Madrid Protocol: A Guide to Trademark Provisional Refusal

Madrid Protocol offers a centralised system for registering your trademark in more than 125 countries cost-effectively. However, applicants can’t sit complacent after filing their trademark applications through the Madrid Protocol route.  After getting approval from the World Intellectual Property Organisation (WIPO), you need to wait for approval from the National IP offices of all the designated contracting parties. The procedure can be complex as any Designated Country can issue a provisional refusal on your international trademark application.

It is advisable to consult with trademark agents in the UAE to navigate intricate processes such as a provisional refusal under the Madrid Protocol. We will discuss provisional refusal in detail so that you can deal with it efficiently. Keep reading to more about provisional refusals under the Madrid Protocol:

Madrid Protocol: What is a Provisional Refusal?

When you file an international trademark application, it will be initially approved by the WIPO. The WIPO will then forward the notification to all national trademark offices of the Designated Contracting Parties of the Madrid Protocol. The national trademark offices of the Designated Contracting Parties have 12 to 18 months to grant or refuse the trademark protection. In some cases, the national trademark office may send a Notification of Provisional Refusal to the WIPO.

A Provisional Refusal Is Not a Final Refusal

You must note that the provisional refusal sent by the national IP offices is not a final decision. In the provisional refusal, the IP office is required to mention the reasons why your application is likely to get refused. The reason could be either a negative examination by the Office or an opposition claim raised by a third party. If opposition is a reason for provisional refusal of an international application, it could be most likely from a local company claiming that your proposed mark is confusingly similar or identical to their registered trademark. A provisional refusal by the opposition is different from an ex officio refusal, which happens when the national IP office finds discrepancies in your application and decides to refuse protection.

How Can I Get Notified about the Provisional Refusal?

As per the Madrid Protocol, the office of the Designated Contracting Party is required to notify the applicant about the provisional refusal. The notification of provisional refusal will contain the following important information:

• The grounds for refusal
• The time limit for requesting a review or appeal
• Authority to which you must request a review or appeal
• Whether or not the assistance of a local representative is mandatory

Time Limits for Issuing Provisional Refusals

As per the Madrid Protocol, the trademark office of a Designated Contracting Party is required to send the provisional refusal notification within one year from the date on which it was notified of the international registration or subsequent designation by WIPO. In some rare cases, the Contracting Parties may extend the refusal period to 18 months, or longer. For further information on the applicable time limits, consult with the best trademark agents in the UAE.

How Can I Reply to a Provisional Refusal?

Applicants reply to a provisional refusal to convince the national office that their trademark is sufficiently different from an already existing one in order to be granted protection in the Designated Country. You need to have a strong argument and a comprehensive knowledge of the local trademark law of the country to effectively convince the trademark office.

What Is the Role of WIPO in Provisional Refusal Follow-Ups?

The trademark office of the relevant Designated Contracting Party is responsible for determining the procedure you need to undertake after receiving the notification of a provisional refusal of protection. The procedure must be carried out directly between the holder and the Office and WIPO has no involvement in the process.

What May Happen After The Appeal?

If a National IP Office accepts your request for review, it will most likely compare your trademark application with an already existing trademark registered nationally in that country. It may take months for the process to come to an end but it may also depend on the local trademark law and standard procedures followed by that particular country. For a successful review, you need to be aware of the specific country’s provisional refusal rules and procedures.

Register an International Trademark through Trademark Agents in the UAE

It can be quite concerning for a brand owner to receive a provisional refusal after navigating all the requirements to apply for a trademark through the Madrid Protocol of international trademark registration. However, you can ace it gracefully with the help of trademark agents in the UAE such as Jitendra Intellectual Property (JIP). JIP is one of the most experienced IP firms in the UAE that can help you in safeguarding your valuable trademarks. JIP’s trademark services in Dubai include trademark registration, trademark assignment, trademark search, trademark watch etc.