We help overseas clients handle UK & EU trademark refusals. We explain the types of refusals (absolute and relative grounds) and provide professional representation to manage the legal process and ensure your brand is successfully registered.
Navigating the complexities of trade mark registration in the UK and the European Union can be a challenge, especially for overseas representatives and brand owners. A significant hurdle in the process is receiving an official refusal notice. However, a refusal is not a final outcome; it is a critical stage that can be successfully overcome with the right legal strategy. Our firm specializes in helping international clients respond to and resolve these challenges.
Understanding the Types of Refusal
Trademark refusals in the UK (UKIPO) and EU (EUIPO) fall into two main categories:
1. Absolute Grounds for Refusal
These objections are raised by a trade mark examiner based on the inherent nature of the mark itself. Common reasons include:
Lack of Distinctiveness: The mark is generic or so descriptive that it cannot function as a unique brand identifier. For example, trying to register the word "Shoe" for a footwear brand would be refused on this basis.
Descriptiveness: The trademark simply describes the goods or services it represents (e.g., "Fast Brakes" for a car repair service).
Deceptiveness or being contrary to public policy: The mark is misleading or offensive.
2. Relative Grounds for Refusal (Oppositions)
These are objections raised by a third party, typically the owner of an earlier, similar trademark. The refusal is based on the likelihood of confusion between your proposed mark and an existing one. Relative grounds are the most common reason for a UK or EU trademark refusal.
The Advantage of Professional Representation
When faced with a refusal, engaging an experienced legal partner is essential for overseas applicants. We provide the expertise and local knowledge to effectively navigate the process.
Strategic Assessment: We will analyse the refusal notice, advising you on the strength of the objection and the best course of action. This includes determining whether to submit arguments, amend the application, or negotiate with the opposing party.
Expert Response: We prepare and file a detailed, legally sound response to the examining body. For absolute grounds, this may involve presenting evidence of your mark's "acquired distinctiveness through use." For relative grounds, our team will engage in opposition proceedings, including preparing counter-statements and, if necessary, negotiating a coexistence agreement.
Efficient and Timely Action: The UKIPO and EUIPO have strict deadlines. As your local representative, we ensure all responses are submitted correctly and on time, preventing the loss of your application due to a missed deadline.
Local Knowledge: Our understanding of UK and EU trademark law and procedure allows us to anticipate challenges and provide tailored advice that a general representative might miss.
By partnering with us, you can transform a potential roadblock into a successful registration, securing your brand's presence in the UK and EU markets with confidence.
