Trademark Opposition

Provisional Refusals Under the Madrid Protocol: Country by Country Guide – France and Spain

By Moeller IP Team.

If you’ve received a notification of provisional refusal in response to your international trademark application from the French or Spanish national trademark offices, here you will discover what the procedures are to go against such a notification and fight to protect your IP in Spain and France.

Provisional Refusals France

In the French trademark system, the key legislative documents to keep in mind are the French IP Code and Law 2007-1544. The national French IP Office is the INPI. Once the INPI has received your application from the WIPO, it will take 6 weeks before it is published in the French Trademark Gazette. From this date, any pre-existing French trademark holder will be able to file an opposition with the Director General of the INPI.

Notice of Opposition

At this point, the applicant will be notified of the opposition, its grounds, and will be granted a time period within which to respond to the opposition. This counterstatement shall be your official argument against the opposition, so make sure that your arguments are bulletproof so that they stand up well before the INPI.

Here is a good point to highlight the importance of sticking to the deadlines placed upon you by either the INPI or the French/European trademark regulations. Often, such deadlines are non-extendable, so if you do not file the correct paperwork in the time given, your application (or opposition) will fail.

From the date of filing the opposition, the INPI must, by law, make a decision and notify the parties within 6 months. If no decision has been made, then the opposition will be rejected and the trademark application successful. This 6-month time period may be suspended if one of three situations arises:

1. The INPI finds that the supposedly pre-existing French trademark was never registered
2. One of the parties requests a suspension due to a claim pending before the courts
3. Both parties request a suspension of three months, which can be renewed if both parties agree. This would often be due to the parties attempting to reconcile their differences and come to some sort of amicable agreement.

The first decision received will be a draft decision – technically a preliminary assessment of the matter – which then gives both parties the chance to submit their observations and further argue their claims within one month of receiving the draft decision. However, this opportunity to further argue your point, if the INPI has made an unfavourable draft decision, is in practice rarely effective in overturning the INPI’s initial decision.

Once the final decision has been made, there is a strict time period allowed for either party to appeal this decision to the French appellate courts. For French nationals, this time period is 1 month; for non-French nationals, this time period is 3 months. This is a crucial stage for the losing party, and it is their last real chance at protecting their IP in France.

It should be well noted that, in order to convince a judge that the INPI came to the wrong conclusions in their decision, your legal arguments must be very well-structured and coherent. Unless you are an experienced IP specialist, then it would be wise to hire a trustworthy IP lawyer to take you through the proceedings.

Provisional Refusals Spain

As one of the top European economies, with various strong industries such as tourism, it is a common territory to file for trademark protection. In Spain, the relevant legislation to be aware of is the Spanish Trademark Law, and the national IP office is the OEPM.

Notice of Opposition 

Once an application has passed through the OEPM and has been published in the Official IP Bulletin, any pre-existing Spanish TM holder will have 2 months to file an opposition before the OEPM. Such an opposition will have to be started by filling out Model 4104, where the opponents case will be made as to why the applicant’s trademark would infringe on his pre-existing IP right. An important feature of the opposition in Spain is ability to attach a file to the Model in which you may exhaustively reason your claim. There is no limit on space or how many words may be used, therefore an experienced IP lawyer would be very useful at this stage of the trademark opposition proceedings. However, the OEPM does recommend not to be too repetitive or unclear in this file – if you go over the top, it could do more harm than good.

There are certain requirements in order for the opposition filing to be accepted by the OEPM found in article 26 of Royal Decree 1937/2004. If the filing has some sort of irregularity, don’t worry – you will be granted 10 days to remedy any defect and carry on with the opposition proceedings.

The applicant, once having received the opposition filing, will then have 2 months to file a counterstatement to the opposition, in which they will do the same as the opponent, reasoning why their Spanish trademark should be registered. Here, it is important for the applicant to understand that they have the right to withdraw or alter their application at any time. This would be wise in the case that a pre-existing Spanish trademark provides certain goods and services that seem to overlap with the goods and services described in the initial trademark application. If the applicant believes that they can commercially operate perfectly fine under a slightly different definition of the goods and services they provide, then that would be ideal. Again, the same criteria apply as for the initial opposition filing – that it be clear and concise, without repeating your arguments for the sake of filling out the form in an extensive manner. Once filed, the OEPM will then examine the claims and make a final decision, which will be notified to the parties.

This, however, is not necessarily the end of the road. If the final decision of the OEPM is unfavorable to your claim, you may still appeal against this to the Contentious-Administrative courts within a period of 1 month from the publication of the result in the Official IP Bulletin.

It must be stressed that throughout the trademark opposition proceedings, legal clarity and coherence in your arguments are of utmost importance, whether arguing before the OEPM or the Contentious-Administrative courts. Additionally, if you are to convince a judge that the OEPM made a mistake, the legal arguments must be very strong. Unless you have a vast experience in IP law and trademark protection, then it is highly recommended to make use of a specialist IP lawyer.

Provisional Refusals Under the Madrid Protocol: Country by Country Guide – Brazil and Germany

By Moeller IP Team.

If you are looking to designate Brazil or Germany in your international trademark application, this article is perfect for you. Here, we shall cover the procedure relating to notification of provisional refusal by a pre-registered Brazilian or German TM holder who believes that your international trademark application would infringe on their pre-existing IP rights.

Here, we will go over the procedures to go against such a notification and fight to protect your IP in Brazil and Germany.

Provisional Refusals Brazil

Brazil recently joined the Madrid Protocol in 2019, making it one of the newest members of the Madrid Union. In the Brazilian legal framework, the key law to be aware of is the Law on Industrial Property (9,279/1996), and the national TM office is the Brazilian Patent and Trademark Office (BPTO).

It should be noted that due to the nature of Brazil’s accession to the Madrid Protocol, if you already have an international trademark then you will not be able to simply designate Brazil as a new territory in which their brand is protected, but instead you will have to file a separate international registration from the beginning through the WIPO or choose to file a national application through the BPTO.

Therefore, if you have manoeuvred this system and have submitted your international trademark application, then that’s the first obstacle over and done with.

Brazilian IP Gazette

Once the BPTO has received the application, it will be published in their national bulletin, the Brazilian IP Gazette. From this date, any third party may file an opposition against the application within 60 days. The notice of opposition will then be published in the Brazilian IP Gazette around 60-90 days after the filing of the opposition.

At this point, all applicants should be aware that, unlike other members of the Madrid Union, Brazil does not publish any notice of opposition through WIPO channels – they will only be published on the Brazilian IP Gazette. Therefore, all applicants should be aware of the need to monitor the updates on the Gazette throughout the duration of the application procedure – we offer this service free of charge with any international trademark application.

The trademark applicant then has 60 days from the date of the publication of the notice of opposition to reply and reinforce their claim. Once submitted, the BPTO will examine the entire application, including any oppositions and counter statements to oppositions, and will publish a decision within 12-18 months. This is unlike many signatories to the Madrid Protocol, given that the BPTO does not make independent decisions specifically regarding oppositions. They take the application as a whole, including oppositions, and carry out a full analysis of the trademark application.

If the final outcome is unfavourable, it is good to know that all BPTO decisions are subject to appeal. Any party to the proceedings may make an appeal to the President of the BPTO within 60 days of publication of the decision in the Gazette. The President will then look over the application once more and within 6-8 months will give a decision on the appeal. This is a final decision and puts an end to the administrative proceedings.

If you need help with a trademark application or any other IP matter in Brazil, we’d love to help you out.

Provisional Refusals Germany

Germany is one of the most popular countries in Europe for trademark applications and has a similar procedure for provisional refusals under the Madrid Protocol as many of its European neighbors. The relevant national law is the Trade Mark Act, and the national TM office is the German Patent and Trade Mark Office (DPMO).

German Trade Mark Journal

Once the application has been received by the DPMO, it will be published in the German Trade Mark Journal, from which date any preregistered TM holder will have 3 months to file an opposition (Form W 7202) and pay the corresponding fees – €250 plus €50 per extra opposing sign.

Once initiated, trademark opposition proceedings in Germany tend to be documentary proceedings consisting of one or two rounds of submissions from both parties, during which the opponent and applicant will make their claims, which if they are to have a strong chance of succeeding, must be well-structured and based on coherent legal arguments – these submissions ought to be redacted and revised by an experienced IP lawyer. Usually, there are no oral hearings at any stage of the opposition proceedings.

At the request of both parties, the DPMO will grant a cooling-off period, similar to the EUIPO in their provisional refusal proceedings, with a duration of 2 months in which the parties may attempt to come to an amicable settlement regarding their trademark dispute. If unsuccessful, the documentary rounds shall continue and the DPMO will give a decision within 12-18 months.

If the final decision of the DPMO ends up being unfavourable, it is still possible to make an appeal to the Federal Patent Court. Such an appeal must be filed in writing with the DPMO within 1 month of the publication of the decision. In this appeals process, a Board of Appeal shall be established that will dictate the proceedings.

The decision from this Board shall be final, unless in said final decision the Board allows for appeal on points of law. If you are able to make an appeal based on points of law, then you may have the chance to appeal to the Federal Court of Justice, however, this is under very limited circumstances – see Section 83 of the Trade Mark Act. Any decision from the Federal Court will be final and no further appeals would be permitted.

Due to the documentary nature of the German provisional refusal proceedings, it would be highly recommended to make good use of an experienced IP lawyer to assist you in the drafting of your submissions to the DPMO. If you have any doubts or would like assistance in any IP-related matter, let us know, and we can get the ball rolling right away.

Provisional Refusals Under the Madrid Protocol: Country by Country Guide – China and USA

By Moeller IP Team.

If you’re reading this article, you will have received a notification of provisional refusal by a pre-registered Chinese or American TM holder who thinks your international trademark application is infringing on their IP rights. Here, we will go over the existing procedures to go against such a notification and fight to protect your IP in China and the United States.

If you need help with your trademark we have a trademark attorney with years of experience who can help you.

Provisional Refusals | Pre-registered Chinese TM

The People’s Republic of China is not necessarily renowned for their protection of IP – in fact, more than 70% of all counterfeited goods in trade are estimated to come from China, which accounts for around 12.5% of their goods exported and 1.5% of their GDP. Nonetheless, the Chinese market is gigantic and is an obvious target for many growing companies. Fortunately, they are signatories to the Madrid Protocol and there are certain mechanisms to protect trademarks in China. The most relevant national law to be aware of is the Chinese Trademark Law, and the relevant national TM office is the Chinese National Intellectual Property Administration (CNIPA), or Chinese Trademark Office.

Notice of opposition

Regarding the procedure, once the international trademark application has been published in the WIPO International TM Gazette, any pre-existing trademark holder may file a notice of opposition within 3 months, starting from one month after the publication date. There will be a further 3-month period to submit relevant documentation.

Once the applicant has received the notification of provisional refusal, they then have 30 days to respond to the opposition. At this point, the applicant must appoint a local representative in order to respond to the opposition. The applicant will also have a 3-month period in order to submit all other documentation relevant to their claim.

It is of utmost importance to understand that the opposition and the response to the opposition shall be the official legal claims of both parties and shall be reviewed by the CNIPA once all documentation has been submitted. These claims should be well-drafted with a coherent structure and a strong legal basis if you are hoping to have the best chances possible to receive a favorable outcome from the Chinese Trademark Office.

We should also take note of the ex officio refusal by the Chinese Trademark Office itself, where they have 12 months to exercise their right of refusal (in some cases 18 months). In this scenario, the trademark applicant will have 15 days to respond to the notice from the date of receipt, where the application shall be returned to the adjudication board of the Chinese Trademark Office for a second review. The CNIPA will then have 9 months to review the application again and will respond to the applicant in writing, declaring their final decision.

If the applicant, either under ex officio provisional refusal or through refusal by opposition, receives a final decision that is unfavorable, they will have 30 days to appeal the decision of the Chinese Trademark Office to the national courts of China. Again, it cannot be understated, to convince a judge that the national trademark office made the wrong decision will require a strong legal argument, something which only experienced IP lawyers can be trusted to construct.

If you would like help relating to an IP matter in China, feel free to get in touch with us.

Provisional Refusals | Pre-registered US TM

Given that the USA is home to some of the largest companies in the world, as well as being the world’s largest economy, it would be no surprise to find a growing company looking to protect their IP in the United States. The key piece of legislation to be aware of is the Trademark Act, and the relevant TM office is the US Patents and Trademarks Office (USPTO).

Notice of Opposition 

Once the trademark application is received by the USPTO, and once provisionally approved by the Director, the application will be published in the Official Gazette of the USPTO. From that date, any pre-registered TM holders may file an opposition to the application within 30 days if they believe that the applicant’s new trademark would infringe on their own. This time period may be extended if requested in writing to the Director.

If this notice of opposition is accepted by the USPTO, they will notify the applicant and shall set up a Trademark Trial and Appeal Board in order to come to a final decision on the matter. The Board shall issue an institution order, which is a document that outlines the details of the opposition procedure. This shall be done electronically, and will typically set out a time frame of 40 days for the applicant to respond to the opposition, 6 months for discovery, and then the periods in which the parties can make their testimony – 30 days for the opponent, 30 days for the applicant, and 15 days for the opponent’s rebuttal.

In the applicant’s response to the opposition, they must clearly outline the legal basis for their claim as to why their trademark should be accepted. As stressed previously, it is essential that all arguments submitted to the Board must be based on strong, coherent legal claims – it would be highly recommended hiring an experienced IP lawyer for this.

Discovery period

Once the applicant has answered the opposition, the Discovery period begins, in which both parties may request and receive relevant information and documentation from the counterparty, including written interrogatories, document requests, depositions, and requests for admissions.

At the end of the discovery period, the final stages of the opposition proceedings shall begin. This entails the submission of briefs – mandatory for the opponent, optional (but recommended) for the applicant – which outline each party’s claims. If one of the parties requests an oral hearing, this shall be arranged, however, it should be noted that these hearing are of a summary nature – that is to say, no new evidence may be submitted, only a summary of both parties’ claims. It is common for judges to take advantage of these hearings to clarify aspects of the case that were not entirely clear in the briefs. Once finalized, the Board will make a decision regarding the admissibility of the international trademark application.

If unfavorable, either party may request a rehearing, reconsideration or modification of a decision within 1 month of the date of the decision. If unsuccessful, the losing party can still appeal to either the US Court of Appeals or it can request a brand-new trial in a District Court. A key difference between the two is the ability to introduce new evidence to the case – in the Court of Appeals, no new evidence or arguments may be submitted; in the District Courts, however, it is much more flexible and allows for the introduction of new evidence and arguments.

The US system for registering trademarks can oftentimes seem rather difficult, and just by looking at the law it can still seem unclear as to what path you should take. For any doubts, get in touch with us, and we would be happy to put your mind at ease.

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 to a notification of 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 Trademark 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 notification 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 notification of provisional refusal

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 notification of 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.

Differences according to the type of opposition

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

Provisional Refusal: 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.

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 Notice of Opposition Against an EU Trademark Application and What Can I Do About it?

By Moeller IP Team.

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 Notice of 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

Make a strong legal argument behind why your trademark application is acceptable 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 contact us right away.

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. China & USA Guide. Brazil & Germany Spain & France.

Replying to a provisional refusal

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. Contact us!