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.

08.05.2019

New case at horizon: generic trademark or not?-

In the coming months we will have a case related to a supposed generic name of a Swiss traditional bread producer’s brand. The problem lies in the refusal of the German office to register that trademark based on the fact that the name of the trademarks is generic. We consider this refusal difficult to understand, ( learn more )

24.04.2019

Slogans can sometimes be an issue

Surely, the word slogan has a meaning for everyone. You may have heard it many times used in association with different trademarks. Companies often use brand slogans to help their trademark accomplish long term strategic goals. They also help the company stand out in the market and gain a certain positioning desired by the company. ( learn more )

16.04.2019

Rebrand for a Romanian bank

Currently, in Romania, we provide consultancy to a reputable banking company in a rebranding process. The goal is to achieve increase its popularity among customers. As part of a company’s marketing strategy, the rebranding process can be very complex and long lasting. It requires a lot of research and its deployment involves many resources, hence ( learn more )