International Trademarks Refusals:

When completing all the requirements to register your global trademark, Submitting the application, and referring to many instructions, you suddenly receive notification of provisional refusal from WIPO  that your trademark or brand has hit an obstacle in being protected. the reply to these provisional refusals depends on each country’s Intellectual Property (IP) office. Each national office has a unique process for handling provisional refusals. That’s why AlYafi IP Group is here to guide you with trademark refusals issued by the Bahrain trademark office, Egypt trademark office, Oman trademark office,  United Arab Emirates trademark office, Morocco trademark office, Algeria trademark office, and Tunisia trademark office

In order to analyze the volume of trademarks utilizing the Madrid Protocol and Madrid Agreement, we have assessed: the total number of international trademarks filed over the 18-month period from June 2021 to December 2022. During that period, there were a total of 89,510 basic applications for international trademarks filed. The basic applications were mainly from the United States of America (US), the European Union (EU), China (CN), Germany (DE), the United Kingdom (UK), France (FR), Japan (JP), Switzerland (CH), Australia (AU), and the Benelux (BX).

The 89,510 applications designated a total of 652,000 national applications all over the world, which is exactly the reach the Madrid system provides trademark owners. So approximately each international application designated around 7 countries. The countries most designated during the 18-month period from June 2021 to December 2022 are the United Kingdom (UK), European Union (EU), United States of America (US), China (CN), Canada (CA), Japan (JP), Australia (A), Switzerland (CH), Korea (KP), and India (IN).

Over the course of the year 2022, we have conducted an analysis on the number of refusals issued from designated states regarding international trademark applications utilizing the Madrid system. The number of international trademark applications rejected in 2022 is 174,180 refusals, so around 27% of trademark applications were filed throughout the 18-month period prior.

After ranking number 2 in our last 3 months’ report, the United States of America (US) ranks first with 21,824 refusals in 2022. Canada (CA) and China (CN) follow the USA with 18,162 and 15,816 refusals respectively. Japan (JP) ranks 4^th in 2022 with 12,932 rejections and the Democratic People’s Republic of Korea (KP) comes after with a decrease in the number of refusals compared to the previous countries and ranks 5^th with 8,971 provisional refusals. India (IN) came with 8,609 rejections, Thailand (TH) ranked 7^th with 7,508 refusals, the European Union (EU) issued 7,293 provisional refusals and Australia (AU) follows with 5,959 trademark rejections in 2022.

Looking at the absolute number of trademark rejections is interesting, however, what is more interesting is looking at the number of rejections compared to the designation made of the country. It turns out, that Thailand (TH) rejects around 70% of applications filed there, so the likelihood that an applicant will receive an office action or a rejection in Thailand (TH) is very likely, rendering the use of the Madrid system to file an international trademark designating Thailand (TH) not necessarily cost-effective. Whether the same rejection rates are issued in national applications will be the subject of a different article discussion with local representatives with expertise in Thailand (TH). The United States (US) and Canada (CA) follow Thailand (TH) in terms of the percentage of trademark applications facing office actions or rejections, whereby 62% of international trademark applications designating the USA to receive an office action, and 60% in Canada (CA). China (CN), Japan (JP), India (IN), Korea (KP), and Namibia (NA)all had refusal rates of around 50% of trademark applications designating these countries.

This puts everything in perspective, in some countries, where the likelihood of facing an office action is higher with an international application than with a national one, it may be best to file a national application to avoid the delay and the additional fees associated with responding to an office action.

Unlike developed countries, the applications designating middle east and Africa countries which are members of the Madrid agreement are almost non-existent, and so are the refusals issued within these countries. Egypt (EG) the largest Arabic country which is a member of the agreement had 5,600 international applications designating it over the 18-month period from June to December 2022 and issued 543 trademark refusals. This implies around 10% of applications for international trademarks designating Egypt (EG) are receiving an office action or a refusal. This is a great improvement from previous years; however, the Egyptian (EG) trademark office needs to work on consistency, and process for responding to refusals seamlessly. Merely issuing refusals does not make sense. While Morocco (MA) and the UAE (AE) were the second and third highest countries receiving applications (the United Arab Emirates (AE) only acceded to Madrid 12 months ago, so international trademarks designating the emirates are still under examination technically.) there were no rejections or office actions issued from the ministry of economy in the United Arab Emirates (AE) and very few issued in Morocco (MA).

We are excited to see how the ministry of economy in the United Arab Emirates (AE) will be treating international applications and whether it will follow a developed countries approach extensively examining all applications to ensure consistency and completeness of the register, or whether it will simply allow trademark applications to automatically register without much examination.

Algeria (DZ) follows Egypt (EG) with 351 refusals issued during the 12-month period in 2022, which is approximately 11% of total trademark applications filed designating Algeria (DZ).  Oman (OM) trademark office issued its Intellectual property strategy in 2022, and hopefully, it is getting on track with issuing refusals that make sense and are actionable. Many of Oman (OM) office refusals are issued in error referring to a prior trademark that does not exist. The 250 refusals issued by the Oman (OM) trademark office were divided between refusals issued on relative grounds, refusals following an opposition, and refusals based on prior registrations by the applicant, therefore, requiring association. Morocco (MA) ranked number 4 with 195 trademark refusals issued, but ranked number 1 in many Arab countries’ hearts in the FIFA world cup 2022 when they made history by being the first Arab country that reaches the semi-final after defeating Spain and Portugal! Bahrain’s (BH) trademark office is always acting at its own pace, issuing 38 provisional refusals less than 2% of applications. Most of these are due to opposition, and not due to any examination completed by the Bahrain trademark office.

In conclusion, the number of international trademark refusals shows that the countries are applying the Intellectual Property (IP) law and working to avoid the risk of a possible infringement action being issued. We are looking forward to a great year ahead, we hope that Arab countries start shining in new laws and IP procedures to have a safe business environment and attract more investors. Thus, if your application was refused don’t need to worry because it happens frequently to be rejected on the first try, but with a little preparation, and a strong consultation from our Team it is also possible to transform your rejection into acceptance! 

And now the question is: how you can maximize the chances of successful trademark registration from the first time?