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WIPO Provisional Refusals and How to Overcome Them.

WIPO Provisional Refusals

Content:

  1. What is a WIPO or Madrid Provisional Refusal (also known as a Full Provisional Refusal and Partial Provisional Refusal).
  2. How to respond and overcome WIPO provisional refusals.
    1. Full provisional refusals
      1. Likelihood of confusion
      2. Descriptive, misleading, misdescriptive, unregistrable
      3. Oppositions
      4. Correct description
    2. Partial provisional refusals
  3. FAQ

🛑 1. What is a WIPO or Madrid Provisional TM Refusal (also known as a Full Provisional Refusal and Partial Provisional Refusal).

The WIPO is an organization that is behind the Madrid Protocol (known before as the Madrid System). 

When you file a WIPO trademark (that’s the same as a Madrid Trademark or sometimes it's called an international trademark), what you do is ask the WIPO to send a copy of your application to each country you paid for. When the trademark application is received in a country, the local Trademark Office starts a local examination process, similar to the standard one you have when filing a trademark manually. 

If everything goes well, your international mark is registered and they will send a notification within 18 months to the WIPO that your trademark is registered. But sometimes, something might go wrong. And that’s when you receive an international trademark refusal.

<Dramatic music playing>

Hello, that’s Vlad from Bonamark.com and today we will tell you more about responding to provisional WIPO refusals. Please disregard my attempts to make this text more entertaining, there is no possible way to make refusals received from the World Intellectual Property Organization less boring. 

  1. Full Provisional WIPO Trademark Refusal. Oh no, that’s not good. This means that your international trademark has been refused in the country which sent you the notification. Completely. Entirely. But NOT irreversibly. How to respond and overcome WIPO provisional refusals.
  2. Partial Provisional WIPO Trademark Refusal. This one is similar to the previous one. But not as scary. This means that some PART of your international trademark (you’ve already guessed what PARTially stands for, right?) was refused. The part might be some items in your description or some classes. If you don’t respond, the remaining part of your WIPO mark will get registered. How to overcome Partial provisional refusals.

TMO stands for a Trademark Office, a governmental organization handling IP (Intellectual Property) such as patents, trademarks, copyrights registration  in a particular country. They are in charge of analyzing if your mark can be registered in this particular country. 

WIPO and Madrid Trademarks Examination Process

* Provided that the response to the WIPO objection is accepted, at least partially. 

❓2. How to respond and overcome WIPO provisional trademark refusals.

Well, this depends. But in 90% of cases you will NEED a local attorney to represent you before the local Trademark Office. This means that you will require to contact local attorneys, to compare the prices to respond, get a list of documents to prepare and certify. Or you can contact us and we will do this for you.

The price of responding will depend on the country and your attorney who handles this case.

2.1 Full provisional WIPO trademark refusals:

This means that your international trademark has been refused in the country which sent you the notification. Completely. Entirely. But NOT irreversibly. 

2.1.1 Likelihood of confusion or a  refusal due to similar trademarks. That’s a tough one.

This means that there are similar trademarks. Those similar marks block your international trademark in this country. This is a difficult case as you will need to convince the examiner why your trademark will not be confused with the prior similar mark. Responding to such an objection will cost somewhere from 500 to 1200 USD depending on the country. Obviously, if you wish to avoid such objections you can order our Trademark Study before filing a mark. 

2.1.2 Descriptive, misleading, misdescriptive, unregistrable for any other reason.

The probability to overcome such an objection will depend on the type of the objection and the country where the objection was issued. Responding to such an objection will cost somewhere from 500 to 800 USD depending on the country.

2.1.3 Oppositions

This happens when someone really doesn’t want your trademark to register. This can get really expensive. Defending a mark will cost from 600 to 2000 USD in regular cases and there is no upper limit.

2.1.4 Correct description, clarify the nature of the services/products, correct the legal form of the applicant, and other technical objections. Those are fairly easy to respond to and it might cost from US$200 to US$400 depending on the complexity and time required.

2.2 WIPO Partial provisional refusals of international trademarks:

2.2.1 They are very similar to the full WIPO refusals above, but only affect some class or some items within a class. For example, an objection due to a similar mark affects only one class out of 2. Usually, if you just ignore them, your international mark will be partially refused and will register in other unaffected classes or for other unaffected services.

🙋‍♂️ 3. FAQ 

3.1 Q: Do I have to respond to WIPO (Madrid Protocol) provisional refusals?

      A: Yes, if you wish to get your mark registered in this country. When you receive a partial WIPO refusal you can ignore it as long as it affects products/classes not important to you. However, it’s always a good idea to review it with an attorney to make sure that you understand its content correctly.

3.2 Q: If I apply for 10 countries and get a refusal in one country, what will happen with other countries?

      A: They will be examined independently, the processes are not related. If you get into trouble in one country, the other applications will not be affected. This does not apply to your “base” trademark.

3.3 Q: What if my base (first) trademark in my home country will get cancelled?

      A: All your WIPO international applications in all the countries will be automatically cancelled.

3.4 Q: What are the documents to respond to WIPO or Madrid provisional refusals?

      A: A local attorney will take over your WIPO application. Documents required will depend on the country, however usually a Power of Attorney will be required for this. 

3.5 Q: How will I learn about the refusal?

      A: The Trademark Office of the country that issued the objection will notify the WIPO and they will forward the document to you or your representative.

3.6 Q; What is the language of the objection?

      A: It can be any language of WIPO: English or French.

3.7 Q: What if someone files the same International trademark through WIPO but will designate different countries?

      A: Your registered international WIPO mark is active ONLY in the countries it was registered or filed. It's not protected in OTHER countries. So if someone files the same mark through WIPO but in other countries, your international marks will not help.

You can find more information regarding the WIPO in this link: Pros and Cons of the Madrid Agreement (WIPO)
 

Author: Vladimir Isaeff, 1000+ successful international trademark cases, 7 years of experience in Intellectual Property. 

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