Madrid Protocol

Provisional Refusals under the Madrid Protocol: Country by Country Guide – EU and UK

By Moeller IP Team.

If you’re reading this, it’s safe to imagine that you have applied for an International Trademark, filled out all the forms, and followed the TM registration procedure, but now you are faced with a Notification of Provisional Refusal. One (or more) of the national trademark offices has found a potential problem with your application for IP protection in their country. Or, perhaps you’re looking to file a provisional refusal against a foreign company that would be infringing upon your IP. Now, depending on the national office, the details of how exactly to oppose such a notification vary depending on the national IP office’s rules and regulations. This is the first of a [X] part, country by country guide on how to oppose a provisional refusal when registering for an International Trademark.

European Union Notice of Opposition Proceedings

When filing for an international trademark in order to protect your brand across Europe, it may be more convenient and economical to designate the EU as the protected territory instead of individual countries. The manner in which the EUIPO deals with such a designation differs to other countries such as the UK, where the procedure is dealt with nationally.

When the EUIPO receives an application through the WIPO, it will publish the requested trademark’s details in the EUTM Bulletin in Part M, which is dedicated entirely to international TM registrations. Once published through the Bulletin, the EUIPO will:

1. Prepare search reports (which, if you wish to access them, you will have to request a copy).

2. Conduct an examination of various formalities that may be relevant to your particular application.

3. Conduct an examination of potential absolute grounds for refusal and of any oppositions that are placed by pre-existing trademark holders within the EU.

We will focus on the procedure for any notice of opposition (or provisional refusal). EU trademark holders will have 3 months from the publication of the application in the EUTM Bulletin to file an opposition – this 3-month period starts exactly 1 months after the application has been published in the Bulletin. If the EUIPO accepts the notice of opposition, then a notice of provisional refusal is sent to the WIPO, where the applicant will consequently be notified. At this moment, the need for a European representative may arise. This would occur if the applicant is not domiciled within the European Economic Area (EEA).

Once the opposition has been admitted by the EUIPO, the applicant and opponent will have to follow the EU procedure for notices of opposition.

United Kingdom Notice of Opposition Proceedings

The UK is a historic world economy that has always hosted a vast array of businesses, so it would come as no surprise if you were to be looking to protect your IP in Britain. In the UK, two key pieces of legislation are the Trade Marks Act 1994 and the Trade Marks Rules 2008. Once the application has been accepted by the IPO, it will be published in the UK IP Journal.

In the UK, the provisional refusal is referred to as a notice of opposition, much like when registering for an EU Trademark. From the date of publishing, any pre-existing trademark holder may, within a period of 2 months, file a notice of opposition by filling out Form TM7, being sure to pay special attention to the grounds of opposition. This should clearly explain the reasons for which you are opposing the trademark registration – whenever reinforced by sound legal arguments, even better. The IPO registrar would then communicate this notice to the applicant.

The applicant will then have to file a counterstatement through Form TM8 within 2 months of the Notification Date. However, if both parties agree, they may opt-in for a ‘cooling-off period’ of 9 months, which can be extended another 9 months through Form TM9c, also within 2 months of the date of notification. This period would give the parties time to negotiate with each other and come to some sort of amicable agreement. If unsuccessful, the applicant files Form TM8 and the procedure continues. For the opponent, Form TM9t would be the corresponding form to end the cooling-off period.

Depending on the type of opposition made, you will then enter Evidence Rounds or receive Preliminary Indications.

Preliminary Indications

If the notice of opposition results in Preliminary Indications, the Registrar will examine the case and explain to the parties what the most likely outcome will be upon reviewing the evidence. It should be noted that either party can withdraw their application or opposition at any time. If, however, one of the parties is still wanting to pursue their trademark claim, they may file Form TM53 within one month of receiving the Preliminary Indications, which will then initiate the Evidence Rounds.

Evidence Rounds

For the Evidence Rounds, the opponent has 2-3 months (extendable if they convince the Registrar) to file their evidence-in-chief, starting from the date the opponent received Form TM8. This is the main legal basis of your claim against the applicant, where you may also be requested to submit evidence proving that you have been and still are using your Trademark.

Once filed in its entirety, the applicant now has 2-3 months (extendable if they convince the Registrar) to do the same, legally backing their trademark application and its validity. The opponent then has another 2 months to do respond to the applicant’s counterstatement.

The case will then be reviewed by the IPO and, if requested by either of the parties, a Hearing may be called, where the two parties argue their case before the IPO. The IPO will give their decision and that will be the end of the administrative proceedings.

However, if the final decision was unfavourable to you, it is still possible to appeal the decision. The type of appeal and the national entity responsible for hearing the appeal will vary greatly depending on the specific decision.

To give one example, if you are the applicant appealing against an unfavourable decision that has ultimately rejected your trademark application, you can submit Form TM55 within 28 days of the decision in question. This, however, might not be the right procedure for you. You can find out more about the appeals process here.

If you would like to speak with a lawyer experienced in these proceedings in order to have the best chance possible of winning your claim, please do get in touch.

What is a Provisional Refusal Opposing an International Trademark Registration and What Can I do?

By Moeller IP Team. 

After jumping through all the hoops to register your international trademark, filing the application, and following various quick guides on how to do so, it can be quite concerning to receive a notification of provisional refusal, stating that your trademark, your brand, has hit an obstacle in being protected. What can I do to protect my IP now? you might be thinking. In this article, we will go over what a provisional refusal is, why it was most likely issued, and what you can do to oppose it and protect your brand.

International TM Registration Recap

The first thing to remember is the process of international trademark registration. After being initially approved by the WIPO, the notification is then sent out to all national trademark offices belonging to Contracting Parties of the Madrid Protocol. The national offices now have up to 12 months to grant or refuse protection (18 months in certain cases). If they refuse, they must send a Notification of Provisional Refusal to the WIPO, where you will soon after receiving news of it through the Madrid Monitor. It will probably look something like this.

It is important to note that it is not a final decision, but instead, the Office must indicate the reasons for why it could likely get refused. This could be from either a negative examination by the Office itself or due to an opposition from a third party. Such an opposition will most likely be from a local company, a preregistered TM holder, that believes that your trademark is infringing upon theirs, or is too similar to their own and could get confused.

It should be noted that this is a provisional refusal by opposition, which is different from an ex officio refusal, which occurs when the national office finds a fault in the application and decides to refuse protection of their own accord.

What can I do against a provisional refusal?

The next step will depend upon which country’s IP office put forward the provisional refusal. Each national office has its own specific procedure to deal with the matter. All the necessary details should be included in the notification of provisional refusal you received. These details would likely include the grounds for the provisional refusal, the time period in which you must reply to the refusal and request a review/appeal, to whom you should direct such reply, and if you need to hire a local attorney in that country to assist you with the procedure.

If your request for review and appeal is accepted by the national IP office, you will likely have your trademark application compared with an already existing trademark registered nationally in that country. Depending on what exactly you are wanting to register, the national IP office will compare the shapes, colors, words, and letters included, as well as the similarity of the service/good in relation to the pre-existing trademark, also taking into account the sectorial similarities if any exist. This process may take many months to come to its conclusion, however, every national office has its own rules and deadlines, so you should be very aware of the specific situation of every country. To learn more about a specific country’s provisional refusal rules and procedures, take a look at our country-by-country guide that will take you through everything you need to know. EU & UK Guide.

Replying to a provisional refusal will often mean that you will have to convince the national office or a court of appeals why your trademark is sufficiently different from an already existing one in order to be granted protection of your IP. To do so effectively requires not only a strong argument regarding the differentiation of the trademark but also a comprehensive understanding of the legislation and the case-law of that country. Therefore, it is highly recommended that if you receive a notification of provisional refusal regarding your international trademark registration, that you should hire an experienced IP lawyer to help you in the process.

If you are wanting to reply to a provisional refusal, we have vast experience in these procedures and would be more than happy to explain the situation to you and see how we could help out. Get in touch!

Brazil under WIPO’s Madrid Protocol

By Moeller IP Team. 

Dear Clients, Colleagues and Friends,

Moeller IP Advisors is happy to inform you that, for the first time, the Brazilian PTO has published, in its Official Bulletin, designations of International Registrations filed via the Madrid Protocol. This gives you the chance to not only file trademarks in the Brazilian national trademark office, but additionally enable the designation of your International Registrations through the WIPO’s Madrid System.

Sounds great, what’s the issue?
While the designation of a trademark application in Brazil has been made significantly easier, the Brazilian PTO has announced that any oppositions made against your trademark will not be published in the WIPO’s Gazette, but exclusively in the national trademark bulletin. This means that any trademark applications made through the Madrid System, and subject to oppositions by third parties, or an official rejection, will not be notified to the trademark holder via the WIPO Gazette but will have to be identified separately.

What’s our solution?
Moeller IP’s Brazil office will offer free monitoring of your trademark designations through the Madrid Protocol in Brazil and inform you of any activity. Any opposition or rejection against your (or your client’s) brand can additionally be handled by our experts on site.

Please feel free to contact us should you require more information.

Yours truly,

Moeller IP Advisors

Brazilian Senate approves adhesion to the Madrid Protocol

By Marta Garcia, Patent Technical Advisor

On May 22, 2019, the Brazilian Senate approved the Draft Legislative Decree No. 98/2019, which allows Brazil adhesion to the Madrid Protocol, the International Trademark System. The system is expected to start operating in October 2019 at the National Institute of Industrial Property (INPI).

Created in 1989 and in force since 1996, the Madrid Protocol is an international treaty administered by the World Intellectual Property Organization (WIPO) established to create a centralized system of trademark protection for all the signatory states.

Through the Madrid Protocol, applicants can protect their trademarks in all member countries by filing a single application in one of the member countries. Procedures are uniform and the application can be filed in one of the three official languages – English, French or Spanish. However, the examination of the application follows the national legislation of each country.

The main advantages of the system are: the reduction of filing and management costs, the higher predictability in response time, the simplification of the whole procedure and the permanent monitoring for trademark management in all the countries where the trademark is registered.

Currently, 104 contracting parties are signatory to the Madrid Protocol. In Latin America, only Colombia, Cuba and Mexico are part of the Protocol.

As previously explained in our blog, with Brazil’s upcoming adhesion to the Madrid Protocol, the INPI needs to overcome a series of obstacles for a smooth integration into the Protocol requirements.

Firstly, as a rule of the Protocol, the examination of an application must be carried out within 18 months from the filing date. This was one of the main issues to be solved by the INPI, due to its known backlog problems.

However, as reported in our blog, according to the 2018 Activity Report, the INPI is already complying with this requirement, since the processing time from trademark filing was reduced from 48 months (in applications with opposition) and 24 months (in applications without opposition) in 2017 to 13 and 12 months in 2018, respectively (Figure 1). According to the INPI´s Strategic Plan 2018-2021, which was published in October 2018, the goal is to further reduce the processing time to 8 months in applications with opposition and to 4 months in applications without opposition.

Figure 1: Trademark examination time (in months)

Secondly, the Draft Legislative Decree No. 98/2019 establishes Spanish and English as the possible languages for a trademark application filed through the Madrid System. Taking into account that the INPI’s working language is Portuguese and all applications are filed in this language, the INPI´s operational procedures will have to be changed, the IT systems updated and the staff trained.

Finally, the INPI will have to implement further relevant measures to align with the procedures of the Madrid Protocol, such as:

– the processing of a trademark registration in a multi-class system (e.g., the possibility of requesting the protection of more than one class of product or service in a single application), which is not an option under current INPI practices; and

– the registration under a co-ownership policy (e.g., the possibility of a trademark application/registration being held by more than one owner). Even though the Brazilian system already allows for multiple owners of a single trademark, the INPI has been reluctant to accept and implement this option, for administrative and organizational reasons.

Currently there are public consultations open regarding the implementation of the above measures. The consultation about multi-class registrations will close on June 13, 2019, whereas the one regarding co-ownership will be open until June 20, 2019.

Adhering the Madrid Protocol could boost exports and internationalization of national brands abroad, and make it easier for international companies to operate in Brazil. Moreover, Brazil’s adhesion to the treaty could even prompt other Latin American countries to join soon.

Source: http://www.inpi.gov.br

Brazil Progresses Toward Joining the Madrid Protocol

by Moeller IP Advisors

The Madrid Protocol is an international treaty established to create a centralized system of trademark protection for all the signatory states.

Through the rules of the Madrid Protocol, applicants can protect their trademarks in all member countries: they just need to file a single application in one of the countries’ that are part of the treaty. Procedures are uniformed and the application can be filed in one of the three official languages – English, French or Spanish.

The Madrid Protocol is certainly the most time and cost-effective means of seeking trademark protection internationally. Currently, 100 countries are signatory to the Protocol: Colombia was the first South American country to join in 2012, followed suit by Mexico in the same year.

Some issues have been partially overcome

In November 2016, Brazilian Minister of Industry, Foreign Trade and Services, Marcos Pereira, announced the intention to join the Madrid Protocol, during an official meeting with WIPO Director General Francis Gurry. It was clear, however, that accession to the uniformed Madrid system, although certainly excellent news for all companies operating in Brazil, could prove to be challenging.

For this reason, it was anticipated that the accession would happen not before than mid -2018. Indeed, there were back then, and partially still are, a series of obstacles to a smooth integration of the Madrid requirements.

First of all, it is well-known that the Brazilian INPI suffers from a chronic backlog problem. Recently filed trademark applications take an average of 25 months to be examined when there are no oppositions. The time for deciding on oppositions can take around 4 years, while decisions on appeals on trademark applications may take from seven to eight years. The Madrid Protocol sets a term of maximum 18 months for the National Patent Office to complete the substantive examination and to provide a decision. The Brazilian INPI has recently stated however that the 18 months target could be reached soon. According to an announcement released in November 2017, INPI declared that by the end of 2018, the registration period in Brazil will be shortened from the current 25 months to the 18 months required by the Madrid protocol.

If the INPI seems positive in achieving the 18 months deadline, however, there are other issues that need to be overcome.

As said, the official languages accepted by the Madrid Protocol system are English, French, and Spanish. The Brazilian INPI’s working language is Portuguese and all applications are filed in this language. Changing the internal procedures and training the examiners to be able to examine applications in different languages – or hire translators – would require an additional and very substantial cost. Moreover, the INPI would most probably need to update its IT equipment and infrastructure.

Finally, Brazil would need to change the regulation concerning multiclass applications, which are currently not allowed.

Conclusion

While Brazil has taken an important step towards the Madrid Protocol, some issues still need to be addressed. However, INPI is confident that the country could be able to join the Madrid Protocol as early as 2019.

Joining the Protocol would make it easier both for Brazilian companies to expand their business internationally and for international corporations to operate in the South American country. For some commentators, Brazil annexation to the treaty would even have a sort of a domino effect on the South American region, as Uruguay is said to be assessing the possibility to join the Protocol too, and other countries may follow suit.