Overcoming provisional refusals in trademark registration for international applications.
The ratification by the Republic of Uzbekistan of the Protocol to the Madrid Agreement Concerning the International Registration of Marks provides foreign applicants and right holders with significant conveniences in the protection of trademarks, as evidenced by the annually increasing number of international applications extending to the territory of the Republic of Uzbekistan.
Undoubtedly, filing a single application with the WIPO International Bureau in one language and paying a single fee in respect of different countries has a number of advantages for applicants, including both economic benefits and a significant reduction in time costs for conducting application proceedings in various countries of the world.
However, in certain cases, while an international application is at the examination stage conducted by the Intellectual Property Agency of the Republic of Uzbekistan (hereinafter referred to as the IPA of the RUz), foreign applicants may encounter a number of procedural difficulties, expressed in the direction by the registering authority – the IPA of the RUz – of notifications of provisional refusal to register the claimed designation as a trademark.
There are many reasons on the basis of which a notification of provisional refusal may be sent by the IPA of the RUz; however, as our practice shows, the most common of them are the following:
- Lack of distinctiveness of the designation claimed for registration as a trademark;
- Arguments regarding the need to adjust the list of goods (services) for which trademark protection is sought;
- Opposition of a confusingly similar trademark with an earlier priority.
Of course, each case of provisional refusal to register a trademark must be considered individually, since its proper overcoming is possible only by developing a strategy applicable exclusively to the current situation; however, in this article, we want to provide universal recommendations that can be used by applicants in the vast majority of cases.
1. Lack of distinctiveness
One of the easiest ways to prove the distinctiveness of a designation claimed for registration is to submit information to the IPA of the RUz confirming that the claimed designation has already acquired distinctiveness as a result of its use prior to the filing date of the application.
First of all, this can be done by sending a reasoned response to the provisional refusal, indicating the existing volumes of production and sales of goods marked with the claimed designation. Of course, this information can only be provided if it does not constitute information that is valuable due to its unknown nature to third parties.
It is also of significant importance to inform the IPA of the RUz about the territory of sale of the goods and the duration of use of the claimed designation for marking the goods (services) indicated in the application.
Along with the above, compelling arguments may also include information on the presence of publications in national media, the results of public opinion polls on the degree of recognition of the designation and associations by consumers with its manufacturer, etc.
2. Need to adjust the list of goods (services)
Amendment or limitation of the list of goods/services can be carried out by the applicant only by filing a corresponding statement using form "mm6" with the WIPO International Bureau.
In the event that the provisional refusal is based on a partial refusal in one of the Nice Classification classes, and the applicant has no objections to this partial refusal, filing the above-mentioned statement is not mandatory.
For this international registration, a final decision confirming the decision on provisional refusal will be made by the IPA of the RUz. As a rule, the period for issuing final decisions is 8 months from the date of the decision on provisional refusal. In order to reduce this period, the applicant must submit a response to the IPA of the RUz agreeing with the sent provisional refusal. In this case, the IPA of the RUz will make a decision and send it to the WIPO International Bureau after considering the applicant's response, within approximately 1 month.
3. Opposition of a trademark with an earlier priority
In cases of opposition by the IPA of the RUz of a trademark with an earlier priority, the applicant must, in a response objection to the provisional refusal, provide reasoned grounds for the absence of confusing similarity with the opposed mark, or provide a letter of consent for trademark registration from the right holder of the opposed mark.
The requirements for drafting a letter of consent are detailed by current legislation, and failure to comply with them entails the possibility of declaring this letter invalid.
These requirements include:
- Drafting the letter on the letterhead of the right holder;
- Indication of the full name of the trademark owner giving consent, with the indication of their exact address;
- Full name of the person in respect of whom consent is given, with the indication of their address;
- Signature of the right holder of the similar trademark with the indication of the position and surname of the person who signed this document;
- Presence of an image of the trademark whose right holder is issuing the consent;
- Image of the claimed designation in respect of which consent is issued;
- Indication of the list of goods and/or services in respect of which consent is issued;
- Date of issuance of the letter of consent.
Deadline for responding to the provisional refusal:
In a number of countries, the deadlines for providing a response to a provisional refusal are calculated from the moment the corresponding Notification is received by the applicant.
In Uzbekistan, this period is calculated somewhat differently, namely, from the moment the examination department of the IPA of the RUz makes a decision on provisional refusal, which is sent to the applicant in the form of a special Notification named "Notification about provisional refusal of protection".
The deadline for making the decision on provisional refusal is indicated in paragraph IX of the Notification.
The conditions for submitting responses to decisions with provisional refusal regarding international registrations filed with an extension to Uzbekistan are set out in paragraph VIII of the sent Notification. These conditions include:
- Submission of a response within 6 months from the date of the decision.
- The need to submit a response to the Intellectual Property Agency of the Republic of Uzbekistan.
- Responses to the provisional refusal must be signed and filed by Patent Attorneys of the Republic of Uzbekistan.
Extension of the deadline for responding to the provisional refusal:
The deadline for submitting a response to the provisional refusal may be extended by the IPA of the RUz, at the request of the applicant, for an additional six months beyond the established six-month period. A condition for the possibility of extending this period is the application of the applicant and the payment of the corresponding state fee. The amount of the fee is approved by the IPA of the RUz Declaration No. 12-06-15 on price caps (tariffs), for extending the deadline for responding to a notification of provisional refusal to grant legal protection in the Republic of Uzbekistan to a trademark registered by the WIPO International Bureau in accordance with the Protocol to the Madrid Agreement, and for each month of extension is – 84 US dollars.
Additional free information on the possibilities of overcoming provisional refusals to register a trademark by the IPA of the RUz can be obtained by sending a request to the email address Info@legalmaxlaw.com
Lola Islamova
Patent Attorney of the Republic of Uzbekistan