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Provisional Refusals under the Madrid Protocol: Country by Country Guide – EU and UK
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.
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What is a Notice of Opposition Against an EU Trademark Application and What Can I Do About it?
When filing for an EU Trademark to protect your brand, you might receive a Notice of Opposition from the EUIPO. You might be worried about this. Maybe you’re asking yourself: What is a notice of opposition? What can I do to register my trademark now? How can I make sure that my brand is protected in the EU? In this article, we will explain what a Notice of Opposition is and how to deal with it to ensure that you protect your IP. First, let’s remind ourselves of the application process for EU trademarks.
Recap of EU Trademark Application Process
We must remember that once you have sent your application away, the EUIPO examiner will analyze it and look for any problems. If provisionally approved, your application will be published in the EU Trade Marks Bulletin for all to see. Any party that already owns a registered trademark now has 3 months to file a Notice of Opposition, which will prevent you from being granted protection for your trademark.
What is a Notice of Opposition?
A Notice of Opposition filed by a preregistered EU trademark holder is a claim to the EUIPO that your future trademark infringes on their pre-existing trademark, or is too similar and could cause confusion. This must be done by the opposing party within 3 months of publication in the EU Trade Marks Bulletin.
Once the filing has been completed, and the opposing party has paid the corresponding fees, the Opposition Division of the EUIPO will examine the Notice and determine its admissibility. This admissibility test is conducted in accordance with the EU Trademark Regulation. If it passes the test, you will be advised of the Notice and the next phase of the procedure will begin.
What can I do against a Notice of Opposition?
In order to go against a Notice of Opposition, you must first know the procedure that will be followed. Firstly, there will be a 2-month period in which you may negotiate with the opposing party to try to come to some sort of arrangement. If unsuccessful, you will then have to argue before the EUIPO. These are known as the cooling-off period and the adversarial stage.
Cooling-off period
Once you have been informed of the Notice of Opposition, a 2-month period begins in which you and the opposing party may attempt to reach a friendly settlement. This is known as the ‘cooling-off’ period. If you are able to reach an agreement with the opposing party, then whatever you agree shall be established and neither side will have to pay any costs for further phases of the procedure. If, however, you are unable to come to an agreement, the adversarial stage shall begin in which you must argue with the opposing party before the EUIPO as to why your trademark should be granted protection and, more importantly, why it is not infringing on the pre-existing trademark, nor is so similar that it would cause confusion.
Adversarial stage
In this next stage, the opposing party must complete his opposition filing within 2 months of the end of the cooling-off period – the Notice of Opposition was merely provisional. Here, the opposing party will include all evidence that supports his case, as well as proving that the IP rights he is invoking from his trademark truly exist and are valid. For an extensive description of what the opposing party must file and the requirements for doing so, check the Guidelines for Examination in the Office.
Responding to the Opposition
Proof of Use
In responding to the opposition, in the case that you believe the opposing party may very well have a registered trademark, but is not actually using it, you may request proof of use. This requires the opposing party to submit additional documentation that proves that he is actively using his trademark in a commercial environment. It is essential that every trademark owner is aware that it’s using it or lose it when it comes to opposition proceedings.
Restrictions of your Trademark Application
When filing the application to register your trademark, you will have had to specify which goods and services are traded under the brand. As this could be the grounds for the Opposition in the first place, you may also decide to restrict your application in order to limit the goods and services you provide under that brand, to prevent any potential infringement of the opposing party’s protection. This would only work in specific cases in which you and the opposing party are operating in similar or overlapping sectors. It is important to mention here that the EUIPO will not accept restrictions that are conditional. The restriction must be absolute and unconditional.
Formulate a Strong Legal Argument Behind Why Your Trademark Application is Acceptable
This may seem rather obvious, but it is much easier said than done. There is a reason that lawyers dedicate their entire professional lives to IP law. It is an area of the law that is always changing and evolving, not to mention that it has the potential to be incredibly subjective, given that a key factor in a EUIPO decision is how similar it looks compared to the pre-existing trademark.
If you want to have the best chances at a successful trademark application, it is highly recommended to hire the services of an experienced IP lawyer to go through the process with you. At Moeller IP, we have been practicing solely IP law for nearly 100 years across the world, and there is still more to do. If you would like to clarify some doubts, please don’t hesitate to get in touch with us right away.
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How to Register a Trademark in the EU: a 5 Step Guide and Other Practical Concerns in 2020
Filing for an EU Trademark is a wise decision if you want to protect your brand across the European Union. It is a valuable tool for ensuring that no one copies your products and hard-earned brand image. In this article, you will find out what the requirements are to get an EU Trademark, the scope of protection, the application process, as well as other relevant practical aspects to take into account throughout the process.
If you need help or advice to register your trademark, our specialized trademark lawyer will be delighted to help you.
What is an EU Trademark and am I able to get one?
A registered trademark grants you exclusive rights over “distinctive signs”, which include the following concepts:
- Logos
- Names
- Images
- Colours
- Patterns
- Shapes
- Packaging of goods
- Sounds
- Smells (with specific requirements which shall not be explored here. Find out more
A single trademark can protect one or a variety of these concepts all at once, as long as these concepts come together to create a distinctive sign that identifies your brand and differentiates it from others.
Scope and duration of IP protection
An EU Trademark will protect your brand across all EU countries for 10 years before it must be renewed. Information relevant to renewal can be found below in the section titled “IP Monitoring and TM Renewal”.
How can I apply for an EU Trademark?
Now that we have covered the definition of a registered trademark in the EU and its scope, we shall now cover the application process, which must be conducted through the EUIPO (European Union Intellectual Property Office).
The application process can be split up into 5 steps:
- Trademark Search
- File the EUIPO Trademark Application
- Examination Period
- Publication
- Trademark Issuance
For the purpose of giving an example, we shall go through the TM application procedure under the presumption that you want to register a logo as a trademark in the EU.
Step 1: Trademark Search
Before filing your application, it is wise to first check if your logo is not already registered. This search can be done free of charge through eSearch plus and TMview. In these portals, you can search both with text and by dragging and dropping an image of your logo into the search bar. For official EUIPO information regarding trademark search criteria, click here.
Once you have found that your logo is distinguishable from those already registered, you can proceed to start the EUIPO application process.
Step 2: File the EUIPO Trademark Application
The easiest way to start the application process is online through the official EUIPO website. Here, you will find two options.
Fast Track
The Fast Track option is the most efficient way of protecting your brand as quickly as possible. On average, these applications are processed 50% faster and take just 3 weeks to be published. This would be recommended for most trademarks and requires that payment be made at the very beginning – the examination period cannot begin until the payment (850€) has been received.
The Fast Track option is a simple 5 step process that the website takes you through. An informative explanation of the 5 steps can be found here. An important aspect to consider is the input of the goods and services you will provide under this trademark. If you are providing goods and services in various industries or sectors, and therefore need to include several classifications, you will have a higher risk of a problematic application. Fortunately, the EUIPO have created a Goods & Services builder to help you, which can be found here.
Advanced Form
The Advanced Form should only be used for more complex applications involving a customized goods and services submission, a collective mark, an international trademark transformation, or use more than one language in your application.
Step 3: Examination Period
Once filed, an EUIPO examiner will review your trademark application and within one month will inform you if there have been any issues. This could be an innocent mistake in the form, which is easily fixed, or a concern regarding the distinctiveness of the logo, for example.
Most issues that arise are often innocent mistakes. In this case, you have two months to correct any problems and move forward with the trademark application procedure.
Step 4: Publication
Once provisionally approved, your trademark will be published in the EU Trademark Bulletin. This will be published for three months, during which time third parties may review your mark and, if they believe that it is too similar or is a copy of their trademark, they can file a notice of opposition. In this case, your application could be delayed for more than 2 years given the length of the opposition procedure. [If your application has been opposed by another party, learn how to overcome this here.]
Step 5: Trademark Issuance
If no third parties have filed oppositions and your application is in order, congratulations! Your trademark will be approved by the EUIPO and within 6 months of publication, you will receive a registration certificate. This is a document that proves your exclusive legal right to use your trademark throughout the European Union. But it isn’t over yet…
Follow-up: IP Monitoring and TM Renewal
IP Monitoring
Just because you have the IP rights protecting your brand with your shiny new trademark, that doesn’t mean that your brand is free from risk. It is now up to you to ensure that nobody else tries to use your brand for their own commercial gain.
In order to facilitate the monitoring and continued protection of your IP, we have partnered with [insert partner’s name here with a link] to ensure that you don’t have to worry about this part of the process.
TM Renewal
Don’t forget that your trademark is only protected through EUIPO for 10 years. At the end of this period, you must file for a renewal. It would be wise to carefully manage this or hire an IP lawyer to take charge since the EUIPO will not remind you when your protection is ending.
Final words about International Trademark
We hope that you now feel much more comfortable with regard to your trademark application. However, if you are wanting to protect your IP in more countries than just the EU, there is another procedure to register an International Trademark through the WIPO (World Intellectual Property Organization) that allows you to protect your brand across the world. You can learn “How to register and international trade mark in 3 steps“. If you have any doubts, please don’t hesitate to get in touch with one of our experienced IP specialists.
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Overview of IP filings in Latin America over the Last Decade
In December 2018, the World Intellectual Property Organization (WIPO) published its annual World Intellectual Property Indicators 2018 report, which shows IP statistics worldwide. Patent filings around the world reached 3.17 million, representing a 5.8% growth on 2016 figures, trademark filings totalled 12.39 million, up 26.8% on 2016, and industrial design filing activity exceeded 1.24 million. China recorded the highest application volume for each of these IP rights.
Regarding patent filings in the Latin American and the Caribbean region, WIPO´s study report a slight decrease (-0.1%) on the average annual growth from 2007 to 2017, with 57,600 patents filed in 2017.
On the other hand, trademark filings in the region showed a 3.3% increase on the average annual growth over the same period, reaching 715,900 applications in 2017. This average percentage annual growth was similar to that for North America (3.9%) and higher to the one in Europe (0.2%).
Industrial design filings during the 2007-2017 period in the Latin American and the Caribbean region also shows a slight average annual increase (0.6%), with 15,500 filings in 2017.
Below are IP data for the period 2007-2018 according to the statistics published by the corresponding PTOs of the top five largest Latin American economies: Brazil, Mexico, Argentina, Colombia and Chile.
Patents
From 2007 to 2018, patent filings in Brazil have increased 15% overall. However, the number of applications has fallen for five consecutive years, with the decline in non-resident applications being the main driver for the decrease. From 2017 to 2018, there was a slight reduction from 28,667 to 27,551 (-3.9%) in patent filings, although there was a large increase (77.5%) in patent grants, rising from 6,250 in 2017 to 11,090 in 2018. Additionally, in 2018 the patent backlog was reduced by 7.4% with respect to 2017.
In 2018, applications from the U.S accounted for 30% of the total patent filings, followed by Brazil (20%), Germany (8%) and Japan (7%).
Overview of IP filings in Latin America over the Last Decade
Mexico has experienced a slight overall decrease (1%) in patent filings from 2007 to 2018, with 16,424 applications filed in 2018. Regarding patent grants, 8,921 applications were granted in 2018, 5% more than in 2017.
Applicants from the U.S. accounted for 44% of the total applications in 2018, followed by Mexico, Germany and Japan (7% each).
Patent filings in Argentina have also experienced a decrease over the last years, with 3,443 applications filed in 2017. Interestingly, during the 2016-2017 period, there was a 56% decrease in resident applications, whereas non-resident applications slightly increased (4%). Regarding patent grants, these have almost doubled in the period 2008-2017, with 2,302 patents granted in 2017. No data are yet available for 2018.
Overview of IP filings in Latin America over the Last Decade
Except for a marked decrease during 2009 and 2010, patent filings in Chile have been rather steady, with a slight 7% increase from 2017 (2,892) to 2018 (3,100).
30% of the applications in 2018 were from U.S. applicants, 13% from Chile, 9% from Switzerland and 8% from Germany.
Colombia also recorded a 7% increase in patent applications from 2017 (2,049) to 2018 (2,372), and a remarkable 16% growth for the period 2007-2017. In 2017, 32% of the filings were from U.S. applicants and 25% from Colombian applicants, followed by Switzerland, Germany and France in number of applications. No data are yet available for 2018.
Trademarks
Regarding trademark applications, both Brazil and Mexico have seen an overwhelming growth during 2007-2018: applications in Brazil have increased 96% since 2007, reaching 204,419 applications in 2018, whereas in Mexico this increase went up to 103%, with 156,156 applications filed last year.
Resident filing activity has driven this growth in Brazil, with an average of 82% in resident filings during the period 2007-2018. The second country in number of trademark applications in Brazil is the U.S., whose share in 2018 was 4%. Resident filings in Mexico represented an average of 68% during the period 2007-2018. The second country in number of trademark applications in Mexico is also the U.S., with 17,449 applications (11%) filed in 2018, followed by Germany (3%).
Overview of IP filings in Latin America over the Last Decade
There has been a significant increase in trademark registrations in Brazil during the last year, from 123,362 in 2017 to 191,813 in 2018 (55.5%). More importantly, the backlog was reduced from 358,776 by the end of 2017 to 191,535 by the end of 2018, which represents a decrease of 46.6%.
Trademark registrations have increased 150% in Mexico during the period 2007-2018, rising from 49,746 registrations in 2017 to 124,023 in 2018.
Overview of IP filings in Latin America over the Last Decade
With an overall 4% increase in trademark applications in Argentina from 2007 to 2017 and 74,722 filings in 2017, resident applications represented an average percentage of 76% during the period 2007-2017.
Except for a drop in 2009, trademark filings in Chile have been rather stable, with an overall increase of 18% during the period 2007-20018 and 47,407 filings last year. Resident applications in Chile represented an average of 69% during the period 2007-2018.
Colombia has experienced a significant overall increase (73%) in the number of trademark applications during 2007-2017, with 42,725 filings in 2017. Resident applications in Colombia showed an average of 57% during the period 2007-2017. There has also been a substantial increase (71%) in trademark registrations in Colombia during 2007-2017.
Sources: http://www.wipo.int
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Brazilian PTO’s 2018 statistics show productivity increase and trademark backlog reduction
by Marta Garcia
According to the 2018 Activity Report recently published by the Brazilian PTO (INPI), last year there was a productivity increase and a substantial reduction of processing time and backlog for trademarks and industrial designs. However, the backlog and the average examination time for patents still continues to be very high.
Trademarks
The number of trademark filings rose moderately from 186,103 in 2017 to 204,419 in 2018, which represents an increase of 9.8% (Figure 1). Likewise, there was a significant increase in trademark registrations from 123,362 in 2017 to 191,813 in 2018 (55.5%). More importantly, the backlog was reduced from 358,776 by the end of 2017 to 191,535 by the end of 2018, which represents a decrease of 46.6%.
Figure 1: Trademark filings (1999-2018)
According to the PTO´s report, 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. This substantial processing time reduction has been possible thanks to the INPI´s technical preparation to adhere to the Madrid Protocol in the near future. 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.
Industrial designs
The 2018 Activity Report also shows a 63% reduction in the backlog of industrial designs, from 9,288 applications pending in December 2017 to 3,433 in December 2018.
During the same period, there was a 40.3% increase in the number of industrial design registrations, from 6,220 to 8,725. In addition, there was a slight increase (1.9%) in the number of filings, rising from 6,000 in 2017 to 6,111 in 2018 (Figure 2).
Figure 2: Industrial design filings (1999-2018)
Patents
Since 2016 the INPI has been introducing several measures with the aim of tackling one of the biggest patent backlogs in the world, such as a 25% increase in its professional staff, including the recruitment of more than 200 new examiners, optimization of internal procedures, and improvements in the electronic systems.
Moreover, the INPI has launched several Patent Prosecution Highway (PPH) programs since 2016 in order to expedite patent examination. Currently the INPI has running PPH programs with the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO), as well as the Argentinian, Chilean, Colombian, Costa Rican, Paraguayan, Peruvian and Uruguayan Patent Offices, all of which are members of the IP Collaborative Project PROSUR. There are also PPH programs with the European Patent Office (EPO), the State Intellectual Property Office People’s Republic of China (SIPO), the United Kingdom Intellectual Property Office (UKIPO) and the Danish Patent and Trademark Office (DKPTO).
As indicated in its 2018 Action Plan, the INPI further intends to enter into new PPH agreements with Russia (ROSPATENT), South Korea (KIPO), Israel (ILPO) and Mexico (INPI).
However, despite these efforts, the 2018Activity Report continues to show worrying numbers.
Even though there has been a high increase (77.5%) in patent grants, rising from 6,250 in 2017 to 11,090 in 2018, and the patent backlog has been reduced by 7.4% with respect to 2017, the year 2018 still closed with discouraging backlog statistics: 208,341 patent applications are still pending a first instance decision (Figure 3).
Figure 3: Patent applications pending final decision (2009-2018)
As for patent filings, there has been a slight reduction from 28,667 in 2017 to 27,551 in 2018 (-3.9%).
According to the 2018 Activity Report, the average decision time for patent applications in Brazil from filing is currently 10 years, with pharma and IT patent applications reaching a maximum average of 13 years (Figure 4).
Figure 4: Average decision time for patent applications (in years)
The INPI´s Strategic Plan 2018-2021 states that the goal is to reduce the average decision time to 5 years from the filing date. However, this document indicates that the achievement of this goal depends on the approval of the most radical and controversial measure aimed at addressing the patent backlog that the INPI has proposed: an automatic granting procedure of patent applications that were opened to public consultation in 2017.
According to the proposal, if the procedure is enacted, a patent application (excluding pharmaceutical applications) filed or with the PCT’s national phase initiated up to the date of publication of the resolution and with examination requested, will be granted within 90 days without any substantive examination, after the issuance of a notice of admissibility in the simplified procedure, provided that third-party observations (pre-grant oppositions) have not been filed against said application. Applicants may request their patent applications to be excluded from the automatic granting procedure so it is subjected to the standard substantive examination.
Nonetheless, at the time of writing this article, the automatic granting procedure, which was proposed by the INPI together with the former Ministry of Industry and Foreign Trade and Services (MDIC), has not yet been approved.
Moreover, since Brazil´s new president, Jair Bolsonaro, took office on January 1, 2019, the INPI no longer depends on the MDIC, but to the Special Secretariat for Productivity, Employment and Competitiveness of the newly created Ministry of Economy.
Source: http://www.inpi.gov.br
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