World Intellectual Property Organization

Refusal of an international registration


I have received a refusal from one of the Contracting Parties in which I applied for protection of my mark. What must I do now?

The procedure following the notification of a refusal does not involve the International Bureau. You should study the refusal document carefully in order to see how and when you should respond and then deal with the Office of the Contracting Party that has notified the refusal. It would probably be advisable to consult with an intellectual property specialist. In some countries the assistance of a local agent is mandatory.

What are the time limits for an Office of a designated Contracting Party to issue a refusal?

According to the Madrid Agreement, the Office of a designated Contracting Party must communicate its notification of refusal within one year from the date on which it was notified of the international registration by the International Bureau. In principle, the same refusal period also applies under the Madrid Protocol. However, in certain limited circumstances, Contracting Parties to the Madrid Protocol can opt to extend the refusal period to 18 months, or even longer. Contracting Parties which have made this declaration.

What may be grounds for refusal?

Generally, there are absolute grounds and/or relative grounds for refusal.

Absolute grounds are generally the following:

  • marks devoid of any distinctive character;
  • generic marks (for example, the word “phone” filed as a trademark for mobile phones);
  • descriptive marks that indicate the kind, quality, quantity, purpose, value, place of origin of goods or services (for example, the word “sweet” as a mark for candies or confectionery);
  • marks that are likely to deceive consumers;
  • marks considered to be contrary to public order or morality;
  • marks that are contrary to honest practices in industrial or commercial matters.

Relative grounds may exist when the trademark that is applied for is in conflict with an earlier mark.

I have received a refusal in a language I do not understand

The rules of the Madrid system state that any communication concerning an international registration must be in English, French or Spanish, the language of the communication being at the option of the holder but also of the Office issuing the notification. Therefore, the accompanying letter issued by the International Bureau forwarding the notification is in the language in which the holder wishes to receive the communication from the International Bureau while the notification itself is in the language chosen by the Office.

I have received a refusal that includes some data not in English, French or Spanish

The notification itself of the refusal is always in one of the languages of the Madrid system (i.e., English, French or Spanish). However, if the refusal refers to an earlier conflicting mark, then the list of goods and services of that earlier mark may be communicated to you in the language of said earlier mark.

Can you send me a translation of the refusal?

The International Bureau does not supply translations of refusals.

I have received a refusal that states that the list of goods and services is too broad or vague. What can I do?

You can limit the list of goods and services. If you agree to limit it, there are two options:

  • either you contact the Office which has issued the refusal, in order to discuss with that Office the best way to resolve the refusal;
  • or you file with the International Bureau a request for limitation of the list of goods and services covered by the international registration. The request for a limitation in respect of all or some of the designated Contracting Parties must be presented to the International Bureau on form MM6, by the recorded holder or by the Office of the Contracting Party of the holder.

In a situation such as this, it is generally advisable to consult with an intellectual property specialist.

In order to overcome a provisional refusal, can I amend or widen the list to include other goods and services that were not previously included?

No. The list of goods and services may be narrower than the list in the basic registration or application upon which the international registration is based, but it may not be broader or contain different goods and services. This does not mean that exactly the same terms must be used; they must however be equivalent to, or fall within the scope of, those used in the basic registration or application.

The refusal time period has expired and I have not received any notification of refusal from the Office of a designated Contracting Party. What does that mean?

If no notification of refusal has been communicated to the International Bureau by an Office of a designated Contracting Party within the refusal time period, then the mark is considered protected in that Contracting Party for all the goods and/or services covered by the international registration.

Is a designated Contracting Party obliged to issue a certificate or a statement of grant of protection when it decides that it is not going to refuse protection?

There is no obligation to issue a statement of grant of protection. See Offices issuing grants of protection.

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