No doubt, filing with the International Bureau of the World Intellectual Property Organization (WIPO) a single application in one language and paying a single fee gives applicants a number of advantages, including lower expenses and less time and paperwork compared to having to apply in different jurisdictions.
However, sometimes foreign applicants may encounter certain procedural difficulties when an international application is being reviewed by the registration authority in local designed country. Namely, the local office may issue a provisional refusal to register their mark as a trademark.
There are many reasons why each designed country may issue a provisional refusal; but, in our experience, the most common of them are as follows:
1. The mark submitted for registration as a trademark lacks distinctive character;
2. The list of goods (services) in respect of which trademark protection is sought needs to be adjusted;
3. The mark is confusingly similar to a prior claim.
Of course, each provisional refusal to register a trademark should be reviewed on a case-by-case basis in order to work out a proper, effective strategy to have the refusal withdrawn.
