How a simple phrase can prevent your trademark to be registered
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.