International Trademark: Provisional Refusal in Europe by EUIPO (Union Trademark) – Experienced EU Trademark Lawyer helps!

When International Trademarks with designation the European Union (Union Trademarks) are filed, the European Union Intellectual Property Office (EUIPO) in Alicante often issues notifications of ex officio (total or partial) provisional refusals of protection (according to Article 5 of the Madrid Protocol, Rule 17(1) and (2) of the Common Regulations under the Madrid Agreement and Protocol, and Rule 113 EUTMIR).

► Feel free to contact us by email or phone (without obligation) to find out how we can help you!

These refusals of a European Union trademark / EU trademark are based on the following reasons:

  • The trademark is seen as descriptive (“descriptiveness”) and/or lacks a distinctive character and is therefore not eligible for registration under Article 7 (1)(b) and (c) EUTMR and Article 7 (2) EUTMR for all or parts of the goods and services covered by the designation of the European Union
  • A conflict with an earlier mark because of similarity of the goods and services and similarity of the marks concerned, and likelihood of confusion (Article 8 (1), (2) EUTMR) and an opposition has been filed by a third party based on a national trademark or a Union trademark (EM)
  • The list of goods and services does not entirely comply with Article 28 (2) EUTMR e.g. because the words “including”, “in particular”, “for example”, “featuring” or “such as” are used instead of the more precise words “namely” or “being”
  • Terms are used which are seen as imprecise and have to be further clarified like “(online) retail store services” instead of specifying the offered services

In case of a refusal the holder of the international registration is obliged to be represented before the EUIPO by a legal practitioner or a professional representative that is entitled to represent third parties before the EUIPO (e.g. a German Lawyer or Trademark and Design Attorney). If a representative is not appointed within the time limit of two months (and no grounds to overcome the refusing protection are presented), the EUIPO will render a decision in which it refuses the protection in whole or in part.

Our experienced German Intellectual Property Law Firm with Patent Attorney (European Trademark and Design Attorney) and German Lawyer (Certified IP Attorney) (“EU Trademark Lawyers” / “EU Trademark Attorneys”) is e.g. specialized in handling these types of office actions (provisional refusals) of the EUIPO.

► Feel free to contact us by email or phone (without obligation) to find out how we can help you!

We also offer fixed prices (flat fees) depending on the expected effort. Please contact us if there are questions concerning a potential strategy to overcome the refusal or if you need an estimate.

Simply send an email with the trademark number (together with the provisional refusal) to us, so that we can check your matter and send you our offer for dealing with the provisional refusal of your international trademark designating the European Union.

Inquiries from foreign colleagues as well as from direct clients are welcome.

► Feel free to contact us by email or phone (without obligation) to find out how we can help you!