A company from Korea extends its trade mark to the European Union through the Madrid System, WIPO records the registration, and a few months later a provisional refusal arrives from Alicante. The Office has no objection to the sign itself. It objects to three words in the specification that it considers too vague. Anyone who reads such notices regularly will recognise the most common mistake in international trade mark filings: the list of goods and services is treated as a formality, although it is the part of the filing that defines the scope of protection.

What the EUIPO examines in a specification

An applicant who designates the EU in an international registration receives only a classification check from WIPO, that is, a check whether each product and service sits in the correct one of the 45 Nice classes. Whether a term is clear enough is not examined by WIPO, because that is a matter for the designated office. The EUIPO requires goods and services to be identified with sufficient clarity and precision to enable the authorities and competitors to determine the extent of protection on that basis alone, Article 33(2) EUTMR.

This standard goes back to the judgment of the Court of Justice in IP Translator (CJEU, judgment of 19 June 2012, Case C-307/10). Since then it is no longer enough to copy the heading of a Nice class and mean everything that could conceivably fall within it. In concrete terms, “machines” in Class 7 says nothing about whether packaging machines, construction machines or coffee machines are meant, so the term on its own does not describe a determinable scope of protection. The national offices of the EU Member States, including the German DPMA, apply the same standard under a common practice.

Why foreign marks are hit in particular

An international registration is built on the basic mark in the home country, and its specification is usually a translation of the home specification into English, French or Spanish. What the home office has accepted for years therefore travels word for word into the filing, without anyone applying the European standard. Typical candidates are retail services without an indication of the goods, “machines” without a purpose, “repair” without an object, or “consultancy” without a field.

It is worth knowing that the EUIPO combines the formalities check with the examination on absolute grounds and must notify a refusal to WIPO within six months of republication. The applicant therefore learns of the problem only when the registration has long existed and the fees have been paid.

What happens after the notice

The provisional refusal reaches the holder through WIPO, and the holder has two months to remedy the specification. Such an objection usually concerns only a few terms, so the mark is protected for the remainder of the specification without further ado; however, that remainder often does not contain what matters to the business. Consider a machine manufacturer whose Class 7 specification consists of the single word “machines”: if that term falls, nothing is left in the class.

There is an additional hurdle that many holders underestimate. A holder with neither a domicile nor an establishment in the European Economic Area must appoint a representative in the EEA in order to respond, Article 119(2) EUTMR; without a representative, the refusal is confirmed to the extent identified in the notice, as the EUIPO itself explains in its guidance on international registrations. The correction may therefore cost more than the original designation of the EU, which is why quite a few holders simply accept the objection and lose protection they have paid for.

Moreover, a specification can only be amended inwards. A vague term can be made more precise, for example “machines” to “packaging machines”, but it cannot be replaced by something that was not previously covered by the specification (and by the basic mark). A holder who has drafted too broadly at home can only reduce that mistake in Alicante.

How to avoid the mistake

The cheapest moment for the check is before filing. WIPO provides the Madrid Goods and Services Manager, a tool that checks terms against the databases of the designated offices and shows whether the EUIPO accepts a term. A specification assembled from that tool should, as a rule, avoid an objection under Article 33 EUTMR.

Secondly, the Madrid System allows a limited list of goods and services for individual designated Contracting Parties. A specification tailored to the EU can be narrower and more precise than that of the basic mark, without affecting the other designations. Thirdly, the specification should be reviewed before filing by someone familiar with European practice, because an hour of review in advance costs considerably less than the later appointment of a representative for a notice that could have been avoided. How an international filing works in general is described in our article How do I register an international trademark?.

Our assessment

The specification is the part of the filing that receives the least attention and most often leads to an objection. Anyone designating the EU through the Madrid System should therefore treat the specification as a separate decision on the scope of protection, rather than letting it run along as an appendix to the basic mark. A precise specification costs little time before filing; a vague one costs money, a deadline and, in the worst case, the core of the protection afterwards.