What is real
is not external form.



CONSTANTIN BRANCUSI

How a simple phrase can prevent your trademark to be registered

06.03.2019


Our experience and years of practice thought us that, although the interest of our clients and the purpose of our services is the same, the way to deliverance can be spurred with different problems, and the methods of solving them are often diverse.

Context. Our client, an important European producer of materials in the transport field, wishes to register three new international trademarks. Therefore, we filed applications for registration at the Federal Intellectual Property Institute in Switzerland.

Issue. Following the submission of the applications, we received from the examiners of the institute a provisional refusal for each of the three marks. The reason why these notices were issued was that some services in class 40, where our client’s services would fit, were not correctly formulated and can not be accepted. In the examiner’s appreciation, the terms ‘custom manufacturing of tools for others’ and ‘custom manufacturing’ were considered not acceptable services according to the Nice classification.

Solution. To overcome these refusals, we sent an argumentedreply to the Federal Intellectual Property Institute in Switzerland, which proposes replacing the above-mentioned terms with the following complex phrase, which includes the both services described by them and provided by our client: custom manufacturing of products, including metallic materials / metal tools on demand and according to the requirements indicated by the customer or according to his specifications.

14.03.2019

Assisting a pharma lab in court

Starting with 2016, we are representing a reputable French pharmaceutical laboratory in some files / procedures that overlook the way in which clinical trials are being carried out in Romania. These studies impact both the local and the European medical community. For this reason, the courts in Romania, where our client operates these studies, want ( learn more )

28.02.2019

Trademarks registration in Canada

Since last November, we are handling the case of a chocolate and sweets Swiss manufacturer who wants to register two brands in Canada in order to enter and sell its’ company products on the local market. Following the filing of the trademark applications, we have been notified by the Canadian Intellectual Property Office (CIPO) that ( learn more )

20.02.2019

What can you do when another business wants to use your trademark

Situations can vary. We have already expressed our opinion in other materials on how we proceed when the trademark our customer wishes to register is already in use on the market. But what happens when the customer is the one that owns the trademark that a competitor wishes to register for the marketed products? The ( learn more )