Preparation and filing responses to the office actions

Ukrainian Intellectual Property Institute conducts a substantive examination of a Madrid Protocol application designating Ukraine on either absolute ground or relative ground for refusal.

Thus, the typical reasons for issuing a provisional refusal are indistinctiveness of an applied mark or if it conflicts with a prior filed/registered trademark.

A provisional refusal may be overcome by filing review to the Office action.

To respond to the provisional refusal an applicant has to appoint a local agent.

Here are some tips for responding to a provisional refusal:

  • If the provisional refusal is on absolute ground, minor amendments of the indicated goods/services may overcome the refusal. If this is not the case, an argument or evidence of obtaining a secondary meaning has to be submitted if you would like to overcome the refusal.
  • If the indicated items need to be protected in Ukraine, there are some potential ways to overcome a refusal:
  • filing an argument;
  • trial for obtaining a letter of consent from the holder of the cited registration;
  • filing a trial for cancellation of the trademark registration not in use;
  • assignment of the right of the registered trademark from the right holder;
  • others ( filing a trial for invalidation of the trademark registration due to non use, etc. ).

We also provide services for filing such responses to the Office actions issued by Federal Institute of Industrial Property in Russian Federation.

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