15 August 2010

Professional Representation of non-EU Applicants before the OHIM (updated once)

The OAMI Users' Group sees itself in the important role of encouraging regular consultation and feedback between users and OHIM with regard to all aspects of the Community trade mark and design systems. Members of the Users' Group are international non-governmental organisations that represent interested parties from the sector, such as AIPPI, BusinessEurope, FICPI, GRUR, INTA, LES, MARQUES, to name just a few.   

Currently, according to Art. 92 (2) CTMR, 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 pusuant Art. 93 (1) CTMR to act for them in all proceedings except the filing of an application for a CTM.

For the latest OAMI Users' Group meeting on 15 March 2010 at the OHIM in Alicante, OHIM proposed a significant change regarding the professional representation of non-EU applicants to reduce their costs:
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. [...]

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 will continue to insist on representation where there is a deficiency or where inter partes proceedings (e.g. an application for invalidity) are launched.
On behalf of MARQUES, the meeting was attended by Mr David Stone, Mr Jochen Höhfeld, and Ms Paola Tessarolo. According to their memo for the meeting, this change would apply to two third of all CTM applications. While a number of Users' Group members asked for more time to comment, others were able to articulate their view:
  • FICPI submitted a formal position paper, according to which such change is not a change in practice but that this would constitute a change in law, there being no basis in the law for the changed practice.
  • INTA mentioned that such change could be an advantage for the users, however, that this could create problems when one wants to contact e.g. a Chinese applicant to negotiate before filing an opposition. 
  • APRAM found it desirable if their was reciprocity between the different countries that will take advantage of this new practice, while OHIM pointed to the fact that there was reciprocity e.g. already in the Madrid System. It was agreed that this is a highly political issue.
While OHIM anounced a draft on this issue from the European Commission, we now learn from the IPKat about an interesting communication regarding this delicate issue, according to which
[...] on sharing this point of view with user associations, [OHIM] found there were strong objections from some of them. In order to allow these objections to be fully considered, we have decided not to introduce this change of practice. Instead, we will be asking the European Commission to consider the question as part of the ongoing review of the functioning of the trade mark system in Europe [...].
As the IPKat assumes that this change of mind may be due to the fact that "users' associations" in fact consist of "people who get paid by clients to represent them in matters concerning Community trade marks" (which is a bit exaggerated, since many of above NGO's equally represent trademark owners), Gareth Dickson, a commercial IP litigator, adds that applicants should be required to appoint a foreign representative, since he "can't imagine the turmoil applicants would have to endure if they were given the option of appointing a properly qualified representative whose place of business is physically located outside the EU". 

In fact, the matter will now be reviewed within the much broader context of the "Study on the trade mark system in Europe" initiated by the European Commission and conducted by the Munich-based IP thinktank of the Max Planck Institute for Intellectual Property, which provides a platform for input and observations and to inform stakeholders and the interested public about the course of the Study.

However, after a number of activities (e.g. reviewing statements, holding workshops, preparing surveys on a questionnaire, visiting and interviewing National Trademark Offices), the Max Planck Institute is now already in the process of preparing the final report of the Study. Nevertheless, statements of relevance and further contributions are still welcome by e-mail.

UPDATE:In a reply to the IPKat's suggestion that professional bodies object to the removal of the restriction because it denies them work, Filemot of the SOLO blog counter argerued that 
[t]he difficulty [...] is that the European entrepreneur does not have a similar privilege to do the same in the rest of the world. If WIPO thinks its worth taking up, then compulsory representation for out-of-territory applicants could become a thing of the past but, until then, I do not see why OHIM should go unilateral.
and offers "to represent an out of state applicant who needs a representative for free". The concrete terms of this invitation to treat can be studied here.