4. Questions on representation before EUIPO
4.1. Is an applicant obliged to be represented before the Office?
4.2. What is the European Economic Area and which countries are in it?
4.3. What is a 'real and effective industrial or commercial establishment'?
4.4. What are regarded as ‘economic connections'?
4.5. Who can be entered on the list of professional representatives kept by the Office?
4.6. I am a legal practitioner, can I be entered on the list of professional representatives and use the title ‘European Trade Mark Attorney' and/or ‘European Design Attorney'?
4.7. Where can I find a representative?
4.8. What do I have to do if I want to change my representative?
4.9. Where can I find a list of legal practitioners?
4.10. We are a large company with a legal department that handles all IP matters, can our legal department be regarded as an association of representatives?
4.11. Is a professional representative entitled to act in both trade mark and design matters?
4.12. What is an ID number and where can I find mine?
This depends on whether or not the applicant is a legal or natural person that is established within the European Economic Area. If the applicant has its domicile, principal place of business or a real and effective industrial or commercial establishment in the European Economic Area, there is no obligation to be represented. If this is not the case, representation must be sought:
- from legal practitioners (or equivalent, depending on the country) established in the European Economic Area that are entitled to act as a representative before the central trade mark office of the country where they are established; or
- from a professional representative whose name appears on the list kept by the Office or
- from an employee of natural or legal persons having their domicile or principal place of business or a real and effective industrial or commercial establishment in the European Economic Area.
The only procedure that is not subject to these requirements and that can be undertaken by anyone is the filing of an application for a European Union trade mark. However, once the EU trade mark application has been filed, any applicant not based in the European Economic Area will have to appoint a representative before or after receiving a formal deficiency letter concerning the lack of representation before the Office.
The European Economic Area unites the 28 EU Member States and the three EEA EFTA (European Free Trade Association) states, Iceland, Liechtenstein and Norway, in an internal market.
The expression ‘real and effective industrial or commercial establishment' is taken from Article 3 of the Paris Convention, to which it was added at the first conference for the revision of the Convention, which took place in Brussels in 1897-1900. It was felt that the original provision, which simply referred to ‘an establishment', was too broad and should be restricted. The intention was that, by using the French term sérieux (‘real' in English), fraudulent or fictitious establishments would be excluded.
The term ‘effective' makes it clear that, while the establishment must be one at which some industrial or commercial activity takes place (as distinct from a mere warehouse), it need not be the principal place of business. Natural or legal persons having such an establishment in the European Economic Area may be represented before the Office by an employee.
Employees of legal persons may represent other legal persons provided that the two legal persons have economic connections with each other. Economic connections in this sense exist when there is an economic dependence between the two legal persons — either the party to the proceedings of the Office is dependent on the employer of the employee, or vice versa. This economic dependence may exist:
- either because the two legal persons are members of the same group; or
because there are management mechanisms in place so that one legal person controls the other.
In accordance with Article 2 of Commission Directive 80/723/ EEC of 25 June 1980 (OJ L 195, 29.7.1980, pp. 35-37) on the transparency of financial relations between Member States and public undertakings, and Commission Regulation No 240/96 of 31 January 1996 on technology transfer agreements (OJ L 31, p. 2), one enterprise has economic connections with another:
- if it holds the majority of the capital of the other undertaking, or
- if it holds the majority of the shares of the other undertaking, or
- if it can appoint more than half the members of the managing body of the other undertaking.
In accordance with the jurisprudence on Article 85(1) of the EC Treaty, economic connections are also present where both enterprises form an economic unit within which the subsidiary or branch unit does not have real autonomy in determining its marketing strategy.
However, the following is not sufficient to establish financial relations:
- a connection by virtue of a trade mark licensing agreement,
- a contractual relation between two enterprises aiming at mutual representation or legal assistance,
- a mere supplier/client relationship, for example, on the basis of an exclusive distribution or franchising agreement.
Any natural person who fulfils the following conditions:
- is a national of one of the Member States of the European Economic Area; and
- has his or her place of business or employment in the European Economic Area; and
- is entitled to represent natural or legal persons in trade mark/design matters before the central industrial property office of a Member State of the European Economic Area. (Note: the central industrial property office does not have to correspond to the place of business or employment. However, it must be within the European Economic Area).
To be included in the list of professional representatives, please complete, sign and date the application form and send it to us. You must enclose a certificate issued by a national office or refer to the block certificate in which you are listed as a qualified representative.
Legal practitioners referred to in Article 93(1)(a) of the EU trade mark Regulation that fulfil the conditions laid down in that article are automatically entitled as of right to represent their clients before the Office. This basically means that if a legal practitioner is entitled to act in trade mark and/or design matters before the central industrial property office of the Member State of the European Economic Area in which he or she is qualified, the practitioner will also be able to act before EUIPO.
Legal practitioners are not entered on the list of professional representatives to which Article 93(2) refers, because the entitlement and the special professional qualifications referred to in that provision relate to persons belonging to categories of professional representatives specialised in industrial property or trade mark matters, whereas legal practitioners are by definition entitled to be representatives in all legal matters. The only exception is where a professional representative on the list is also a legal practitioner and such dual qualification is allowed under national law. The Office therefore almost invariably refuses requests from legal practitioners to be entered on the list of professional representatives.
You can search for a representative in our free-of-charge consultation service, eSearch plus. The eSearch plus database provides easy access to information on all types of representatives included in the EUIPO database (associations, employees, lawyers or EUIPO professional representatives), and is updated on a daily basis.
If a new representative has been appointed, he or she can inform the Office in writing that the former representative is no longer acting for the client. No authorisation is required unless the new representative is an employee representative. The change will be confirmed by the Office in writing and publication of the change will follow.
You can search for representatives in the eSearch plus database. The term ‘legal practitioner' is defined by Directive 98/5 EC of the European Parliament and of the Council of 16 February 1998. The requirement ‘to be qualified in one of the Member States' means that a person must be admitted to the relevant national Bar or be admitted to practice under one of the following professional titles:
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Legal departments of companies are only entitled to represent other companies when there is an economic link between them (i.e. the companies are in the same group) and the legal department wishing to be regarded as a representative before the Office is in the European Economic Area. If no such link exists, an individual member of a company's legal department, qualified as a legal practitioner or listed as an EUIPO professional representative (other than as an employee representative) would be entitled to represent the company in the capacity of a private practitioner and not as a member of the legal department in question.
You can search for representatives in the eSearch plus database. Where the necessary economic link exists between the company and the legal department of a connected company, all communications should be signed by a member of the legal department that has been entered as an employee representative on the list of representatives held by the EUIPO. If that is not the case, the legal department may, of course, continue to provide advice to the applicant/owner of the trade mark/design but all communications with the EUIPO should be signed by the applicant/owner personally.
Yes, as long as the representative is on the list of professional representatives before the EUIPO pursuant to Article 93(3) of the EU trade mark Regulation. Entry on the special list of professional representatives for design matters before the EUIPO entitles the person in question to represent in Community design matters only, pursuant to Article 78(2) of the Community design Regulation.
Every representative that files an application with EUIPO is included in our database and allocated an 'ID' (identification) number. EUIPO does not automatically inform its clients of this number (except where it concerns a decision on entry on the list of professional representatives), but will provide it upon request.
In order to be able to assist the Office in identifying you as a client quickly, please use your ID number in all communications with EUIPO. This number can also be found by consulting any of your files in the eSearch plus database.