When an office action refuses your application: what to do first
An office action does not close an application; it opens a fixed window to respond. The letter states which ground the examiner relied on, the deadline for your reply, and the evidence behind the objection. Read the ground before drafting anything, because a response built for one ground rarely answers the other, and the deadline in the letter is already running when you open it.
The legal basis
An EU trade mark application is examined under Regulation (EU) 2017/1001 (EUTMR), in force since 1 October 2017. The regulation separates refusals into two families: grounds concerning the sign itself, and grounds concerning an earlier right held by a third party. An office action should state which family applies to your file, and that distinction decides everything that follows.
The regulation sets the framework for examination and appeal. The precise procedural steps, forms and internal deadlines used by the examining office sit outside the regulation's text and are published separately by that office, so this page describes the sequence rather than quoting a numbered article.
What changes once the letter arrives
Before the office action, the only clock running concerned filing formalities. After it, a second clock starts: the reply period the examiner has set. That period does not pause while you consider your options. If it lapses without a response or a withdrawal, the application is treated as abandoned for the part of the goods or services the objection covers.
This is the point where most avoidable damage happens. Businesses often read the letter as a request for more information rather than as a deadline, and lose weeks before anyone drafts a substantive reply.
What to do first
- Read the stated ground before drafting anything, and confirm whether it concerns the sign itself or an earlier right held by someone else.
- Mark the deadline in the letter as already running, counted from the date of the letter, not from the date you read it.
- Gather evidence that answers the stated ground: distinctiveness evidence for objections on the sign, coexistence or consent for objections based on an earlier mark.
- Decide whether to argue against the refusal, amend the list of goods and services, or restrict the specification to remove the conflict.
- File the response through the same channel the examiner used, ahead of the deadline, not on the day it falls.
- Keep a dated copy of everything filed, in case the file later moves to appeal.
Who decides, and at what point
The examiner who issued the office action decides first, on the file as it stands after your response. If the objection is maintained, the decision can be reviewed by the Board of Appeal, on the same file plus any material filed with the appeal itself. A court becomes involved only later, if the matter is taken further still.
| Ground of refusal | What it concerns | Typical response |
|---|---|---|
| Absolute ground | The sign itself: descriptiveness, lack of distinctiveness, deceptiveness | Evidence of acquired distinctiveness, argument on how the relevant public perceives the sign |
| Relative ground | An earlier right held by a third party | Argument on similarity of goods and marks, evidence of coexistence, or a letter of consent |
If your situation differs
If the refusal rests on an earlier mark rather than on the sign itself, the comparison turns on the goods and services and on how an average consumer perceives the two marks side by side. A related problem, where the conflicting material surfaces only after a right has already been granted, follows a different timing and is set out in When prior art surfaces after grant and its limits.
If the mark protects a product that is still moving from a pilot into a live release, the brand and the underlying contract often need separate handling. The contractual side of that shift is addressed in When a proof of concept becomes production: what to do first, before the trade mark file is even resolved.
If the same applicant also issues a token under the brand named in the application, a refusal at the trade mark office can raise the same naming question that a token issuer already has to answer to investors. That overlap is covered in When the issuer is asked about conflicts and its disclosure duties, which run on their own separate deadline.
What this page does not settle
This page covers the procedure after an office action arrives: the deadline, the response, and the decision-maker. It does not predict whether a specific mark will pass examination, and it does not substitute for a reading of the actual letter against the ground it cites. Where the question moves from procedure to what can actually be documented about an asset held under a brand, a comparable boundary is described in Asset in Switzerland and the deadline that report sets for verification.
Verified
Checked against Regulation (EU) 2017/1001 (EUTMR), in force since 1 October 2017, as published on EUR-Lex. This page states no article numbers, because the procedural detail that governs office actions in practice sits with the examining office's own guidance rather than with the regulation's text alone.
Related publications
A related filing obstacle, raised before an application is even lodged, is covered separately in When a celebrity name blocks the filing and its effect on the specification you choose.
If the letter already gives you a date, treat that date as fixed rather than as a suggestion. A short conversation with an adviser familiar with the ground cited can settle, within the same day, whether the file needs an argument, an amendment, or a restriction.
Frequently asked questions
What is the first step when an office action refuses your application?
Identify which ground the examiner cited: a problem with the sign itself, or a conflict with an earlier right. Everything else in the response follows from that single distinction.
Which deadline is already running?
The reply period stated in the office action itself. It runs from the date of the letter, not from the date you open it, and the regulation does not extend it on its own.
Who decides, and on what evidence?
The examiner decides first, on the file as it stands after your response. If the objection is maintained, the Board of Appeal reviews the same file plus anything filed with the appeal.