Sunday, 15 August 2010

Free Community Trademark Representation

This post was provoked by the IPkat post on the OHIM decision to defer allowing community trademark applicants from outside the EU to use their services without the aid of a professional representative. The current rule is that the non-European applicant needs to be represented even if his application has no issues that require the intervention of a representative.

Anyone regardless of nationality can apply for a CTM and its not difficult to do online. It can be expensive if you get it wrong and professional advice can help you avoid mistakes and add considerable value, but for those entrepreneurs with confidence why should they not flash their credit card. The difficulty as I see it 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.

There is a suggestion that professional bodies object to the removal of the restriction because it denies them work. For that reason I am prepared to represent an out of state applicant who needs a representative for free. This is not costless and it is an invitation to treat. The claimant of such free services must:
  • provide sufficient information about themselves and the application so I can identify them for regulatory purposes
  • agree to my terms of trade which contain a fair hourly rate for any professional services that may be needed, though there will be no fees if the CTM registers without any intervention on my part except the the taking over of representation, and a limitation of liability
  • be prepared to sign an authorisation promptly if requested
  • stay in touch for the next 10 years so I can forward any correspondence that arises such as a third party cancellation action.
In return I shall
  • notify OHIM that I am your representative
  • enter details of your trademark application into my docketing system
  • forward correspondence by email only
Any other OHIM representatives offering similar free services to out of state DIY applicants is invited to add their offer in a comment.

I have already done this. A recent requester declined to provide any further information to identify himself and that is essential.

Many European trademark professionals would like advising on trademarks to  be a reserved legal activity, but at present it is not. It is therefore important for applicants seeking assistance to have some way of checking that a representative conforms to some code of conduct. You can only do that on a state by state basis and the UK regulator  IPReg does not pull its weight at the moment by providing a list of regulated firms so you might do better to choose a solicitor whose status you can check. For more information on representation see the OHIM page.


  1. Barbara:

    Do I understand you correctly that you make no charge if the CTM registers without problems? There is work involved here since apart from docketing you also need to forward the official search report, notice of publication and the certificate of registration or the link to this. I would be inclined to charge something for doing this, say GBP 100. On the other hand, I am making no charge to holders of international registrations designating the EC where the interim statement and statement of grant of protection are sent to the holder by WIPO.

  2. Thank Alfred, I think £100 would be a reasonable fee for the job. It would also be essential for anyone using a docketing system that charges per record per quarter as you have to keep the records for over 10 years

  3. What do you charge for docketing records per quarter?

  4. I dont make such a charge but I use my own MARCO software which has a one-time payment licence. If you use WebTMS which is also popular with Solos the pricing structure discourages the addition of non fee-paying records. Just saying why an entrepreneur trying to save money may have to pay for what seems like a pretty modest service. However missing a cancellation action can be a disaster for a trademark owner.

  5. I doubt that US law firms would opt to prosecute CTMs directly because of liability issues. They should therefore be attracted by an offer to represent their clients for a modest fee.

  6. Usually the CTM applicants who dont have representatives are direct applicants who are on a serious economy drive.
    A US or other law firm purporting to represent a client would be a different matter and a fee is to be expected.

  7. I am working with US and non-US law firms who taken up my offer of low cost representation.

  8. A non-US applicant can file a US TM appln w/o US representation. The applicant need only designate a domestic representative, for correspondence purposes, not to represent the applicant before the USPTO. The proposed OHIM revision is basically what we have in the USPTO.

  9. Hello,
    I came across your blog as I was looking for an oohim rep. If possible, I would like to find out more about your services. My address is

  10. Hi,

    I am seeking representation for an RCD application with OHIM. I have filed and all is good, but I need a rep. Contact me at with any info you can provide, Thanks : )

  11. Dear Barbara,

    We are a professional trademark agent in Vietnam. We need a representative before OHIM. If you can help us, please let us know via

    Thank you.

  12. Good Afternoon Barbara,

    We are an agent in China who would be very interested in workingw ith you. We have all the information ready, we just need a representative - please contact us on

    Thanks and Regards,
    Sarina Zhou

  13. Dear Barbara

    I am an individual from Australia and I need OHIM / CTM Representation as I am in the process of preparing to file my Trade Mark application on my own. I would be very keen to hear about the service that you can offer me as well as the costs involved.

    Pease contact me at Joben.blom(at)

    Thank you.