Guide · Representation
Do you need an EU trade mark representative?
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Businesses based outside the European Economic Area (EEA) must be represented before the EUIPO in every proceeding on their EU trade mark except the filing of the application (Article 119(2) of Regulation (EU) 2017/1001). The rule applies to companies from any non-EEA country, from the United States and the United Kingdom to China, Canada, Switzerland and Australia. Only a lawyer qualified in the EEA or a professional representative on the EUIPO list can act for them (Article 120).
Who has to appoint a representative?
Every person or company without a domicile, a principal place of business or a real and effective industrial or commercial establishment in the EEA. The EEA is made up of the 27 EU member states plus Iceland, Liechtenstein and Norway. What counts is where the applicant is established, not its nationality or the countries where it sells.
Some common cases:
- United States, Canada, Australia, China, India, Japan, South Korea, the United Arab Emirates and Türkiye: a representative is required.
- United Kingdom: since 1 January 2021 UK businesses are outside the EEA and need a representative. Representatives based in the UK can no longer act before the EUIPO.
- Switzerland: it is not a member of the EEA, so Swiss businesses need a representative too.
- Norway, Iceland and Liechtenstein: they are part of the EEA, so no representative is required.
When is the representative needed?
A business outside the EEA may file the application itself. From then on, every proceeding before the Office goes through the representative, in particular:
- objections during examination, when the Office raises a ground for refusal or a formal deficiency;
- oppositions, whether a third party opposes your application or you oppose someone else’s;
- cancellation actions, for revocation or a declaration of invalidity;
- recordals of transfers, licences and changes of name or address;
- appeals to the Boards of Appeal.
Under the EUIPO Guidelines, renewal requests and requests for inspection of files can also be made without a representative.
What happens if you do not appoint one?
If representation is required and none has been appointed, the Office asks you to appoint a representative within a time limit. If you do not, the application is refused. Once a representative is appointed, the Office sends all its communications to the representative only.
Who can act as your representative?
Article 120 allows two categories. The first is legal practitioners qualified in an EEA member state, with a place of business in the EEA and entitled to act in trade mark matters there. The second is professional representatives entered on the list kept by the EUIPO. A lawyer or consultant based outside the EEA cannot represent you before the Office, even if they prepared your application.
There is one exception for groups of companies. An employee of a company established in the EEA may also represent other companies economically connected with it, even if they are based outside the EEA (Article 119(3)).
How does AstroLegal handle representation?
Every AstroLegal file is handled by a lawyer qualified in an EEA member state, named in the email you receive after your request. For existing EU trade marks, representation before the EUIPO is included in all three annual plans, from €290 a year.
For new trade marks, we start with a €75 pre-registrability study delivered as a signed legal opinion. Within seven working days of the payment of our quote, we prepare the application and send it to you for approval and payment of the EUIPO fees. Then we file it.
Fewer than 2% of the applications AstroLegal has filed since 2021 have received an opposition. Past results do not guarantee the outcome of a new application. The full breakdown of fees is on the EU trade mark costs page.