Career Licensing

The Career

European Trademark Attorneys represent clients in all trademark-related matters before the Office for Harmonization in the Internal Market (OHIM), and before the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, using the MADRID AGREEMENT and MADRID PROTOCOL.

Licensing Authority

Office for Harmonization in the Internal Market (OHIM).

Residency Requirements

European Trademark Attorneys must (i) be residents of a member state of the European Union, and (ii) must maintain a place of business in a member state of the European Union.

Member State Requirements

Professional recognition before the Office for Harmonization in the Internal Market (OHIM) and authority to use the title "European Trademark Attorney" is granted to those entitled to represent natural or legal persons in trade mark matters before the central industrial property office of the Member State in which he has his place of business or employment.

For example, an Irish Trademark Agent is entitled to represent natural or legal persons in trademark matters before the Irish Patent Office (IPO), the central industrial property office in the Republic of Ireland. However, an Irish Trade Mark Agent would further be required to have his place of business or employment in the Republic of Ireland because he must be entitled to represent "natural or legal persons in trade mark matters before the central industrial property office of the Member State in which he has his place of business or employment."

Licensing Examination

No professional licensing examination is administered by the Office for Harmonization in the Internal Market (OHIM). Rather, authority to use the title "European Trademark Attorney" is conferred by the OHIM upon certification by the central industrial property office of the Member State in which the applicant has his place of business or employment that the applicant fulfills the conditions of Article 89(2)(a), (b) and (c) of the Community Trade Mark Regulation (CTMR).

For example, the Trade Mark Agents Registration Board of the Irish Patent Office (EPO) will certify that an Irish Trade Mark Agent fulfils the conditions of Article 89(2)(a), (b) and (c) of the Community Trade Mark Regulation (CTMR).

Upon receipt of this certification, the name of the Irish Trade Mark Agent is entered on the OHIM list of professional representatives and thereby is granted title authority for the designation: "European Trademark Attorney".

Recommended Syllabus

European Trademark Attorneys represent clients in all trademark-related matters before the Office for Harmonization in the Internal Market (OHIM), and before the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, using the MADRID AGREEMENT and MADRID PROTOCOL. Accordingly, professional preparation would typically include careful study of the following legal source documents.

  • Council Regulation (EC) No 40/94 of 20 December 1993 on the Community Trade Mark
  • Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community Trade Mark
  • Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs)
  • Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs)
  • Council Decision of 27 October 2003 approving the accession of the European Community to the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (2003/793/EC)
  • Council Regulation (EC) No 1992/2003 of 27 October 2003, amending Regulation (EC) No 40/94 on the Community Trade Mark to give effect to the accession of the European Community to the Protocol relating to the Madrid Agreement concerning the international registration of marks adopted at Madrid on 27 June 1989
  • Commission Regulation amending Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community Trade Mark to give effect to the accession of the European Community to the Madrid Protocol
  • Commission Regulation (EC) No 1041/2005 of 29 June 2005 amending Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community Trade Mark
  • Information regarding the date from which points 11 to 14, 21, 23 to 26, 33 and 36 of Council Regulation (EC) No 422/2004 of 19 February 2004 amending Regulation (EC) No 40/94 on the Community Trade Mark shall apply
  • Council Regulation (EC) No. 422/2004 of 19 February 2004 amending Regulation (EC) No. 40/94 on the Community Trade Mark
  • Commission Regulation (EC) No 2082/2004 of 6 December 2004 amending Regulation (EC) No 216/96 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs)
  • Commission Regulation (EC) No. 782/2004 of 26.04.2004 amending Regulation (EC) No. 2868/95 the accession of the European Community to the Madrid Protocol
  • Council Decision of 27 October 2003 approving the accession of the European Community to the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989
  • Council Regulation (EC)No. 1992/2003 of 27 October 2003 amending Regulation (EC)No. 40/94 on the Community Trade Mark to give effect to the accession of the European Community to the Protocol relating to the Madrid Agreement concerning the international registration of marks adopted at Madrid on 27 June 1989
  • Council Regulation (EC) No. 1653/2003 of 18.06.2003 amending Regulation (EC) No. 40/94 on the Community Trade Mark (Article 118a) (Article 136), in force since 01.10.03
  • Incorporation of Article 142a to Regulation (EC) No. 40/94 on the Community Trade Mark according to Annex II (4. Company law - C. Industrial property rights) of the Act of Accession, entry into force foreseen with the accession (01.05.04)
  • Article 141 of Council Regulation (EC) No. 40/94 on the Community Trade Mark has been replaced as referred to in Council Regulation (EC) No. 807/2003 of 14.04.2003 adapting to Decision 1999/468/EC the provisions relating to committees which assist the Commission in the exercise of its implementing powers laid down in Council instruments adopted in accordance with the consultation procedure (unanimity), in force since 05.06.03
  • Council Regulation (EC) No. 3288/94 of 22.12.1994 amending Regulation (EC) No. 40/94 on the Community Trade Mark for the implementation of the agreements concluded in the framework of the Uruguay Round, in force since 01.01.95
  • First Directive 89/104/EEC of the Council, of 21 December 1988, to Approximate the Laws of the Member States Relating to Trade Marks
  • Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (adopted in 1989)
  • Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (last version April 1, 2002)
  • Administrative Instructions for the Application of the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating Thereto
  • Notification No 160 - Protocol relating to the Madrid Agreement concerning the International Registration of Marks - Accession by the European Community