A refusal of a Madrid international registration by one designated country does not affect its validity in the other designated countries. The response is to engage a local agent in that country to file a reply within the deadline set in the refusal notice — you may argue, narrow the goods, or switch to another form of protection; failure to respond in time is treated as abandonment in that country.
The Nature of the Refusal: Provisional Refusal
If a designated office refuses protection after examination, it issues a "Notification of Provisional Refusal" through WIPO. Key points:
- The refusal extends only to the country that issued it; the other designated countries remain in force as usual;
- Response deadlines vary by country, usually 2–4 months; the US, Korea and others allow extensions;
- The response must be filed through a locally practicing agent (attorney, benrishi, etc.) as required by that country; WIPO does not accept responses.
Common Grounds for Refusal
- Similarity to a prior trademark in that country (relative grounds);
- Lack of distinctiveness or descriptiveness (absolute grounds) — the US and Japan are especially strict on this;
- Goods descriptions that do not comply with local norms (the US requires specific and definite descriptions; copying the Nice Classification verbatim often draws a requirement to amend).
Response Strategies
- Analyze the type of refusal: goods-description issues are the easiest to resolve — just amend as required;
- Similarity refusals: argue non-similarity, delete the conflicting goods, or negotiate a consent letter from the prior right holder (the US accepts consent agreements);
- Distinctiveness refusals: submit evidence of use in that country to claim acquired distinctiveness, or disclaim exclusive rights in certain elements (disclaimer);
- Weigh the costs: if the market in that country is unimportant, you may forgo responding and save the local agent fees.
Deadline Management
- Upon receiving the notice, check the deadline immediately and work backwards to schedule engagement of the local agent;
- If the response outcome is still unfavorable, most countries offer further review/appeal procedures — assess the fees and timeline;
- The refusal record is synchronized with the International Bureau and does not affect other designated countries or later subsequent designations.
If you are facing the issues above, you can start with a US trademark registration through MyTMBee, confirm feasibility, and then decide whether to file — avoiding wasted official fees on blind applications.