Provisional Refusal

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Kerry Newcomb Trademark Attorney

So, you have filed your International Trade Mark Application under the Madrid Protocol – great!
But now you have received a Provisional Refusal – where to from here?

The securing of your International Registration from WIPO is not akin to securing a national registration such as, an Australian trade mark registration. That is your International Registration does not of itself confer any rights.  Rather, the International Bureau notifies each of the countries you designated; following which, each designated country will examine the designation in accordance with their national trade mark law. A Provisional Refusal may be issued, this is akin to an Examiner’s Report. Alternatively, if the examination is clear, a Statement of Grant of Protection may be issued in the country or countries you have designated, usually after an opposition period.

If you have received a Provisional Refusal, there may be formalities issues raised such as classification of goods and/or services to accord with the local Trade Marks Office Practice.  There may also have been citations raised i.e., earlier similar marks to your mark, which are currently blocking you securing protection of your trade mark in that designated country. There may also be registrability objections raised. Along will other local examination issues in the countries you have designated.

In most countries it is necessary to have a local attorney engage with the local National Trade Marks Office.  Once again, all is not lost if you have received a Provisional Refusal on a country you have designated, there may be avenues around these.  It is important to keep in mind that some countries such as, China have a very short time frame within which to respond to a Provisional Refusal.  Failing to respond by the deadline will result in your designation lapsing. Thus, after initially reviewing the Provisional Refusal, the next immediate step should be to contact an Attorney in the country, which has been designated to obtain an opinion on the likelihood of overcoming the issues raised in the Provisional Refusal and of course, the costs.  With more than twenty years, as a Trade Mark Attorney securing protection for my client’s overseas for their trademarks, I have several contacts around the world.    

Of course, if you would like help with a Provisional Refusal, in respect of one of the countries you have designated in your International Registration for your trade mark, please contact me.