If protection of your trademark in the European Union comes from an international registration under the Madrid Protocol that designates the Union, the EUIPO's examination reaches you as a notification of provisional refusal, forwarded by the World Intellectual Property Organization. For holders based outside the European Economic Area it often lists more than one point at once: the goods and services need to be narrowed or clarified, and a representative in the EEA has to be appointed. Both come from the same provision, Article 193 EUTMR. The notification sets a single deadline, in practice two months from the date the EUIPO issues it.
This page is about the Madrid Protocol route
It covers holders whose EU protection is an international registration designating the Union, examined by the EUIPO under Article 193 EUTMR. If you filed an EU trade mark application directly with the EUIPO instead, the parallel notice about a missing representative is issued under Article 41 EUTMR and is handled on its own track: see EUIPO Notice of Absence of Formal Requirements (Article 41 EUTMR).
For a holder outside the EEA, the Metzler Legal EU Trademark Representative Service covers both parts of this notification at one fixed price: the appointment as representative of record and the response to the goods and services objection, not as a separate add-on.
Why the notification was sent
A designation of the Union is examined against the same standards as a trademark applied for directly at the EUIPO: the goods and services must meet the clarity and classification requirements of Article 33(2) to (4) EUTMR, and the mark itself must clear the absolute grounds for refusal in Article 7 EUTMR. Where something does not meet those standards, the Office issues an ex officio provisional refusal to the International Bureau, which forwards it to the holder; only that first communication goes through WIPO, and afterwards the EUIPO corresponds with the holder or the appointed representative directly. Because Article 193 EUTMR runs the classification check, the absolute-grounds check and, where the holder must be represented, the invitation to appoint a representative in one procedure, a single notification can carry several requirements under one deadline.
The classification objection (Article 33(2) EUTMR)
The EU applies its own standard to the list of goods and services: each term must be clear and precise enough for the extent of protection to be determined on that basis alone. This standard is applied independently of the office of origin and of the International Bureau, so a list that was accepted at home and by WIPO can still be objected to for the EU designation. The objection is common where the list was carried over from a home filing in a jurisdiction with a more permissive classification practice, in Asia, the United States and elsewhere, and relies on broad class headings or umbrella terms.
The representative requirement (Article 119(2) EUTMR)
A holder without a domicile, principal place of business or a real and effective industrial or commercial establishment in the EEA must be represented before the EUIPO for everything that follows the designation, under Article 119(2) EUTMR. Who qualifies as a representative is set out in Article 120(1) EUTMR: a legal practitioner or a professional representative whose place of business is in the EEA. Filing the international application through WIPO does not appoint one.
Under Article 193(3) EUTMR, where that obligation applies, the invitation to appoint a representative is included in the same notification as the classification and absolute-grounds objections rather than sent separately, which is why non-EEA holders frequently see both points in one letter. Metzler Legal handles both through its EU Trademark Representative Service: the appointment as representative of record for the EU designation and the response to the goods and services objection, at one fixed price rather than as a separate add-on.
The deadline
The notification sets a time period for observations and, where required, for appointing a representative. Article 193(4) EUTMR states that this period starts on the day the Office issues the provisional refusal, not the day it reaches the holder through WIPO. In practice the period is two months. There is no separate reminder before it expires.
What to do after receiving the notification
Read the notification in full and note every point it raises. One provisional refusal can combine a classification objection, an absolute-grounds objection and the representative invitation, each governed by the same deadline.
If the representative requirement is raised, appoint a representative who meets Article 120(1) EUTMR for the EU designation, so that further correspondence has an address for service in the EEA.
Respond to the classification objection within the deadline, by limiting or clarifying the goods and services, and by giving reasons for any term that should be kept as filed.
Keep the confirmation once the EUIPO records the representative and accepts the amended list. From that point the EU designation proceeds to publication and the opposition period.
If the deadline passes
Article 193(6) EUTMR provides that where the holder does not overcome the ground for refusal within the time limit, or does not appoint a representative or indicate a second language where required, the Office refuses protection for the EU designation in whole or for the part of the goods and services affected. A partial failure produces a partial refusal, and the remaining goods and services proceed to publication. The refusal takes the place of a refused EU trade mark application and is open to appeal before the Boards of Appeal under Articles 66 to 72 EUTMR.
Frequently asked questions
Article 193 EUTMR runs the classification check under Article 33(2) to (4), the absolute-grounds check and, for holders who must be represented, the invitation to appoint a representative through a single procedure. One provisional refusal can therefore raise all of them together, under one deadline.
The EU applies its own standard of clarity and precision to the list of goods and services, independently of the office of origin and of the International Bureau. Terms that pass elsewhere, such as broad class headings or umbrella terms, can still be found too vague for the EU designation.
Article 193(4) EUTMR states that the period runs from the day the Office issues the provisional refusal, not the day it reaches the holder. In practice it is two months, and there is no further reminder before it expires.
Yes, on the same basis as a direct EU applicant. A holder without a domicile, principal place of business or a real and effective establishment in the EEA must be represented under Article 119(2) EUTMR for everything after the designation. Filing the international application through WIPO does not appoint one.
Metzler Legal is a Berlin law firm specialising in trademark law, admitted since 2010, and acts before the EUIPO for holders of international registrations that designate the European Union. The EU Trademark Representative Service covers the appointment for the EU designation and the response to the objection at one fixed price.
This article explains the general legal framework and does not constitute legal advice for a specific registration. The reasons and the deadline stated in an individual notification of provisional refusal govern that designation.