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!

WIPO: Madrid Information Notice – Change in the Amounts of the Individual Fee: Brazil

By Moeller IP Team.

As from July 18, 2020, the amounts of the individual fee payable in respect of Brazil will change. Those amounts will be:

• 75 Swiss francs (first part) and 135 Swiss francs (second part) for each class of goods or services, when designating Brazil in an international application or subsequently;
• 193 Swiss francs for each class of goods or services, when renewing an international registration in which Brazil has been designated. Where the payment is received within the period of grace, the fee will be 292 Swiss francs for each class of goods or services.

For further information, please refer to Information Notice No. 47/2020.

Moeller IP will monitor your international TMs in the Brazilian TM Gazette for free. Please do not hesitate to contact us at any time with any doubt or questions you may have at trademarks@moellerip.com

How to Register a Trademark in the EU: a 5 Step Guide and Other Practical Concerns in 2020

By Moeller IP Team.

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

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:

1. Trademark Search
2. File the EUIPO Trademark Application
3. Examination Period
4. Publication
5. 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.

1. 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.

2. 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.

How to Register an International Trademark: 3 Step Guide and other Practical Concerns in 2020

By Moeller IP Team.

Knowing how to register your international trademark is necessary if you operate internationally and want to protect your brand. It is the best way to ensure that the time you spent creating your brand image does not go to waste or copied by others. The protection of international trademarks is governed by the Madrid System, composed by the Madrid Agreement and the Madrid Protocol. By following the Madrid System, you can protect your IP across the 122 countries that currently agree to mutually protect each other’s nationals’ trademarks – these countries are known as the Madrid Union. In this article, you will find out how to register an International Trademark, the requirements for filing, the duration, and other practical concerns to be considered.

If you need help or advice in the process, our trademark attorney can help.

Requirements to register an International Trademark

The requirements for an international trademark are essentially the same as for national filings. In fact, to receive international protection of your brand, you must first go through one of the national Trademark Offices of a Contracting State to the Madrid System, as we will see later on. First though, a quick recap of what can be protected under this system:

• Logos
• Names
• Images
• Colours
• Patterns
• Shapes
• Packaging of goods
• Sounds
• Smells (with specific requirements which shall not be explored here. Find out more here.)

However, it should be noted that in order to file for international protection, you must be either:

1. A citizen of a Contracting State to the Madrid System
2. A legal entity resident in a Contracting State
3. A legal entity with a real and effective industrial or commercial establishment in a Contracting State

Scope and duration of IP protection

An International Trademark will protect your brand for 10 years. After this 10-year period, you can file for a renewal, details of which will be covered later in the section titled “Follow up: IP Monitoring and TM Renewal”.

The number of countries in which it will be protected will depend entirely on your filing and where you decide to invest resources in brand protection. You can always request to add more countries to the trademark at a later date through a Territorial Expansion Application, so don’t worry if you want to start small and increase protection over time. This will cost 300 Swiss francs (CHF) plus 100 CHF per additional country. There can also be a variable element to this fee. To be sure, check out WIPO’s Fee Calculator.

How can I apply for an International Trademark?

First and foremost, to register for a trademark internationally, you must apply to a national trademark office pertaining to a Contracting State. You do not apply directly to WIPO (World Intellectual Property Organization).

The registration procedure can be separated into 3 steps:

1. Apply to the appropriate National Trademark Office
2. Examination of trademark application by the WIPO
3. Examination of trademark application by National Trademark Office of each requested country

Step 1: Apply to the appropriate National Trademark Office

The first step of the process entails applying to the right National Trademark Office for you. This is relatively simple to find out through a quick Google search. Below is a list of a few of the national offices with links to their websites.

• UK: IPO (Intellectual Property Office)
• Germany: DPMA (Deutsches Patent- und Markenamt)
• France: INPI (Institut National de la Propriété Industrielle)
• Spain: OEPM (Oficina Española de Patentes y Marcas)
• Italy: UIBM (Ufficio Italiano Brevetti e Marchi)

In applying to this national office, you will have to fill in the Form MM2. Once filed, the national office will examine the application. If there are no defects to the filing, they will then pass your application to the WIPO for further examination at an international level. This will usually take up to 2 months.

Step 2: Examination of trademark application by the WIPO

Once approved by the national office, the WIPO will then take their turn to examine your application. This examination is mainly to ensure that there are no defects in the application and that you are a legitimate applicant that fulfills the requirements. Upon approval, it will be published in the WIPO’s International Trademark Gazette, and the application will then be forwarded to the national offices of every requested country.

Step 3: Examination of trademark application by the National Trademark Office of each requested country

The international trademark registration procedure essentially has the same effect as if you were to apply to register a national trademark in all of the countries’ requested. Therefore, at this stage, the relevant national trademark offices will examine your application for any faults and, importantly, any potential IP conflicts with already registered trademarks in that country.

Usually, an important part of the national procedure is to publish the application in their national gazette or bulletin and allow a time period for other trademark holders to voice their concerns. If there are any conflicts with pre-registered trademarks, the national office has one year to communicate a notification of provisional refusal – this time period can occasionally be extended to 18 months or longer.

If there is no notification of such a provisional refusal, the trademark is granted and your brand is now officially protected in that country. Congratulations!

Follow up: IP Monitoring and TM renewal

IP Monitoring

Now that you officially have a registered international trademark, you might feel like the job is over. That is unfortunately not the case. There are many companies and individuals out there who might want to copy your brand and use it for their own personal or commercial gain.

Therefore, to ensure that your hard work has not been for nothing, it is of utmost importance to establish an IP monitoring program. Fortunately, we have partnered with [insert partner’s name here with a link] so that you can rest easy knowing that you are protecting your trademark and your brand image.

TM Renewal

It is also essential to remember that your international trademark is only protected for 10 years. Once this time period has elapsed, you need to file for a renewal. The WIPO and the vast majority of national trademark offices do not send out automatic reminders, so you should either carefully manage this or hire a trustworthy IP lawyer to ensure that you don’t wake up to find that you have to start the procedure again.

Conclusion

Now that you know how to apply for an international trademark, protect your brand and monitor your IP, it should be noted that the actual process can take some time. Moreover, if there are mistakes in your application or a notification of provisional refusal is communicated to the WIPO or any national trademark office, that can further complicate matters and result in lengthy delays.

If you would feel safer hiring an attorney to take you through the whole procedure, you can contact us.

Brazilian Domain names and Trademarks Registered by Different Owners: Which One Should Prevail?

Registering a domain name that matches with the trademark is an established course of action for the protection of a company’s IP assets.

In fact, a domain name has the same function as a trademark in the online world: the domain becomes the virtual image of the business.

Sometimes, however, the same domain name and trademark may have been registered by two different owners. The issue is particularly relevant in Brazil, where cybersquatting has been on the rise for several years. But it can also happen that a company registers a domain name identical to a previously registered mark in good faith. As the Brazilian IP law does not regulate domain names, the issue has been tackled by Brazilian Civil Courts, which are still making clarity in a particularly entangled area.

The Legal Panorama: Domain Names in Brazil

Art. 5 of the Brazilian Constitution grants protection to industrial inventions, trademarks and business names but also to other distinctive signs – a category which is likely to include domain names.

Brazil, like many countries, has a “first-to-file” domain name registration policy. FAPESP, the São Paulo Research Foundation, is the organization responsible for registering domain names in Brazil. FAPESP enacted guidelines that prevent some names from being registered: vulgar expressions; words representing predefined terms related to the Internet such as the name “Internet” itself; words reserved for government agencies; and names that can mislead third parties, such as famous marks that have not been applied for by their rightful owners. Apart from these cases, FAPESP doesn’t examine domain name applications and has no authority to intervene in case of domain names identical to existing trademarks.

On the other hand, art.1 of the Resolution 8/2008 of the CGI, the Brazilian Internet Steering Committee, also establishes that it is forbidden to register a domain name that is likely to mislead third parties or that violates someone’s rights.

In a number of cases where the misleading intention was particularly clear, Brazilian civil courts ruled in favour of the trademark owner, taking a strong stance against cybersquatting. In other cases, even when the bad faith was not established, Courts ruled in favour of the trademark owner if the mark was notorious.  In the case Ayrton Senna Promoções e Empreendimentos Ltda. v. Laboratório Infantil Meu Cantinho S/C Ltda., the defendant registered the domain name “www.ayrtonsenna.com.br” to create a fan club to celebrate the famous Brazilian F1 pilot, with no apparent intent to exploit it commercially. The plaintiff opposed the registration on the basis of its trademark registration of the brand Ayrton Senna and on the notoriety of the name “Ayrton Senna”. The court ruled in favour of the plaintiff as the trademark was well-known.

In a more recent case, the Brazilian Supreme Court established that this protection does not extend to generic brands. In this case, the cosmetic brand Paixão – that means passion – opposed the registration of the domain paixao.com.br, a dating website. In this case, the court held that Paixão was not regarded by customers nor officially recognized by the Brazilian PTO as a well-known trademark; the areas of activity of the two companies were different; the mark Paixão was not a distinctive sign, and other trademark registrations containing the word “paixão” already existed. For these reasons, the court ruled against the plaintiff, upholding the defendant’s domain name.

Opposing a Trademark Registration in Argentina

According to data from the Argentine Patent Office (INPI) in 2016, there were 71.020 trademark applications and 14.211 trademark oppositions, around 20% of all applications. What’s the procedure for opposing a trademark registration in Argentina?

The Argentine Trademark Law 22362 establishes that every trademark application is followed by a formal examination carried out by the INPI. After the examination, the application is published in the Trademark Bulletin (Boletín de la Dirección Nacional de Marcas). After the publication, third parties have 30 days to oppose the trademark application if they think there may be a potential infringement of their intellectual property rights.

The Opposition Proceedings

Once an opposition is filed against a trademark application, the applicant is given a one-year term from the date he is officially notified of the opposition: within this term, the applicant has to obtain the withdrawal of the opposition through direct negotiations with the opponent, or file proceedings to the Argentine Federal Courts.

The difference with other legal systems is apparent: the INPI is neither allowed to decide on the merit of the opposition, nor can it provide advice to the parties. The opposition procedure takes place between the parties or can ultimately be referred to a Court, but it is never within the competence of the INPI.

Most of the oppositions are dealt and solved through amicable agreements – only a very little percentage reaches the trial stage. Agreements can follow informal, voluntary negotiations between the parties after which the applicant generally agrees to exclude some of the products or services from the trademark application. Within one year from the notification of the opposition, the  applicant should provide the INPI with evidence that an agreement has been reached with the opponent. In this case, the INPI will review the agreement between the parties. The INPI has the power to reject the agreement in case the trademarks are similar and may create customer confusion.

If the INPI deems the agreement valid, it will proceed with the next steps of the trademark registration.

It can also happen that amicable negotiations fail or are not pursued by the parties in the first place. In this case, the applicant can directly resort to Court proceedings. It is interesting to note, however, that in order to resort to any judicial action, the applicant must previously comply with a mandatory mediation proceeding. Mediation proceedings were introduced into the Argentine legal system in 1995 and are compulsory for most civil matters. The proceeding has to terminate within the term of one year from the notification of the opposition. This mediation seems a useless step, provided that the parties had the chance to resort to negotiation before. In reality, this mandatory mediation seems to be effective: when the opponent is summoned to a mediation hearing, the applicant signals that he or she is serious about going to trial, and substantial efforts are made to settle the case in this phase.

If the opposition is not withdrawn within the one-year term and the applicant does not start Court proceedings within the same term, the application is considered abandoned.

Regional trademark surveillance

Domain Names