Legal Services Act 2007

184 Trade mark attorneys E+W

(1) The Trade Marks Act 1994 (c. 26) is amended as follows.

(2) In section 82 (recognition of agents) after “rules” insert “ and subject to the Legal Services Act 2007 ”.

(3) For section 83 (the register of trade mark agents) substitute—

“83 The register of trade mark attorneys

(1) There is to continue to be a register of persons who act as agent for others for the purpose of applying for or obtaining the registration of trade marks.

(2) In this Act a registered trade mark attorney means an individual whose name is entered on the register kept under this section.

(3) The register is to be kept by the Institute of Trade Mark Attorneys.

(4) The Secretary of State may, by order, amend subsection (3) so as to require the register to be kept by the person specified in the order.

(5) Before making an order under subsection (4), the Secretary of State must consult the Legal Services Board.

(6) An order under this section must be made by statutory instrument.

(7) An order under this section may not be made unless a draft of it has been laid before, and approved by a resolution of, each House of Parliament.

83A Regulation of trade mark attorneys

(1) The person who keeps the register under section 83 may make regulations which regulate—

(a) the keeping of the register and the registration of persons;

(b) the carrying on of trade mark agency work by registered persons.

(2) Those regulations may, amongst other things, make—

(a) provision as to the educational and training qualifications, and other requirements, which must be satisfied before an individual may be registered or for an individual to remain registered;

(b) provision as to the requirements which must be met by a body (corporate or unincorporate) before it may be registered or for it to remain registered, including provision as to the management and control of the body;

(c) provision as to the educational, training or other requirements to be met by regulated persons;

(d) provision regulating the practice, conduct and discipline of registered persons or regulated persons;

(e) provision authorising in such cases as may be specified in the regulations the erasure from the register of the name of any person registered in it, or the suspension of a person's registration;

(f) provision requiring the payment of such fees as may be specified in or determined in accordance with the regulations;

(g) provision about the provision to be made by registered persons in respect of complaints made against them;

(h) provision about the keeping of records and accounts by registered persons or regulated persons;

(i) provision for reviews of or appeals against decisions made under the regulations;

(j) provision as to the indemnification of registered persons or regulated persons against losses arising from claims in respect of civil liability incurred by them.

(3) Regulations under this section may make different provision for different purposes.

(4) Regulations under this section which are not regulatory arrangements within the meaning of the Legal Services Act 2007 are to be treated as such arrangements for the purposes of that Act.

(5) Before the appointed day, regulations under this section may be made only with the approval of the Secretary of State.

(6) The powers conferred to make regulations under this section are not to be taken to prejudice—

(a) any other power which the person who keeps the register may have to make rules or regulations (however they may be described and whether they are made under an enactment or otherwise);

(b) any rules or regulations made by that person under any such power.

(7) In this section—

• “appointed day” means the day appointed for the coming into force of paragraph 1 of Schedule 4 to the Legal Services Act 2007;

• “manager”, in relation to a body, has the same meaning as in the Legal Services Act 2007 (see section 207);

• “registered person” means—

  (a)

  a registered trade mark attorney, or

  (b)

  a body (corporate or unincorporate) registered in the register kept under section 83;

• “regulated person” means a person who is not a registered person but is a manager or employee of a body which is a registered person;

• “trade mark agency work” means work done in the course of carrying on the business of acting as agent for others for the purpose of—

  (a)

  applying for or obtaining the registration of trade marks in the United Kingdom [F1 or elsewhere] , or

  (b)

  conducting proceedings before the Comptroller relating to applications for or otherwise in connection with the registration of trade marks.”

(4) In section 84 (unregistered persons not to be described as registered trade mark agents)—

(a) in subsection (2)—

(i) after “partnership” (in the first place) insert “ or other unincorporated body ”, and

(ii) for “all the partners” to the end substitute “ the partnership or other body is registered in the register kept under section 83. ”, and

(b) in subsection (3) for “all the directors” to the end substitute “ the body corporate is registered in the register kept under section 83. ”

(5) Omit section 85 (power to prescribe conditions etc for mixed partnerships and bodies corporate).

(6) In section 87 (privilege for communications with registered trade mark attorneys), in subsection (3)(c) at the beginning insert “ any other unincorporated body or ”.

Textual Amendments

F1 Words in s. 184(3) inserted (16.12.2009) by The Legal Services Act 2007 (Functions of an Approved Regulator) Order 2009 (S.I. 2009/3339), arts. 1, 2