OHIM and Professional Representatives

Readers may be interested in the following text of a paper prepared by OHIM for the upcoming User Group meeting.

"Subject: Professional representation of non-EU applicants for CTM

Article 92(2) CTMR provides “…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 Community must be represented before the Office in accordance with Article 93(1) in all proceedings established by this Regulation, other than in filing an application for a Community trade mark.” A similar provision exists in the CDR (Article 77).

This provision can be interpreted in a number of ways. In the absence of deficiencies the process between application and publication might not be considered “proceedings”. However, the Office has been interpreted the provision from the beginning as requiring the appointment of a representative even if there were no deficiencies. The Manual of Trade Mark Practice (examination) reflects this:

2.6. Professional Representation

2.6.1. 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 Community must appoint a qualified representative to act for them in all proceedings except the filing of an application for a Community trade mark. If an application is made in these circumstances and a representative has not been appointed a notice of deficiency will be issued asking the applicant to do so.

There is little objective justification for insisting on representation when there is no need for exchanges between the Office and the applicant. The rationale behind requiring professional representation relies on two principal ideas. Firstly, non-EU entities should have advice available from EU professionals in dealing with their applications. There is no requirement for representation at the point of application. If there are no deficiencies there is no need for advice. The second, outdated, idea is that communication should take place only within the EU. Today communication is as easy externally as it is within the EU.

In the light of this the Office proposes to change its practice and will no longer insist on professional representation of non-EU entities where an application for a CTM or RCD has no deficiencies. The Office considers deficiencies to include not only substantive issues (e.g. absolute grounds) but also formalities (e.g. fee deficiency). The Office will continue to insist on representation where there is a deficiency or where inter partes proceedings (e.g. an application for invalidity) are launched.

The views of user organizations are welcome."

The corresponding Community Design provision is:

"Without prejudice to the second subparagraph of paragraph 3, 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 Community must be represented before the Office in accordance with Article 78(1) in all proceedings before the Office established by this Regulation, other than in filing an application for a registered Community design; the implementing regulation may permit other exceptions. "

The wording of the CDR is different to the CTM - no wonder it was cited in the brief OHIM paper.

Those with views on this proposal should submit them via an appropriate User Group.