With regards to the need to appoint an European Trademark attorney (professional representative) in proceedings before the EUIPO (European Intellectual Property Office) the EUTMR (European Trade Mark Regulation) divides the applicants in two categories.
First category is natural or legal persons having their domicile or their principal place of business or a real and effective industrial or commercial establishment in the European Economic Area and such which do not fall in that category. For the second category there are some particularities in relation to the need to appoint a professions representative (European Trademark attorney) which they should be aware of when processing a Trade Mark application before the EUIPO. Failing those particularities results in refusal of the whole application and lost of the paid application fees.
According to the European Trade Mark Regulation (EUTMR) art. 119 natural or legal persons having neither their domicile nor their principal place of business or a real and effective industrial or commercial establishment in the European Economic Area shall be represented before the Office in all proceedings provided for by this Regulation, other than the filing of an application for an EU trade mark.
The meaning of the above regulation is that persons which cannot be related (by principle address, domicile or establishment) to the EEA (European Economic Area) should be represented by an EU Attorney in all proceedings before the EUIPO expect filing an application.
Applications filed directly before the EUIPO:
That is important for applicants who are not related to the EEA in cases where they have filed their own applications without an European Trademark attorney. After the filing of the application they will receive an irregularity letter informing them for the need to appoint a representative. The examiner will give them a term of 2 months to execute the action. If the deficiency is not remedied the application will be refused.
The notification has the following content:
“On examination of the application, the following deficiency has been noted:
ï a representative has not been appointed. According to Article119(2) EUTMR, natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the European Economic Area must be represented before the Office in all proceedings other than filing an application for a European Union trade mark. The representative appointed must be from within the European Economic Area. Article120(1) EUTMR sets out who may act as a representative before the Office. A list of representatives can be found through eSearch on the Office website.
Only appointment requests submitted by the representative of your choice will be accepted.
This deficiency must be remedied within two months of the notification of this communication. If the deficiency is not remedied the application will be refused. “
Applications designating the EUIPO through WIPO:
If the application is filed through WIPO and is designating the EUIPO and the examiner during the application process issues an irregularity letter for need to amend the application, or correct the list of goods / services or issue a provisional refusal based on absolute grounds – the trade mark applicant will be given again a deadline of 2 months as per the letter above to appoint an European Trademark attorney to act on their behalf.
Also even if the application goes smoothly and there is no communication with the examiner before the application is published – in case the application receives opposition – the EUIPO will inform the applicant though WIPO for the opposition and for the need to appoint an European Trademark attorney.
Under those circumstances the applicants need to appoint a representative in a time term set by the EUIPO which is 2 months. Failing to comply with the deadline results in refusal of the application. If Attorney is not appointed in the proposed time limit the EUIPO issues the following decision:
“Protection of international registration No. …….. designating the European Union is refused in its entirety, because a representative has not been appointed before the Office within the set time limit.“
According to the EUTMR “Professional representatives” who can act before the EUIPO are:
(a) a legal practitioner qualified in one of the Member States of the European Economic Area and having his place of business within the European Economic Area, to the extent that he is entitled, within the said Member State, to act as a representative in trade mark matters;
(b) professional representatives whose names appear on the list maintained for this purpose by the Office.
Representatives acting before the Office shall, at the request of the Office or, where appropriate, of the other party to the proceedings, file with it a signed authorisation for insertion on the files.
Any natural person who fulfils the following conditions may be entered on the list of professional representatives: (a) being a national of one of the Member States of the European Economic Area;(b)having his place of business or employment in the European Economic Area;
© being entitled to represent natural or legal persons in trade mark matters before the Benelux Office for Intellectual Property or before the central industrial property office of a Member State of the European Economic Area. Where, in the State concerned, the entitlement is not conditional upon the requirement of special professional qualifications, persons applying to be entered on the list who act in trade mark matters before the Benelux Office for Intellectual Property or those central industrial property offices shall have habitually so acted for at least five years. However, persons whose professional qualification to represent natural or legal persons in trade mark matters before the Benelux Office for Intellectual Property or those central industrial property offices is officially recognised in accordance with the regulations laid down by the State concerned shall not be required to have exercised the profession.