Guide to the International Registration of Marks

Part B: Chapter II

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CHAPTER II: THE INTERNATIONAL PROCEDURE

Grounds for Refusal
Statement of Grant of Protection
Time Limits for Refusal

Summary

Procedure for Refusal of Protection

Notification of Refusal of Protection

Contents of the Notification
Additional Contents of the Notification when Provisional Refusal Based on Opposition
Recording and Publication of the Provisional Refusal: Transmittal to the Holder
Language of the Notification of Provisional Refusal

Irregular Notifications of Provisional Refusal
Procedure Following Notification of Refusal

Confirmation or Withdrawal of Provisional Refusal

[Also in PART B, CHAPTER II:

Refusal of Protection

Grounds for Refusal

Article 5(1)	33.01 Each designated Contracting Party has the right to refuse the protection of the international registration in its territory. Such refusal may only be based on the grounds which would apply, under Article 6quinquies(B) of the Paris Convention, in the case of a mark deposited directly with the Office which notifies the refusal.
	33.02 Strictly speaking, Article 6quinquies of the Paris Convention applies only where the mark concerned is registered in its country of origin. This is necessarily the case where the international registration is based on a registration (as must always be so where the designation of the Contracting Party concerned is governed by the Agreement). In principle, therefore, where an international registration is based on an application in the country of origin, an Office would be entitled to refuse protection on grounds other than those mentioned in Article 6quinquies. There are, however, good reasons for not following that course. Firstly, having such a dual regime would be generally inconvenient, both for the Office and the holder. Secondly, one reason why Article 6quinquies applies only where the mark is actually registered in the country of origin is in order to prevent the benefits of the provision being enjoyed by marks which would not be eligible for protection in that country. If, however, the mark is in due course held by the Office of origin not to be eligible for protection (or to be eligible for protection only for a narrower range of goods and services), then the Office of origin will request that a corresponding cancellation be made of the international registration (see later paragraphs B.II.78.01 to 79.04); this will be reflected in the scope of the protection sought in the designated Contracting Party. Moreover, even if the mark has not yet been registered by the Office of origin, the obligation to limit objections to the grounds mentioned in Article 6quinquies would apply if the mark has been registered in another country which is a party to the Paris Convention, even if that country is not a party to either the Agreement or Protocol.
	33.03 A Contracting Party may not refuse protection of an international registration, even partially, on the ground that the applicable legislation permits registration only in a limited number of classes or for a limited number of goods or services. Even if that legislation requires that an application made directly to that Office must be in one class only, the Office must accept that an international registration may be protected in that Contracting Party where it relates to several (or even all 45) classes of goods and services.
	33.04 The notification of the designation may include a declaration that the holder wishes the mark to be considered as a mark in standard characters. The question of standard characters is a difficult one, because of the additional indications (such as accents) which may be standard in one language but not in another. It is therefore entirely up to each designated Contracting Party to decide what is the effect of such a declaration. An Office (and the courts) may, for example, decide to ignore such a declaration when determining such matters as the extent of protection or conflict with another mark. In that case, the Office of the Contracting Party concerned would be free, for its own purposes, to assign a classification symbol of the Vienna Classification to the mark in respect of which an international registration is effected (where the standard character declaration has been made, the International Bureau will not have applied the Vienna Classification).
	33.05 The International Bureau will already have established, before notifying the designation to the Contracting Party, that all applicable formal requirements of the Agreement or Protocol and the Common Regulations have been complied with. An Office should therefore never have occasion to raise objections on formal or presentational grounds. Where the Contracting Party is one which requires a declaration of intention to use the mark which is on a separate form signed by the applicant, the International Bureau will have established that this has been supplied before it notified the international registration or the subsequent designation to the Contracting Party. Where the Contracting Party requires a declaration of intention to use, but does not require that this be on a separate form then, as the rubric on the international application form or subsequent designation form indicates, the applicant or holder is deemed, in designating that Contracting Party, to have made the required declaration. Moreover, provision is made for an international application or subsequent designation to contain various other indications which may be required by particular Contracting Parties.
A Article 4(1) P Article 4(1)(b)	33.06 Nor is it appropriate for an Office to object to the classification of the goods and services in the international registration. Even if an Office disagrees with the classification (which will of course have been approved by the International Bureau), an objection on such grounds would have no effect, since the classification in the International Register remains unchanged. An Office may of course use its own interpretation of the classification, for example, in order to carry out a search for earlier conflicting marks; indeed it is explicitly provided that the indication of the classes does not bind Contracting Parties with regard to the determination of the scope of the protection of the mark.
	33.07 An Office may object if it considers that a term is too broad or too vague; such objection might take the form of a partial refusal, resulting in the replacement of the broad or vague term by a more narrow or precise term in the entry in the International Register as it applies to that Contracting Party - in effect, a limitation of protection for that Contracting Party.

Statement of Grant of Protection

Rule 17(6)	33.08 An Office which has examined an international registration in which it is designated and found no grounds for refusal may issue a statement of grant of protection.
Rule 17(6) Rule 17(6)(a)	33.09 There is no requirement for an Office to issue a statement when it decides that it is not going to refuse protection; it is a fundamental principle of the Madrid system that, if no notification of provisional refusal is sent within the appropriate time limit (one year or 18 months), the mark is automatically protected in the Contracting Party concerned for all the goods and services requested. This has always been considered one of the main advantages for users of the system of international registration, particularly in the days when Offices routinely took longer than 12 months to examine applications filed directly with them. Nowadays, however, many Offices are able to examine trademark applications, and to inform the applicant of the result, in a period which is shorter than one year. If the Office does not inform the holder of an international registration where it has carried out the examination and decided not to refuse protection, the latter is treated less favorably than a direct applicant. In order to avoid this, an Office which has carried out an ex officio examination and found no grounds for refusal may send to the International Bureau, within the applicable refusal period, a statement of grant of protection (as regards applicable period during which a statement of grant of protection may be sent, see paragraphs B.II.34.01 to 34.05).
	33.10 The following options are available to an Office which decides to make use of this possibility. It may send a single statement to the effect that all procedures before the Office have been completed and that protection is accordingly granted to the mark that is the subject of the international registration; this would be the most appropriate course for an Office which operates a system of ex officio examination without any provision for opposition, or when the opposition period runs concurrently with the examination. Alternatively, the Office may send a statement to the effect that the ex officio examination has been completed and that the Office has found no grounds for refusal, but that the protection of the mark is still subject to opposition or observations by third parties; the date by which such oppositions may be filed should be indicated. This would be the most appropriate course where the opposition period does not start until the ex officio examination stage has been completed. If, in this case, the opposition period expires without any opposition or observation having been filed, the Office may then send a further statement to that effect, indicating that the mark is accordingly protected.
	33.11 A statement of grant of protection should indicate the name of the Office that sent it and the international registration to which it relates. Since, by definition, the statement must relate to all the goods and services for which protection is sought in the Contracting Party concerned, the statement should not list the goods or services covered by the grant.
Rule 17(6)(b) Rule 32(1)(a)(iii)	33.12 Any statement of grant of protection will be recorded in the International Register and published in the Gazette and a copy will be transmitted to the holder. In addition, the International Bureau is preparing to make available on ROMARIN digitalized copies of statements of grant of protection, to be accessible directly by users of the database.
	33.13 Once a statement of grant of protection has been recorded, it will not be possible to record a subsequent refusal of protection. If, following the communication of a statement of grant of protection, the protection is subsequently rescinded in accordance with the law of the Contracting Party concerned, this should be notified to the International Bureau as an invalidation, in accordance with Rule 19 (see later paragraphs B.II.84.01 to 84.04).
	33.14 No legal consequences result from the fact that no statement of grant of protection has been sent by an Office. It remains the case that the mark is protected if no notification of refusal has been sent within the period applicable under Article 5(2) of the Agreement or Protocol.

Time Limits for Refusal

	34.01 Refusal must be notified to the International Bureau within a prescribed time limit. Any refusal sent after that time limit will not be considered as such by the International Bureau (see paragraph B.II.36.02). It is not necessary that a final decision on the refusal be taken within the applicable time limit; it is sufficient that all grounds for refusal are notified within the time limit. In other words, what must be sent within the applicable time limit is a provisional refusal. An Office may notify additional grounds with respect to that particular international registration in further notifications of refusal, provided that it sends such further notifications to the International Bureau within the time limit. However, the Office may not base a final decision concerning the refusal on a ground which was not mentioned in a notification of provisional refusal made within the applicable time limit.
A Article 5(2) P Article 5(2)(a)	34.02 The normal time limit for the notification of a provisional refusal is one year from the date on which the International Bureau has notified the international registration or the subsequent designation to the Office of the designated Contracting Party, unless the legislation of that Contracting Party provides for a shorter period.
P Article 5(2)(b)	34.03 However, any Contracting Party to the Protocol may declare that, for international registrations in which it is designated under the Protocol, the time limit of one year is replaced by 18 months (see paragraph B.II.34.05).
P Article 5(2)(c)	34.04 In that declaration, the Contracting Party may also specify that a refusal of protection resulting from an opposition may be notified to the International Bureau after the expiry of the period of 18 months. The Office of a Contracting Party that has made this declaration may, with respect to a given international registration in which that Contracting Party is designated under the Protocol, notify, after the expiry of the 18-month time limit, a refusal of protection resulting from an opposition, but only if - before the expiry of the 18-month time limit, it has informed the International Bureau of the possibility that oppositions with respect to this international registration may be filed after the expiry of the 18-month period, and - the notification of refusal based on an opposition is made within a time limit of one month from the expiry of the opposition period and, in any case, not later than seven months from the date on which the opposition period begins.
P Article 9sexies	34.05 Notwithstanding the general principle that the Protocol applies between States bound by both the Agreement and the Protocol (see paragraphs A.02.16 to 02.25), paragraph (1)(b) of Article 9sexies renders inoperative a declaration under Article 5(2)(b) and (c) in the mutual relations between States bound by both treaties. What this means, in effect, is that in the case of an international application where the Office of origin is the Office of a Contracting Party bound by both treaties, a designation of a Contracting Party bound by both treaties will, while being governed by the Protocol, and not the Agreement, nevertheless be subject to the standard regime of Article 5(2)(a) - that is, the time limit of one year for the notification of a provisional refusal, notwithstanding that the designated Contracting Party in question may have declared an extended period for notifying a provisional refusal.
A.I. Section 14	34.06 In order to determine whether a notification of provisional refusal was sent within the appropriate time limit, the date of sending of a notification sent by post will be determined by the postmark. If the postmark is illegible or missing, the International Bureau treats the notification as having been sent 20 days before the date on which it was actually received by the International Bureau; if, however, this date would be earlier than the date of any refusal or date of sending mentioned in the notification, the notification is treated as having been sent on the latter date. In the case of a notification sent through a delivery service, the date of sending is determined by the information recorded by the delivery service.
Rule 16(1)(b) Rule 16(2) Rule 32(1)(a)(ii)	34.07 When an Office informs the International Bureau, in connection with a given international registration, of the possibility that oppositions may be filed after the expiry of the 18 months period, it must, where the dates on which the opposition period begins and ends are known, indicate those in the communication. If such dates are, at that time, not yet known, they must be communicated to the International Bureau once they become known. The International Bureau will record this information in the International Register, transmit it to the holder of the international registration and publish it in the Gazette.
	34.08 Provided that the warning concerning the possibility of later oppositions has been given, as described in the preceding paragraph, an Office may notify a refusal based on an opposition after the end of the 18-month period. An example may help in understanding the operation of these provisions: - An international registration designates a particular Contracting Party in respect of goods (X + Y + Z). - Upon examination, the Office considers that a mark should be refused protection for some of the goods concerned (X + Y), but may be protected for the remaining goods (Z) and, nine months after the date on which the notification of the designation was sent to it, issues a notification provisionally refusing protection for goods (X + Y). This notification states that the holder should inform the Office within six months if he wishes to request review of this refusal; it also informs him that, once the position has been resolved vis-à-vis the objections raised by the Office, there is a possibility of an opposition being filed by a third party, even if this is after the end of the period of 18 months from the notification of the designation; it also states that, if the holder does not respond within this period of six months, the mark will be regarded as protected in the Contracting Party concerned for goods (Z) but refused for goods (X + Y), that the Office will publish a notice to this effect and that an opposition to the protection in respect of goods (Z) may be filed within the four months following the publication of that notice. - The holder responds within the six-month period, requesting a review of the provisional refusal in respect of goods (X + Y); following such a review, a decision is issued, refusing protection for goods (X) but allowing protection for goods (Y); the Office publishes a notice to the effect that the mark is to be protected for goods (Y + Z), and that any opposition to this may be filed within four months of the date of publication of the notice; the communication informing the holder of the decision also indicates that this notice is being published, together with its date and the duration of the opposition period. - Alternatively, the holder does not respond within the period prescribed by the Office to the notification refusing protection for goods (X + Y); at the end of this period, the Office publishes a notice to the effect that the mark is to be protected for goods (Z) and that any opposition to this may be filed within four months of the date of publication of the notice; at the same time, the holder is informed that this notice is being published, together with its date and the duration of the opposition period. This example is merely indicative. Many variants are possible, and the details will of course vary, depending on the legislation of each Contracting Party.

Summary

	34.09 Upon the expiry of one year the holder will know whether his mark is protected in a given Contracting Party, or whether there is a possibility that protection will be refused and, if so, for what reasons, in the following situations: - for all designations that are governed by the Agreement; - for all designations that are governed by the Protocol, where the designated Contracting Party has not made a declaration extending the refusal period to 18 months, and - for those designations that are governed by the Protocol where the designated Contracting Party has made a declaration extending the refusal period to 18 months, but the Contracting Party through which the holder was entitled to make that designation and the designated Contracting Party are both party to the Agreement (by virtue of Article 9sexies(1)(b) of the Protocol) (see also paragraphs A.02.16 to 02.25).
	34.10 In respect of any designation that is governed by the Protocol, of a Contracting Party that has made the declaration extending the time limit to 18 months and in respect of which the derogation provided for in paragraph (1)(b) of Article 9sexies does not apply, the holder will know, upon the expiry of 18 months, whether his mark is protected in that designated Contracting Party, or whether there is a possibility that protection will be refused and, if so, for what reasons. Where that designated Contracting Party has also made the declaration allowing for the possibility of notifying, after the period of 18 months, provisional refusals resulting from an opposition, the holder will know after the expiry of 18 months, whether there is a possibility that oppositions may be filed at a later stage.
Rule 1bis Rule 18(1) and (2) Rule 1(xvii) and (xviii)	34.11 A change may occur in the treaty applicable to the recorded designation of a Contracting Party bound by both the Agreement and the Protocol (see paragraphs A.02.26 to 02.31). However, such a change will not have an impact on the refusal period, even where that period is still running. This results from the fact that the application of paragraph (1) and paragraph (2) of Rule 18 of the Common Regulations (dealing with irregular notifications of provisional refusal) is dependent on the expressions “Contracting Party designated under the Agreement” and “Contracting Party designated under the Protocol”. By virtue of Rule 1(xvii) and (xviii), these terms are, in turn, defined as requests for extension of protection. Thus, the refusal period is determined by reference to the situation which pertained at the time of filing and is unaffected by any subsequent change in the applicable treaty.
	34.12 Where the time limit for the notification of a provisional refusal has expired without the International Bureau having recorded a notification of provisional refusal in respect of the designation of any given designated Contracting Party, then a statement to that effect will appear on the ROMARIN database.

Procedure for Refusal of Protection

Notification of Refusal of Protection

Rule 17(1)

35.01 The notification of refusal is sent by the Office concerned to the International Bureau. It may comprise a declaration stating the grounds on which the Office considers that protection cannot be granted ("ex officio provisional refusal"), or stating that protection cannot be granted because an opposition has been filed ("provisional refusal based on an opposition") or both. A notification of refusal must relate to only one international registration.

Contents of the Notification

Rule 17(2)

35.02 A notification of provisional refusal must contain the following information and indications:

- the Office making the notification;

- the number of the international registration, preferably accompanied by other indications enabling the identity of the international registration to be confirmed, such as the verbal elements of the mark or the basic application or basic registration number;

- all the grounds on which the provisional refusal is based, together with a reference to the corresponding essential provisions of the law;

- if the grounds refer to an application for registration, or a registration, of a mark with which the mark that is the subject of the international registration appears to be in conflict, all relevant data concerning that mark, including the filing or registration date and number, the priority date (if any), a reproduction of the mark (which may, if the mark contains no figurative elements, be simply typed), the name and address of the owner of the mark and a list of all the goods or services covered by that mark or of the relevant goods or services; this list may be in the language of the said application or registration;

- either that the grounds on which the provisional refusal is based affect all the goods and services or an indication of the goods and services which are affected, or are not affected, by the provisional refusal;

- the time limit, reasonable under the circumstances, for filing a request for review of or appeal against the provisional refusal or for filing a response to the opposition, and the authority to which such request for review or appeal shall lie; if such request for review or appeal must be filed through the intermediary of a representative whose address is within the territory of the Contracting Party whose Office has pronounced the refusal, this will also be indicated.

35.03 The requirement according to which all grounds on which the provisional refusal is based must be indicated, together with a reference to the corresponding essential provisions of the law, is of particular importance for the holder. In practice, refusals are generally communicated by the Office concerned on a special form on which are printed all the relevant provisions of the law applicable to that Office which could constitute a ground for refusal (those provisions being translated, where necessary, into the language which is used by the Office for sending communications to the International Bureau). The grounds applicable in a particular case are mentioned in the notification, with a reference to the corresponding provision or provisions of the law as reproduced on the form.

35.04 If the notification of provisional refusal specifies that a local representative must be appointed, the requirements for appointment will be governed by the law and practice of the Contracting Party concerned. These are likely to be different from the requirements for the appointment of a representative before the International Bureau.

Additional Contents of the Notification when Provisional Refusal Based on Opposition

Rule 17(3)

35.05 Where the provisional refusal of protection is based on an opposition or on an opposition and on other grounds, the notification will indicate that fact. In addition to the indications referred to in paragraph B.II.35.02, it will contain the name and address of the opponent and, where the opposition is based on a mark which has been the subject of an application or registration, a list of the goods and services on which the opposition is based. The Office may, in addition, communicate the complete list of goods and services of that earlier application or registration. These lists may be in the language of the earlier application or registration, (even if that language is neither English nor French nor Spanish).

Recording and Publication of the Provisional Refusal: Transmittal to the Holder

Rule 17(4)
Rule 32(1)(a)(iii)

35.06 The provisional refusal is recorded in the International Register, together with an indication of the date on which the notification was sent (or is regarded as having been sent - see paragraph B.II.36.05). The provisional refusal is also published in the Gazette, with an indication as to whether the refusal is total (i.e., relates to all the goods and services covered by the designation of the Contracting Party concerned) or partial (i.e., relates to only some of those goods and services). In the latter case, the classes affected (or not affected) by the provisional refusal are published but not the goods and services themselves. These are not published until the proceedings before the Office have been completed (see paragraph B.II.37.04). The grounds for refusal are not published.

Rule 17(4)
Rule 16(2)

35.07 The International Bureau then transmits a copy of the notification to the holder. It also transmits to the holder any information sent by the Office of a designated Contracting Party concerning the possible filing of an opposition after the expiry of the 18 month time limit, as well as any information concerning the dates on which the opposition period begins and ends. In addition, the International Bureau is preparing to make available on ROMARIN digitalized copies of notifications of provisional refusal, to be accessible directly by users of the database.

Language of the Notification of Provisional Refusal

Rule 6(2)
Rule 6(3)
Rule 6(4)

35.08 The provisional refusal may be notified to the International Bureau in English, French or Spanish (at the option of the Office making the notification). The refusal will be recorded and published in all three languages. The required translation of the data to be recorded and published is prepared by the International Bureau. The holder will receive from the International Bureau a copy of the notification of refusal, in the language in which it was sent by the Office of the designated Contracting Party. The communication by the International Bureau forwarding the copy of the notification of refusal will however be in the language in which the international application was filed (or the language in which the holder has asked to receive communications from the International Bureau - see paragraph B.I.07.04).

Rule 40(4)

35.09 It should be noted, in the context of refusals, that for all international registrations resulting from applications filed before April 1, 2004, and pending the recording of the first subsequent designation:

- if governed exclusively by the Agreement, French will continue as the sole language of communication, recording and publication.

- if governed wholly or partly by the Protocol, English and French will continue as the language of communication, recording and publication.

For international registrations resulting from applications filed between April 1, 2004, and August 31, 2008, and pending the recording of the first subsequent designation:

- if governed exclusively by the Agreement, then, as above, French will continue as the sole language of communication, recording and publication. Registrations resulting from applications filed during this period and governed wholly or partly by the Protocol will enjoy the full trilingual regime, following the introduction of Spanish as from April 1, 2004.

Irregular Notifications of Provisional Refusal

	36.01 There are two kinds of irregular refusals, those which can be remedied and those which entail that the notification of refusal will not be considered as such by the International Bureau.
Rule 18(1)(a) and (2)	36.02 A notification of provisional refusal will not be regarded as such by the International Bureau if: - it does not contain any international registration number (unless other indications contained in the notification permit the International Bureau to identify the international registration concerned); - it does not indicate any grounds for refusal; or - it was sent too late to the International Bureau; that is, it was sent after the expiry of the relevant time limit of one year or 18 months referred in paragraphs B.II.34.02 to 34.03 (and 34.05) or, in the case of a refusal based on an opposition issued by the Office of a Contracting Party that has made the declaration referred to in paragraphs B.II.34.04 (and 34.05), it was sent after the expiry of 18 months without the Office having, within the time limit of 18 months, informed the International Bureau that there was a possibility of oppositions being filed after the expiry of that period. In this regard, see also paragraph B.II.34.11, concerning a change in the applicable treaty.
Rule 18(1)(b) and (2)(c)	36.03 In all these cases, the International Bureau will nevertheless transmit a copy of the notification to the holder and inform him (and at the same time the Office that sent it) that it does not regard the notification of refusal as such, and indicate the reasons therefor.
Rule 18(1)(c)	36.04 If the notification is irregular in other respects (for example, if the indication of the goods and services that are affected, or not affected, by the refusal is missing, or if the notification does not contain a reproduction of a conflicting earlier mark, or if other relevant details relating to the earlier mark, including the name and address of its owner are missing), the International Bureau will (except in the circumstances referred to in the following paragraph) nonetheless record the provisional refusal in the International Register. It will then invite the Office to rectify its notification within two months. At the same time, it will send to the holder copies of the irregular notification of refusal and of the invitation sent to the Office.
Rule 18(1)(d)	36.05 Where however the notification does not contain the prescribed indications concerning the time limit for filing a request for review or an appeal or a response to an opposition and the authority to which this should be addressed, the provisional refusal will not be recorded in the International Register. If the Office sends a rectified notification within the two-month period referred to in the invitation, the International Bureau will, for the purposes of Article 5 of the Agreement and of the Protocol, regard this rectified notification as having been sent on the date on which the defective notification had been sent to it. That is, if the defective notification had been sent within the period applicable under Article 5(2) of the Agreement or Protocol, a rectified notification which is sent within the two-month time limit mentioned in the invitation will be regarded as having met the requirements of that provision. If however the Office does not, within this two-month time limit, rectify its notification which is defective in this respect, it will not be regarded as a notification of provisional refusal. The International Bureau will inform the holder and the Office that it does not regard the notification as such, indicating the reasons therefor.
Rule 18(1)(e)	36.06 Where an Office rectifies a notification of refusal that specified a period for requesting review or appeal, it should also, where it is appropriate, specify a new period (for example, starting from the date on which the rectified notification was sent to the International Bureau), preferably with an indication of the date on which the said time limit expires.
Rule 18(1)(f)	36.07 The International Bureau will send a copy of any rectified notification to the holder.
	36.08 It is useful for the holder of the international registration that the International Bureau transmits to him copies of any irregular notification of provisional refusal and, in the case of irregularities that can be remedied, of the invitation sent to the Office to remedy it. In most of the latter cases, that Office will remedy the irregularity, but the holder will have had more time to analyze the grounds for refusal and perhaps to start negotiations with holders of prior rights which have been cited ex officio or who may have opposed the international registration.
	36.09 Even if a notification of provisional refusal is not regarded as such by the International Bureau, and is consequently not recorded in the International Register, the holder should be aware that this does not necessarily mean that there are no problems concerning the protection of the mark in the Contracting Party concerned. It may be possible for a third party to initiate an invalidation action against the designation, based on the same grounds as were cited by the Office in the defective notification of refusal. Depending on the irregularity contained in the notification of provisional refusal, the holder may find it advisable to request from the Office concerned complete information in respect of the grounds for refusal of protection.

Procedure Following Notification of Refusal

Article 5(3)	37.01 Where the holder of an international registration receives, through the International Bureau, a notification of refusal (including an irregular notification of refusal under Rule 18(1)(c), see paragraphs B.II.36.04 to 36.05), he has the same rights and remedies (such as review of, or appeal against, the refusal) as if the mark had been deposited directly with the Office that issued the notification of refusal. The international registration is, therefore, with respect to the Contracting Party concerned, subject to the same procedures as would apply to an application for registration filed with the Office of that Contracting Party.
	37.02 When lodging a request for review or an appeal against a decision of refusal or responding to an opposition, the holder may, even if this is not required by the law of the Contracting Party concerned, find it useful to employ a local representative who is familiar with the law and practice (and the language) of the Office that pronounced the refusal. The appointment of such a representative is entirely outside the scope of the Agreement, Protocol and Regulations, and is governed by the law and practice of the Contracting Party concerned.
	37.03 It is not within the competence of the International Bureau to express an opinion as to the justification of a refusal of protection or to intervene in any way in the settlement of the substantive issues raised by such a refusal.

Confirmation or Withdrawal of Provisional Refusal

Rule 17(5)(a)	37.04 Where an Office has issued a provisional refusal and all procedures before the Office relating to the refusal have been completed, the Office will send to the International Bureau a statement indicating either that protection is refused for all the goods and services or that the mark is protected for all the goods and services or indicating the goods and services for which the mark is protected.
	37.05 The statement should be sent as soon as all possibilities of review or appeal before the Office have been exhausted, or the time for requesting review or appeal before the Office has expired. The Office therefore should not wait to see whether an appeal is lodged with a tribunal or other body external to the Office. The reason for this is that the Office may not necessarily be aware whether or not such an appeal has been filed; the Office is therefore not able to know with certainty whether or not a decision issued by it has become final. Nor is the Office necessarily aware of the outcome of any such appeal. Although this statement may not necessarily reflect the definitive result regarding the protection of the mark in the Contracting Party concerned, the fact that, in many instances, a decision subsequent to provisional refusal will be recorded and published at an early stage (as soon as the proceedings before the Office have finished) will have advantages for both holders and third parties.
Rule 17(5)(b)	37.06 Where the Office becomes aware of any further decision that affects the protection of the mark (for example, a decision resulting from an appeal from an authority outside that Office), it will send to the International Bureau a further statement indicating the goods and services for which the mark is now protected, in so far as the Office is informed of this decision.
Rule 17(5)(c) Rule 32(1)(a)(iii)	37.07 The International Bureau will record any such statement in the International Register and will transmit a copy to the holder. The statement will also be published in the Gazette. In contrast to the publication of a provisional refusal, where such statement specifies goods and services by name, this information will be published in full. In addition, the International Bureau is preparing to make available on ROMARIN digitalized copies of such statements, to be accessible directly by users of the database.