At the moment, there is no professional code of conduct for European Trade Mark and Design Attorneys acting before the Office of Harmonization in the International Market (the Community Trade Mark and Designs Office).
Franks & Co wrote to OHIM in 2009 enquiring whether such a code of conduct existed.
We have recently created a code of conduct and have now submitted this to OHIM with a request that the code of conduct should be adopted by all European Trade Mark and Design Attorneys acting before OHIM.
OHIM's response in their letter of April 04, 2009 was "We refer to your letter of 16 March 2009. We can inform you that OHIM does not have such a code of conduct."
We have taken the initiative and have sent the following code of conduct to OHIM as our suggestion to set the process in motion:
"Code of Conduct for Professional Representatives before the Office for Harmonisation in the Internal Market
This Code is to govern the conduct and other activities of professional representatives before the Office for Harmonization in the Internal Market, insofar as such activities are related to:
Council regulation (EC) No 207/2009 on the Community Trade Marks as subsequently and variously amended and also on various commission regulations also amended several times and establishing respective implementing rules from the CTMR
Council regulation (EC) No 6/2002 of December 12, 2001 on Community Designs, together with any subsequent amendments and implementing regulations.
In this Code, the following definitions are applicable:
- "Trade Marks Regulation"
- means the Council Regulation (EC) No 2007/2009 of February 26, 2009 on the Community Trade Mark;
- "Implementing Regulation"
- means Commission Regulation (EC) No 2868/95 as amended;
- "Designs Regulation"
- means the Council Regulation (EC) No 6/2002 of December 12, 2001 on the Community Designs from the consolidated version;
- means the Office for Harmonization in the Internal Market;
- "Professional Representative"
- means a person on the list of professional representatives held by OHIM under Article 93 of Council regulation (EC) No 207/209 of February 26, 2009 on the Community Trade Mark (consolidated version);
- means any natural person or legal entity who takes advice or asks services of a professional representative;
- "Disciplinary Bodies"
- means a Disciplinary Body administered by the Office for Harmonization in the Internal Market;
- "Disciplinary Committee"
- means a Disciplinary Committee of the Disciplinary Body.
a) The general requirements for professional representatives are laid down in Articles 92 and 93 of the Trade Mark Regulation, in Rules 75 to 78 of the Implementing Regulation, and in this Code of Conduct.
b) The general principles of professional conduct are laid down in this Code, which reflects the present views of OHIM. A professional representative is not released by this Code from his own responsibility to comply with this Code of Professional Conduct.
c) The basic task of a professional representative is to serve as a reliable adviser to persons interested in trade mark and/or design matters. He should act as an independent counsellor by serving the interests of his clients in an unbiased manner without regard to his personal feelings or interests.
d) A professional representative shall take measures to safeguard his client's interests in the event he would be prevented from exercising his profession.
e) Good fellowship among professional representatives is a necessity for preserving the reputation of the profession and should be exercised irrespective of personal feelings.
f) Each professional representative should know of the Code and cannot plead ignorance of it.
g) A breach of this Code cannot be justified by referring to instructions from a client.
a) Advertising is generally permitted by a professional representative provided that it is true and objective and conforms with basic principles such as integrity and compliance with professional secrecy.
b) The following are exceptions to permitted advertising:
1) the identification of a client without the express authorisation of that client;
2) the mention of the name of another professional entity unless there is a written cooperation agreement between the professional representative and that entity;
3) the advertisement, announcement or publishing of offers to buy, sell or negotiate industrial property rights, except upon the instructions of a client.
3. Relations with the Public
a) A professional representative shall uphold the public reputation of OHIM, of its professional representatives, and of the practice of representation before the Office for Harmonization in the Internal Market.
b) A professional representative shall not give any indication on office premises, stationery or otherwise which is misleading to the public.
c) A professional representative shall not give any commission to others for the introduction of business, but this does not extend to the acquisition in part or in whole of another patent or trade mark or intellectual property agency practice.
d) A professional representative shall not permit without adequate supervision professional activities related to the Office for Harmonization in the Internal Market under his name or the name of his association by a person who is not a member.
e) As far as the exercise of his profession is concerned, a professional representative is responsible for the acts of non professional representative assistants.
4. Relations with Clients
a) A professional representative shall at all times give adequate care and attention and apply the necessary expertise to work entrusted to him by clients. A professional representative shall keep clients informed of the status of their cases.
b) In principle, a professional representative does not need to serve the interests of a client in matters not connected with professional work entrusted to him by the client.
c) A professional representative may demand advance payments from a client.
d) A professional representative shall decline an order which is in conflict with his own interests. In all such cases, if the order cannot be postponed without possible damage to the client, a professional representative shall accept and perform the order so far as immediately necessary to avoid such possible damage. Thereafter he shall resign from the case.
e) A professional representative must not acquire a financial interest in any industrial right in such circumstances as to give rise to a conflict between professional duty and interest. He must not charge a fee directly related to the outcome of the services he provides.
f) A professional representative shall not take any action against a particular matter which is being handled or has been handled by the professional representative or another person in his office, unless the client in the matter agrees to this action or unless the professional representative has no cognizance of the matter and is no longer in a position to take cognizance of it. The professional representative is not permitted to make use in the action of information obtained during the time the matter was previously handled, unless the information is public.
5. Relationship with other Members
a) A professional representative must observe good fellowship towards other professional representatives, and this includes courtesy and the fact that a professional representative may not speak of another professional representative in discourteous or offensive terms. Grievances in respect of another professional representative should first be discussed in private with the other professional representative, either directly or through a third member, and then if necessary through the official channels prescribed by this Code of Conduct.
b) No professional representative must exercise or promote discrimination between members, for example on grounds of language or nationality.
c) A professional representative shall avoid any exchange of views about a specific case, which he knows or suspects is or was being handled by another professional representative, with the client of the case, unless the client declares his wish to have an independent view or to change his representative. The professional representative may inform the other professional representative only if the client agrees.
d) Where a professional representative is instructed by a client to take over the handling of a case from another member, the professional representative so instructed is free to accept such instruction but then shall ensure that the other professional representative is informed. Such other professional representative shall without delay, loan or transfer all documents necessary for the handling of the case or provide copies at reasonable expense to the new representative.
6. Relationship with the Office for Harmonization in the Internal Market
In all dealings with the Office for Harmonization in the Internal Market and its employees, a professional representative shall act courteously, and shall do everything possible to uphold the good reputation of OHIM and its professional representatives.
7. Relationship with the Office for Harmonization in the Internal Market
a) Professional representatives must keep OHIM informed of their address to which correspondence and other information from OHIM are to be sent. Changes of address must be notified without delay.
b) No professional representative may, unless authorised by OHIM, make any written or oral communication on behalf of the OHIM.
c) A professional representative has the right to seek through OHIM an opinion on the permissibility, under this Code, of any act the professional representative proposes to do or sanction. Such opinion shall not be binding on the Disciplinary Bodies.
d) Breaches of the Code should be brought to the notice of the Disciplinary Committee in writing."
Article Published March 10th, 2010