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Friday, 13 August 2010

For the avoidance of accidents, or worse?


Under the UK's Locomotive Act 1865, anyone driving a car in town
had to be led by a man who walked in front of the car,
carrying a red flag -- to prevent 'fatal accidents'

An interesting communication has come the IPKat's way. It seems to be about a rather delicate question -- do applicants for Community trade marks who are based outside the European Union really have to go to the trouble and expense of engaging a professional representative from within the EU? -- and it reads, in relevant part, like this:
"Proposed change of practice on professional representation

... the Office [for Harmonisation in the Internal Market] has proposed changing the existing practice with regard to the mandatory appointment of a professional representative within the EU for all Community trade mark applications coming from undertakings based outside the EU. ...
The Office has carefully reviewed the issue and has concluded that professional representation within the EU is only legally required if there need to be certain legal exchanges with the applicant. For example if there is some kind of deficiency, an Absolute Ground or class objection, an opposition or third party observation.

The Office proposed, therefore, to remove the routine check on this question at the examination stage, and instead to only ask for an EU representative (if none is indicated) when a legal exchange is required. We believe this is in line with the legal requirements, fairer to the client, and more efficient from our point of view.

However, on sharing this point of view with user associations, we 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 ...".
The IPKat has a funny feeling that "users' associations" doesn't mean "associations of people who use trade marks", but rather "people who get paid by clients to represent them in matters concerning Community trade marks" but, since he doesn't know whether this is so, he couldn't possibly say. Merpel is absolutely certain, though, that there must be some incredibly important reason why non-EU-based Community trade mark applicants must be forced to instruct an EU professional representative -- possibly to protect them from fatal accidents -- and that the suggestion of "self-interest" must never be allowed to enter our thoughts.

If anyone has any information or comments on this issue, the Kats would love to learn more about it.

5 comments:

Anonymous said...

"..We believe this is in line with the legal requirements, fairer to the client.."

critical phrase being: fairer to the client.

Gareth said...

It's definitely fairer to clients to:

(1) narrow their choice of professional representatives; and

(2) require them to appoint a foreign representative.

I 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.

Anonymous said...

Accidents ? Sounds to me like, in considering dropping the local counsel requirement at filing, and imposing it only when an issue arises during prosecution, OHIM is trying to compete with WIPO in a CTM vs. Madrid showdown. It is quite remarkable to witness different governmental or quasi-governmental authorities competing with each other for user-generated revenue streams. And, predictably, encountering similar push-back from interest groups.

Filemot said...

I have made a fuller response on the SOLO blog

Anonymous said...

As a practitioner from outside the EU, I find that using European firms is very expensive - often prohibitively so. It has to be asked whether their monopoly - perhaps for valid reasons - has not lead to overreaching when it comes to costs. I appreciate that this is a general statement, but I do base it on many years of experience dealing with matters from outside the EU.

A simple filing with no complications can be done at 50% of the cost to the end client if the rates are fair given the time involved.

Thus, I wonder if EU practitioners have not brought this on themselves?

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