 |
| "Are you sure we can count on Convention priority for our registered Community design application ...?" |
"I would like some comment on the following which has arisen after submitting an application to register a design with OHIM in Spain.
My cousin and I have successfully registered a design in Australia and were told by the IP office that, if our submission was filed in other countries which subscribed to the 'Convention’ within 6 months it would be accepted. However, little did we know that we either had to be domiciled in the European Union or have a registered office there.
We recently received a ‘rejection notice’ because of this situation even though by contrast the Copyright—Design office in Washington has been happy to register our design and actively assisted in the process, which was great.
We are asking a solicitor we know in London to appeal the decision and act as our ‘registered office’ in the future.
Would you or your colleagues care to comment from previous experience, as we found the several people we dealt with in Spain most unhelpful".
Readers' comments are welcome. This blogger feels that, while OHIM can only operate within the parameters of the law, it costs little to soften the blow that any designer (or other IP applicant) feels when told that his application has been rejected for what appears to him to be an arbitrary reason that is irrelevant to the substantive protectability or inherent worth of the application's subject matter.
That's fairly common, really. The US is unusual in allowing unrepresented foreign applicants - most IPOs require at least a local address for service. I know the Australian IPO does in particular.
ReplyDeleteWhether such rules are legitimate is another question entirely - protectionism or simply ensuring the IPO has somewhere local to send the documents?
According to the OHIM guidelines (http://oami.europa.eu/en/office/aspects/pdf/ExamGuidelines.pdf) which is not the law, but hopefully reflects OHIM practice:
ReplyDelete"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 representative to act for them in all proceedings except the filing of an application for a Community design. If an application is made in these circumstances and a representative has not been appointed the applicant will be requested in the examination report to do so. A time limit of two months will be given. If the applicant does not appoint a representative in due time, the application will be refused."
It would be interesting to know whether your correspondent received such an exam report and whether they appointed a representative within the two-month time limit.
As the previous commentor says, whether the rules are legitimate is a seperate question. However, if the applicant has received and ignored an exam report giving them two-months to appoint a local representative, I don't think there can be much sympathy for them when the design is subsequently refused. Of course, it may be that the 'rejection notice' referred to is simply the exam report, in which case all they have to do is appoint a local agent within two-months and no harm is done.
I believe that if you file the design online at OHIM and enter a non-EU address for the applicant, a dialog box pops up warning you that you will have to appoint an EU representative.