► Provisional refusal EU trademark: Cheap flat fee for handling complaint of international registration of a trademark application in the European Union ► European Trademark Lawyer! ✔

In case of international trademark applications with designation of the European Union (application of a EU trademark based on an IR trademark from the World Intellectual Property Organization – WIPO) there is regularly a provisional refusal / objection issued by the European Trademark Office in Alicante (European Union Intellectual Property Office / EUIPO) and the notification that protection of the mentioned mark is provisionally refused for the European Union due to an objection during the examination stage (WIPO irregularity notification (EU)). We offer a cheap flat fee (fixed price) for handling problems like the complaint of the international registration of a trademark application in the European Union by replying to it and our German Lawyer and German Patent Attorney (European Patent, Trademark and Design Attorney) assist you in such matters as “European Trademark Lawyer” / “Trademark Attorney in Europe”.

In the last years, we’ve assisted many colleagues and Intellectual Property Lawyers / IP Lawyers, Trademark Attorneys / Trademark Lawyers, Trademark Agents and Patent Attorneys as well as a lot of companies and individuals from around the world and successfully helped them to overcome the provisional refusal of their EU trademark application (objection of European Union trademark) as part of an international trademark. We offer a low flat fee price to reply to the complaint of the international registration of a trademark application in the European Union (filing a response to provisional refusals of the EU Trademark Office).

1. Opposition against the European Union trademark

The provisional refusal is based on the fact that an opposition has been filed against the international registration designating the European Union and the main grounds for opposition are as follows:

• Conflict with an earlier mark because of likelihood of confusion (Article 8 (1)(b) EUTMR)
• Conflict with an earlier identical or similar trade mark registered for goods or services which are not similar to those for which the international registration is registered, where the earlier mark has a reputation and where the use without due cause of the international registration would take unfair advantage of or be detrimental to, the distinctive character or the repute of the earlier trade mark (Article 8 (5) EUTMR)

The notification will set a time limit of two months for the holder to appoint a representative within the meaning of Article 120 (1) EUTMR. Protection of the international registration designating the European Union will be refused in its entirety if the holder fails to appoint a representative within this time limit. In addition, the notification will open an (extendable) cooling-off period, a further period for the opponent to substantiate the opposition and a period for the holder of the international registration to submit observations. Against this background, an EUIPO representative like our German Patent and Intellectual Property Law Firm should be appointed to avoid a loss of right based on this aspect alone.

2. Absolute grounds of refusal

There are various absolute grounds of refusal and the trademark examiners at the EUIPO e.g. issue the following notifications:

• Lack of distinctiveness: “The sign you have applied for is ineligible for registration under Article 7 (1)(b) and Article 7 (2) EUTMR because it is devoid of any distinctive character for the goods / services for which protection is sought”
• Descriptive character: “The sign you have applied for is ineligible for registration under Article 7 (1)(c) and Article 7 (2) EUTMR because it describes certain characteristics of the goods / services for which protection is sought”
• Deceptiveness: “The sign you have applied for is ineligible for registration under Article 7 (1)(g) and Article 7 (2) EUTMR because it is likely to deceive consumers when used in relation to the goods for which protection is sought”
• …

3. Inacceptable wording of the list of goods / services

The list of goods and services does not entirely comply with Article 33 (2) EUTMR and there is a need for clarity and precision (in case a term does not give a clear indication of what goods and services are covered). This happens e.g. if retail services or similar services in class 35, like wholesale services, mail order services or e-commerce services are claimed in a general way, and they have to be specified. Such terms are only acceptable where the type of goods to be sold or brought together for the benefit of others is indicated with sufficient clarity and precision.

Also some trademarked terms are not acceptable in the classification of the goods and services and it is necessary to replace this expression with a generic term. (Attention: the proposed clarified terms should always fall within the same class as the original wording of the International Register.)

The holder of the international registration is obliged to be represented before the European Union Intellectual Property Office (EUIPO) by a legal practicioner or professional representative that is entitled to represent third parties before the EUIPO (Articles 119 (2) and 120 (1) EUTMR). Protection of the international registration for the European Union will be refused in whole if a representative is not appointed within the time limit indicated on the letter of the provisional refusal.

 In case you’ve received a provisional refusal of your International trademark application in the European Union issued by the European Union Trademark Office (e.g. based on an opposition against an EU trademark), feel free to revert to us and forward us the complaint of the EUIPO (European Union Intellectual Property Office), so that we can send you our quotation and a free general assessment in regard to chances to overcome the refusal for this trademark matter to hopefully get the trademark registration in the European Union / on a EU level.