When an office action refuses your application: what it costs to be wrong
An office action refusing a trade mark application does not end the filing. It opens a response period set by the office, with a deadline stated on the action itself. Missing that date closes the file. Responding well protects the priority date and the fees already paid.
Legal basis
The examination and refusal procedure for an EU trade mark sits under Regulation (EU) 2017/1001 (EUTMR). The regulation sets the framework for absolute and relative grounds, the right to respond, and the appeal route within the same office. It does not fix a day count or a fee scale for your specific file. Those are set by the office and stated in the action you received.
How refusal grounds differ
The action tells you which ground applies. The ground decides what evidence is worth collecting.
| Ground of refusal | What the response must show | Who evaluates it |
|---|---|---|
| Absolute ground (descriptive or non-distinctive) | Evidence that the mark acquired distinctiveness through use | The examiner who issued the action |
| Relative ground (an earlier conflicting right) | Consent, coexistence proof, or a limitation of the goods or services | The examination or opposition division |
| Formal deficiency | A corrected filing within the stated period | The formalities examiner |
What changes for you
A refusal changes the calendar, not only the outcome. Every day the file sits unanswered brings the deadline closer, and the office does not send reminders. The cost of being wrong here is rarely the fee itself. It is the terminated application, the lost priority date, and a refiling with a later date than a competitor's. Portfolios that treat a filing cost as settled sometimes learn otherwise, in much the way a technology contract's When the renewal price doubles: what it costs to can upend a budget without warning.
Early spending decisions carry the same risk elsewhere. Once a project has used a token to When the token funds development: what it costs to, later choices are constrained by money already committed. A trade mark refusal creates a comparable narrowing: decide within the period given, or lose the option to decide at all.
What to do next
- Read the action in full before its stated deadline. Note whether it raises an absolute ground, a relative ground, or both.
- Instruct counsel to prepare a response addressing every ground raised, not only the one that seems strongest.
- Collect evidence of use, distinctiveness, or consent, matched to the ground the office actually cited.
- File the response within the period stated in the action. A late filing is not treated as pending; it is treated as closed.
- If refused again, decide within the following period whether to appeal internally or to amend and refile.
- Record your original filing date in writing before choosing to refile. It rarely survives a fresh application.
Who decides, and on what evidence
The office that issued the action decides first. It works from the record before it: the application, the action, and your response. A second refusal moves the file to an internal appeal body, which reviews the same record plus any evidence filed on time. The evidence rule is strict. Material filed after the deadline is not considered, whatever its strength.
If your situation differs
- If the refusal rests on an absolute ground, your response must demonstrate acquired distinctiveness through use, not argument alone.
- If the refusal cites an earlier right, the dispute resembles a case where When prior art surfaces after grant in detail: a right survived registration, and a later challenge asks whether it should have.
- If the deadline has already passed by the time you read this, ask the office directly whether reinstatement of your rights is still available. Do not assume the file is closed until the office confirms it.
What this page does not cover
This page does not cover what happens to related marks in other jurisdictions once one office refuses. That outcome depends on the national registration route, not on the EUTMR alone. Nor does it establish what assets or registrations a counterparty holds. That is a factual question, answered by a factual file rather than by legal argument, such as Asset in Cayman Islands and the deadline.
Verified
Verified: 3 March 2025. Primary source consulted: Regulation (EU) 2017/1001 (EUTMR), as published in the EU official journal repository.
Related reading
For a related filing risk, see When a celebrity name blocks the filing in practice.
FAQ
What is the first step when an office action refuses your application?
Read the action fully and identify the exact ground cited before doing anything else. The ground decides what evidence you need and how much time you have.
Which deadline is already running?
The response period stated on the action itself, counted from the date shown on that document. Nothing in the file resets that clock, including further correspondence with the office.
Who decides, and on what evidence?
The office decides first, on the application, the action, and your timely response. A second refusal moves the decision to an internal appeal body, reviewing the same record plus evidence filed within the deadline.