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.

14.01.2020

Another success registered for sports lovers

We have assisted our client in overcoming a refusal issued by EUIPO against our client’s trademark representing the name of a famous sport competition which will be hosted next year in Switzerland. The examiner claimed as a main ground of refusal the lack of trademark distinctiveness. However, we have succeeding in obtaining the registration of ( learn more )

09.01.2020

Negotiation in progress could mean a settled case

Our ongoing case in which we represent our client, an important pharma player, in the negotiations with a German producer of nutritional supplements, we have successfully obtained for our Client an agreement allowing both parties to coexist. At the present time we are negotiating particular elements of the agreement’s implementation. ( learn more )

12.12.2019

Success registered for Swiss sport enthusiasts

We have successfully assisted our Client, a Canton of Switzerland, in protecting the name of a famous annual sport competition event that is going to be hosted next year in Switzerland, more precisely in their Canton. The official procedure was conducted in front of IGE – Swiss Intellectual Property Office and EUIPO – European Union ( learn more )