Do non-EU businesses need a representative to file an EU trade mark?
Many businesses in the US, the UK, Asia and elsewhere file their own EU trade mark application online. Then a letter arrives from the EUIPO asking them to appoint a representative. Here is what the rule says and what to do.
The rule
A business with no domicile, no principal place of business and no real and effective establishment in the European Economic Area must be represented before the EUIPO in all proceedings except the act of filing the application itself.¹
The EEA is the 27 EU Member States plus Iceland, Liechtenstein and Norway. The UK and Switzerland are outside it, so businesses there are treated the same as those in the US or China.²
What counts as a representative
Only two kinds of person can act:
a legal practitioner qualified in an EEA Member State, with a place of business in the EEA, who is entitled to act in trade mark matters there; or
a professional representative entered on the list kept by the EUIPO.³
An employee of the non-EEA business cannot act for it, even if they are a qualified lawyer, unless they are based in the EEA.⁴
What happens if you do not appoint one
The EUIPO will notify you that a representative is required and set a time limit, typically two months, to appoint one.⁵ If no representative is appointed, the application is refused.⁶
Why it matters beyond the paperwork
The representative becomes the address for service. Every official letter goes to them: examination objections, oppositions, deadlines and, eventually, the registration certificate. Most EUIPO deadlines run from the date of notification, so a missed letter can mean a missed deadline.
What to do
If you have not filed yet, consider appointing a representative from the start. They can run a clearance search and draft the specification before filing.
If you have already filed and received a notice, appoint a representative within the deadline in the letter.
Keep the representative on record for the life of the mark, so oppositions, revocation actions and renewals reach someone who can act.
This article is general information, not legal advice. For help with a notice from the EUIPO, write to hello@lunelegal.com. See also our Areas of Practice.
Sources
Regulation (EU) 2017/1001, Art. 120(1)
Regulation (EU) 2017/1001, Art. 41(2)
Ibid., Art. 41(4); EUIPO Guidelines, Part A, Section 5