Monday 11 November 2013

When Partial means Total : Madrid Trade Mark Minefields

WIPO in all sizes
This is a request for information from the world of Trade Mark Agents who deal with International
Designations under the Madrid Protocol.

WIPO has recently updated its website and this includes the  Madrid System Pages. I might have looked for the answer in the Applicant's Guide which is hard to find so writing this blog serves as a good place to leave that bookmark for me and you. However this query is not answered there. It concerns the response of national offices to a partial refusal of protection notified to the IB and to which the Applicant decides to file no response.

In the UK, the application proceeds to advertisement and (subject to no opposition) protection for that part of the specification for which there is no objection. That is set out in the IPO Manual  check page 20. It seems sensible and in conformity with the principles of the Madrid system. However the UK does not examine on relative grounds so maybe there are not many partial provisional refusals. Indeed I was rather pleased to see that they suggest their examiners call WIPO with any translation issues before making a refusal on a translated specification issue.

How many other countries follow this pragmatic approach. I need a table that sets it out because many users of the Madrid system are not prepared for the downstream costs and want to take what they can get for their not inconsiderable up front investment.

In Korea and Japan they expect you to make amendments to remove the goods they don't like (and there seem to be rather a lot of local preferences), but then their office actions say so clearly. It is still a "make work for local representatives" policy but you can pay CHF175 to WIPO and make the limitation direct even for a single territory.

Just at the moment I want to know the answer for Russia.

I can tell you that Israel are amongst those who say nothing but turn a partial refusal to a total one if you don't pay your way with the local profession.

If I were to go to Geneva for their latest Seminar on November 28th and 29th I might (possibly) get the answer before 6pm on day 1. On the other hand we could publish it here for the common good. Add a comment about your national practice or any territory where you have experience.

Addition: this link takes you to WIPO's country by country pages where you can see what they think they will do as designated offices


  1. Put me on the side of those who would not consider filing a Trade Mark Application in Russia aave through local Attorneys. Turn this the other way round - were WIPO to provide better information in the context you describe - maybe I'd begin to change my thinking re: Russia (and other countries ?). Good luck !

  2. I came across a US Provisional refusal yesterday. Only a portion of the specification was objected to and the Office Action clearly said that failing to respond would result in the deletion of the 'offending' goods and acceptance of the remainder. So there's the answer for the United States, but then if you received such a Provisional Refusal then this would be clear.

    WIPO has collated a lot of information together although I accept more would be helpful. However, perhaps it is not practical to have all this information on their website, particularly as things can be ever-changing. They may be better served in asking Offices to improve the clarity of their Provisional Refusals.

    Perhaps interestingly, filing an IR through the UK to cover Russia - and Russia only at this too - will probably be cheaper than filing nationally (it can depend on who your Russian agents are, naturally). Provisional refusals are not uncommon in Russia but then I'd also wager that the majority of IR designations do not receive them. If you receive one then responding could cost what you'd need to spend in registration fees nationally anyway. Food for thought in the International vs National debate.