European General Court strengthens in T 527/14 once more the position of Patent Attorneys in EEA Countries
Paul Rosenich (LI)
Abstract:
Paul Rosenich being Austrian citizen and living and working for more than 30 years in the Principality of Liechtenstein requested OHIM to enter him on the list of Representatives before OHIM.
OHIM denied this request and Rosenich appealed against this decision at the Boards of Appeal of OHIM. Said Boards of Appeal confirmed the decision of OHIM and Rosenich filed suit against OHIM and against said confirming decision of the Boards of Appeal before the European General Court. The EGC followed in the case T 527/14 the argumentation of Rosenich namely that the EEA-Agreement is higher ranking and binding law also for the EU and its institutions (here the OHIM/EUIPO). The EEA-Agreement however gives individuals the right to choose their places of business within the territory of the EEA and the place of business/residence must not be used for discrimination in every ones right to work in his/her profession (here as a representative of parties before trade mark offices). Rosenich was not only Liechtenstein-, Swiss- and European Patent Attorney but also allowed to represent before the Austrian Patent Office. Being Austrian Citizen, being allowed to represent before the Austrian Patent Office and having a place of business in the EEA was fulfilling the requirements of being admittable to the list of representatives before the OHIM/EUIPO even if the relevant EU-law did not refer to a place of business in the EEA but instead only to a place of business in an EU Country.
The EUIPO accepted the decision of the EGC and entered Rosenich subsequently on the list of representatives.
Following the suit initiated by Rosenich and based on a subsequent request of the EFTA states, the EU-law was amended in the meantime, so that currently every Patent/Trademark Attorney of an EEA Member state may request to become a representative on the list of representatives before EUIPO.
Article:
Paul Rosenich the long standing Chairman of epi's Disciplinary Committee was born and raised in Austria and started his carrier as inhouse Patent engineer in Austrians industries. In 1987 he moved into private practice to the patent attorneys law firm of Dr. Kurt Büchel the then Treasurer of epi. Rosenich passed the EQE and became European Patent Attorney and subsequently also Liechtenstein Patent Attorney. By working also in a Swiss Firm he became Swiss Patent Attorney as well. In 1998 Rosenich opened his own IP Law firm in Liechtenstein. 2011 Rosenich requested OHIM to enter him on the list of Representatives before OHIM. Rosenich argued in the first place that his qualification as representative before the Liechtenstein Trade Mark Office together with is Austrian citizenship and Liechtenstein residence fulfill the requirements requested by the EU-law Directive 207/2009. OHIM denied based on the argument that Rosenich did not represent before an EU-Trademark Office and hence his qualification was doubtful. Rosenich proved that he may represent also before the Austrian Patent Office. OHIM denied again based on the fact that Rosenich did not reside in an EU-Country. So Rosenich took an additional place of Business in Germany - based on the EPC Germany had to allow this. Then OHIM argued that the residence was different from the EU-Country where the representation was confirmed (AT). From this course of OHIM affected Rosenich decided to fight for his rights as EU/EEA citizen confirmed his view that the EEA-Agreement overrides certain EU-law provisions restricted to the EU-territory. The request for entrance on the list was finally based on Rosenich's right to represent before the Austrian Patent Office, his Austrian citizenship and on his residence/place of Business in the Principality of Liechtenstein as a Member of the EEA. OHIM finally decided against this request. As a consequence Rosenich - represented by the trademark department of his firm headed by Noémi Rosenich-Markó and by Prof. Dr. Alexander von Mühlendahl - appealed 2012 against this decision at the Boards of Appeal of OHIM. Said Boards of Appeal however confirmed in 2014 the decision of OHIM and as a consequence Rosenich filed in 2014 suit against OHIM and against said confirming decision of the Boards of Appeal before the European General Court.
The EGC considered all arguments from all sides during the written procedure in 2014 and 2015. The EGC invited for oral proceeding 2016 and set a term until which Rosenich should have been entered on the list of representatives based on the new law which was installed in the meantime and which allowed all EEA-Patent Attorneys to be entered on the list. OHIM found again new arguments against such entry and was not willing to enter Rosenich based on his former request even if it was evident, that under the new law Rosenich would have to be entered on the list anyway. For that reason Rosenich was still not officially entered. As a consequence of not resolving the matter within the set term the EGC had to decide the matter. The 5th Chamber of the Court followed the argumentation of Rosenich namely that the EEA-Agreement is higher ranking and binding law also for the EU and its institutions (here the OHIM/EUIPO). The then binding provision of the Directive 207/2009 requested under Article 93(2) three requirements: a) nationality of an EU-Member State, b) the business seat or a working place in the EU and c) must be allowed to represent before a central IP Office of a Member State of the EU. Rosenich provided proof for a) and c) and referred to the EEA-Agreement when interpreting the requirement b) and presented proof to have his business seat in Liechtenstein (EEA). The EGC agreed to the argument of Rosenich that the EEA-Agreement gives individuals the right to choose their places of business within the territory of the EEA and the place of business/residence must not be used for discrimination in every ones right to work in his/her profession (here as a representative of parties before trade mark offices). Since Rosenich was not only Liechtenstein, Swiss and European Patent Attorney but was also allowed to represent before the Austrian Patent Office, he fulfilled all provisions, if interpreted correctly. Being Austrian Citizen, being allowed to represent before the Austrian Patent Office and having a place of business in the EEA was fulfilling the requirements of being admittable to the list of representatives before the OHIM/EUIPO even if the relevant EU-law 207/2009 did not refer to a place of business in the EEA but instead only to a place of business in an EU Country. This is the consequence of Art. 36 of the EEA-A and other findings.
German and French version of the decisions con be found on the epi website.
The EGC delivered its decision on July 13th 2017 and the EUIPO accepted the decision of the EGC a few days later and entered Rosenich subsequently, officially and finally on the list of representatives.
Following the suit initiated by Mr. Rosenich and based on a subsequent request of the EFTA states, the EU-law was amended in the meantime as far as representation in EU trade mark matters is concerned, so that currently every Patent/Trademark Attorney of an EEA Member state may request to become a representative on the list of representatives entitled to represent in trade mark matters before EUIPO. However, the decision is of interest far beyond the matter of representation before the EUIPO in Trade Mark Matters because it establishes the principle of direct applicability of the freedom to provide services within the EEA which may be invoked by all persons wishing to provide such services, even in the face of contrary legislation.
The decision will also immediately affect the right of EEA professionals to represent clients in design matters before the EUIPO. The Community Design Regulation continues to limit the right to represent to professionals with a place of business in the EU, thus excluding those established only in an EEA country. But now, as a result of the decision, the EUIPO will accept those representatives also in design matters. As a matter of fact the EUIPO confirmed on July 21st 2017 to Islandic representatives that because of the decision their practice in design matters is changed. Furthermore, the right to represent in design matters must now also be recognized for all legal practitioners, regardless of whether they have their place of business in the EU or in one of the three EEA countries.
One would also think that this ruling could possibly affect/confirm the new European Patent Court representation rules and even other similar matters which are not even on the monitor. Insofar it is believed that this T 527/14 is an important mile stone in the freedom of representation of European Patent Attorneys.
