INTA 2017: Reasons For Refusal Under The Madrid System

24-05-2017

INTA registrants had the opportunity to hear WIPO presenters provide an overview of Madrid System and Hague System developments.

The Madrid System is growing constantly, explained Marcus Höpperger, Director of the Madrid Registry at the World Intellectual Property Organization (WIPO), stating that last year applications increased by 7.2 percent, the fastest growth since 2010.

Currently, there are 98 members in the system—with Brunei being the latest to join, Mr. Höpperger explained in a Madrid System Users Meeting.

Last year, the United States led the way in filings, accounting for around 14 percent of the total and experiencing a 4.7 percent increase on 2015.

Mr. Höpperger added that China topped the leaderboard in designations, followed by the European Union and United States.

“In 2016, the overall number of filings coming from the top ten filers amounted to less than 2 percent of overall filings,” said Mr. Höpperger.

Grégoire Bisson, Director, The Hague Registry, Brands and Designs Sector, WIPO, provided an update on the Hague System, citing a 46.1 percent increase in 2016 compared with the year before.

The driving force behind the increase came from some of the most recent new members: Korea (which joined in 2014), and the United States and Japan (which joined in 2015).

He expects Russia to join the system, while Israel, Madagascar and the United Kingdom are on the horizon for 2018.

The addition of Korea, the United States and Japan have created an additional complexity in the system, as they have domestic-level examinations.

Now, the notifications of refusals from the U.S. Patent and Trademark Office (USPTO), the Japan Patent Office (JPO), and the Korean Intellectual Property Office have begun to arrive.

“The most common ground of provisional refusal is insufficient disclosure,” said Mr. Bisson, explaining that 68 percent of refusals from the JPO are based on this ground.

Dealing with refusals

The overviews were followed by a panel consisting of representatives from four countries that provided the majority of provisional refusals: Australia, the United States, China and Colombia. It was moderated by Debbie Roenning, Director, Legal Division, Madrid Registry, Brands and Designs Sector, WIPO.

Nearly 350,000 designations were received last year in the Madrid System, and 109,000 provisional refusals were given.

The four offices represented were behind more than 32,000 of these refusals.

“In Colombia, most provisional refusals (80 percent) are based on ex officio actions,” said José Luis Londoño Fernández, Deputy Superintendent for Industrial Property Affairs, Superintendency of Industry and Commerce, Colombia.

An applicant has two months after issuance of the ex officio refusal to respond, but the response must come from an agent in Colombia.

In China, if you receive a notice of ex officio refusal, you must file a request for review within 15 days of receipt.

Although this may seem like a very short time, said Zhang Sijing, Division Director, Trademark Office, State Administration for Industry & Commerce of the People’s Republic of China, thats not the whole story: a request needs to be filed within 15 days, but the party then has three months to put together the facts.

Jennifer Chicoski, Administrator, Trademark Examination Policy and Procedure, USPTO, admitted that there is a “very low acceptance rate at first blush” and that relative grounds are the most common grounds of refusal.

Undertaking a thorough search is vital for applicants, concluded Celia Poole, General Manager, Trade Marks and Designs Group, IP Australia. 

Applicants should familiarize themselves with the local legislative framework, ensure applications are specific and clear, and check the published list of goods and services, she said. 

INTA, Madrid System, Hague System, WIPO presenters, ex officio

WIPR