-munity and having its registered office, central admini-stration or principal place of business within the EuropeanCommunity.”.
Amendment of section 86 of Act of 1996.
5. Section 86(1) of the Act of 1996 is amended by substituting the following
paragraphs for paragraphs ( a) and ( b):
“(a) resides in the European Community,
(b) has a place of business in the European Community,”.
Amendment of section 91 of Act of 1996.
6. Section 91 of the Act of 1996 is amended by substituting the following
subsection for subsection (3):[622] 5
“(3) In this section ‘registered agent’ means—
(a) a registered trade mark agent;
(b) a partnership entitled to describe itself as a firm of registered trade
mark agents;
(c) a body corporate entitled to describe itself as a registered trade mark
agent; or
(d) a person to whom section 85(4A) applies.”.
Amendment of section 87 of Act of 2001.
7. Section 87 of the Act of 2001 is amended by substituting the following
subsection for subsection (3):
“(3) In subsection (2) ‘registered agent’ means:
(a) a registered trade mark agent;
(b) a registered patent agent; or
(c) a person to whom section 106(3) of the Patents Act 1992 or section
85(4A) of the Trade Marks Act 1996 applies.
Amendment of section 88 of Act of 2001.
8. Section 88 of the Act of 2001 is amended—
(a) by substituting the following subsection for subsection (1):
“(1) Whenever, under this Act, an act has to be undertaken by or
done to a person in connection with the registration of a design or anyprocedure relating to a registered design or a design right, the act maybe undertaken by or done to an agent—
(a) who is authorised by that person orally or in writing; and
(b) who is—
(i) a registered patent agent or a registered trade mark
agent, or
(ii) a person referred to in subsection (3) of section 106 of
the Patents Act 1992 or subsection (4A) of section 85 ofthe Trade Marks Act 1996 provided—
(I) the relevant provisions of that section 106 or 85, as
the case may be, with regard to such person actingas agent for the first-mentioned person in this sub-section are complied with (disregarding, for thispurpose, the fact that the act concerned relates to a6[622]
registered design or design right and not to a patent
or trademark), and
(II) such person is qualified under the law of the state
referred to in subsection (3) of that section 106 orsubsection (4A) of that section 85 to act in relationto matters concerning the registration of a designor, as the case may be, in relation to proceduresrelating to registered designs or design rights.”, and
(b) by substituting the following subsection for subsection (2):
“(2) A person referred to in paragraph ( b)(i) or (ii) of subsection
(1) who is duly authorised by another person under that subsection toact as his or her agent may (subject to any provision to the contrary inany agreement between the person so authorised and the otherperson), on giving notice to the Controller and the other person, ceaseto act as agent for the other person.”.
GIVEN under my Official Seal,
5 September 2007
MICHEA ´L MARTIN.
Minister for Enterprise, Trade and Employment.[622] 7
EXPLANATORY NOTE
(This note is not part of the Instrument and does not purport to be a legal
interpretation)
These Regulations, made pursuant to the European Communities Act, 1972,
amend certain provisions of the Trade Marks Act, 1996 and the IndustrialDesigns Act, 2001 in order to allow a person, established in another MemberState of the European Community and qualified under the law of that State toact as a trade mark agent, to act for another person in relation to trade markmatters before the Controller of Patents, Designs and Trade Marks.BAILE A ´THA CLIATH
ARNA FHOILSIU ´AG OIFIG AN tSOLA ´THAIR
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9781406433104ISBN 1-4064-3310-1
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