Limitation anticipée du libellé lors du dépôt de certaines marques internationales

When filing an international trademark application, the applicant can protect the same list of goods and services simultaneously in several countries with a single application.

[:]

Download the suite.
{product_snapshot:id=33}

{gma Clients}

However, this procedure does not guarantee that this list will be accepted by each office concerned.

In fact, although every member of the Madrid Protocol or Arrangement has signed the Nice Convention on the classification of goods and services, none of them has the same interpretation of the text.

They are even likely to refuse some products and services that would have been formerly accepted by the WIPO.

For instance, the Korean Office (KIPO) has required that we amend a list of goods in class 21 because it was considered as too vague, whereas these goods belong to the International Classification.

If some of these objections are predictable, others are not, since they are the results of the sometimes very subjective interpretation of the Examiner.

In some cases, limiting the specification at the time of the filing may eliminate the objection risk. As an example, in China, the applicant should always restrain the specification of services in class 35 if it contains the “retail services” items, as these terms are never accepted by the Chinese Office.

Also, in case of an international application designating Asian countries such as Taiwan or Singapore, if the reference application contains items that only belong to the class headings, the applicant should specify them in details or even replace them with more detailed products or services.

With this method, the applicant may avoid having to bear the costs of a notification. Nonetheless, in certain cases, misunderstanding or vagueness of the specification is induced by the translation made by the WIPO.

We may also wonder whether by systematically limiting the specification to adapt it to the specific requirement of the offices concerned we do not lose the principal function of an international application, which is to hold a single and identical right in all countries that have agreed to this global registration system.

{/gma}

Leave a Comment