Under the Madrid Protocol, filing for an international trademark application is made a piece of cake. A single application can be filed for two or more countries if members of the Madrid Protocol. Only two countries; Colombia and Mexico in Latin America (Brazil is heading to it) are members of the Protocol. After the procedure of the protocol, the trademark gets filed after the examination of the application. This procedure has to be replied by each trademark office in each country. If everything goes by plan the application gets accepted and filed. Or the examination can result in rejection of the application.
A notification of provisional refusal forms a declaration 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 protection cannot be granted in the contracting party because an opposition has been filed (“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 marks as a trademark, the indication of quality or quantity in the trademark, marks that carry any deceiving names, that offence morality or that are contrary to honest practices
- Relative grounds may exist when the trademark that is applied for is in conflict with an earlier mark.
A notification of provisional refusal must relate to one international registration 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 may be done by electronic means.
If a trademark office issued a provisional refusal of an application, a trademark specialist in Colombia or Mexico will need to be instructed to deal with the rejection before the local office. When a mark is subject of refusal, measures should be taken quickly. This refusal can be caused because of several reasons, it is important to find out how and when to respond to the decision of refusal. There comes the trademark specialist to the rescue. Because it would be a mistake to assume that trademark office practices and requirements are the same in every country.
A request for reexamination can be applied for by the proprietor of the mark before the office of the contracting party that has notified the refusal. Always consult with a local agent to be certain that an application conforms to local laws and practices. B&R could help you to overcome these issues and help you to register your trademarks in the fastest possible way.
WIPO: Refusal of an international registration