Obtaining a trademark can be a crucial step to the success of a business. However, sometimes the applicant may receive a notice of provisional refusal from OSIM (State Office for Inventions and Trademarks), signaling that your application does not meet certain legal conditions. In such situations, it is essential to address this issue appropriately, taking into account the procedures and deadlines provided by law.
According to Article 21 of Law no. 84/1998 on trademarks and geographical indications, republished, OSIM carries out a thorough examination of the trademark registration application, including verification of compliance with the grounds for refusal listed in Article 5, paragraph 1. If the application meets the legal conditions, OSIM decides to admit it. Otherwise, the applicant shall receive a notice of provisional refusal.
In accordance with the legal provisions, OSIM offers the applicant 30 days to respond to the refusal notice. During this period, the applicant can express their point of view, present solid arguments and show why they consider that their trademark should be accepted, counteracting the reasons invoked by OSIM.
The reason why OSIM may issue a notice of provisional refusal is based on certain absolute reasons, in accordance with Article 5, paragraph (1) of the Law on trademarks.
These include:
- Lack of distinctiveness of the mark
- Exclusive composition of signs or indications which have become customary in everyday language or in honest and established commercial practices
- Signs consisting exclusively of the shape of goods or of other characteristics required by the nature of the goods, necessary to obtain a technical result or conferring substantial value on the produce
- Trade marks containing signs of high symbolic value, in particular religious symbols
- Contradiction with public order or morality, etc.?
A concrete strategy
In the following lines, we will detail a concrete strategy for dealing with a provisional refusal notice, taking as an example one of the absolute grounds for refusal, namely the lack of distinctiveness.
If OSIM issues a notice of provisional refusal invoking the lack of distinctive character according to Article 5, paragraph (1), letter (b) of the Trademark Law, there is a strong legal strategy that the applicant can adopt to support the admission of his trademark. This strategy is based on the provisions of Article 5(2) of the same law, which provides an opportunity to demonstrate that, despite the initial situation, the mark has acquired distinctive character through use.
According to Article 5(2), “The registration of a trade mark shall not be refused or, as the case may be, the registration shall not be cancelled in accordance with the provisions of para. (1) (b), (c) or (d) if, before the date of filing of the application for registration or before the date of filing of the application for cancellation, the trade mark has acquired distinctive character as a result of use.’
Therefore, an initially non-distinctive mark may be made distinctive by use. The trademark acquired distinctive character when it has been used for so long and so widely that consumers no longer consider the word as an ordinary expression, but as a special symbol of the goods or services of a particular company.
To prove this, you can opt for the following strategy in your response to the provisional refusal notice:
- You can strengthen the case for distinctiveness by providing evidence of use. This evidence may include sales reports, market research, consumer reviews and other materials attesting that the brand has become recognized and appreciated by the public.
- Detail your brand’ s usage history and highlight key moments when it became distinctive. The more you can demonstrate a constant and significant evolution, the more solid your argument will be.
- Seek advice from a trademark lawyer to ensure consistency and robustness of your response. Specialists can provide guidance and assistance in formulating an effective legal strategy.
