Under the Madrid Protocol, filing for an international trademark application is very simple. A single application can be filed for two or more countries if members of the Madrid Protocol. Only four Latin American countries are Protocol Members: Brazil, Colombia, Cuba, and Mexico. After starting the international procedure, the trademark gets filed in each designated country for a full examination of the application. Each national trademark office will then look into detail to determine if the trademark application complies with local requirements. If everything goes smoothly, the application gets accepted and registered. But this is not always the case; a large number of the examination can result in rejection or refusal of the trademark application.
A notification of provisional refusal forms is an abstract of the refusal decision stating the grounds on which the particular trademark office decides that protection cannot be granted in the contracting party (“ex officio provisional refusal”) or a declaration that registration cannot be awarded in that country because a third party has filed an opposition (“provisional refusal based on an opposition”) or both.
The grounds of the refusal may be absolute or relative:
- Absolute grounds include:
- the lack of any distinctive character of the mark,
- the inclusion of generic signs as a trademark,
- the indication of quality or quantity in the brand, marks that carry any deceiving names,
- that the sign is against morality or that is contrary to honest practices.
- Relative grounds may exist when the trademark conflicts with an earlier registered trademark.
A notification of provisional refusal must relate to one international registration number and must be dated and signed by the trademark office making it. Refusal of registration of a trademark must be provided in writing, in three languages or English, Spanish or French, which is done most of the time electronically.
If a trademark office issued a provisional refusal of an application, one of our trademark lawyers in Brazil, Colombia or Mexico would need to be instructed to deal with the rejection before the local office. The time to respond to the denial is limited, so it is important to find out how and when to respond. It is important to appoint a trademark specialist to the rescue who knows the local practices and requirements.
A request for reexamination can be applied for by the proprietor of the mark before the contracting party’s office that has notified the refusal. Always consult with a local agent to be sure that an application conforms to local laws and practices. BR could help you overcome these issues and register your trademarks in the fastest possible way.
WIPO: Refusal of an international registration