Guidelines for deadlines
These guidelines are based on the decision by PRV's Director General, 19th of February 2001.
It has been adapted to the Trade Mark Act (2010:1877) and to Sweden's accession to the Singapore Treaty on the Law of Trademarks.
The final day of a time limit is the day which corresponds to the day the time limit started, either by its name in the week or by its date of the month. If there is no such date, the last day of the final month of the time limit is considered the last day of the time limit.
However, if the last day fall on a Saturday, Sunday, public holiday, Midsummer, Christmas Eve or New Years Eve, the last day of the deadline will be moved to the next working day.
1. General provisions
According to article 7 of The Administrative Procedure Act (1983:223) every matter before a Public Authority is to be handled as simple, expeditious and inexpensive as possible without the quality and security being neglected or impaired. To fulfil the obligation of promptness when dealing with trademark matters, PRV will set time limits for replies to Irregularity Notices and requests for extensions of such time limits, in accordance with the current Guidelines.
2. Irregularity notices in trademark applications
2.1 Application fee, formalities.
If an application, at the examination on formal grounds, only fails in that the application fee has not been paid, the PRV will issue an Irregularity Notice requesting the applicant to pay the fee within four weeks as of the day of the Irregularity Notice. If the application fee has been paid but the application fails in terms of listing goods and services, the applicant will be required to complete the application within eight weeks, as of the day of the Irregularity Notice. The time limit may be cut short, for example, if the deficiency is of minor significance, if the application lacks any indication of goods or services, or if these have been indicated by a mere reference to class numbers.
If the application is paid in full and contains correct indications of goods and services, but doesn't fulfil the requirements under chapter 2 article1 of the Trademark Act (2010:1877), (henceforth TmA), the applicant shall be required to complete the application within four weeks, as of the day of the Irregularity Notice.
Where an application lacks both fee payment and contains further deficiencies, the examiner has discretion – in every individual case – to issue a separate payment notice, with a deadline of four weeks according to paragraph one or to invite the applicant to correct the deficiencies in accordance with paragraph two.
Where there are formal deficiencies in a national trade mark application, which is the base of an international application under the Madrid Protocol, the applicant is invited to correct the deficiencies within three weeks of the day of the Irregularity Notice.
2.2 Irregularity Notice based on substantive grounds
If the application fulfils the requirements under chapter 2 article 1 of the TmA, PRV will examine the application on substance. If PRV, during the examination of the application, finds grounds for refusal of the application, the applicant is invited to submit its comments within ten weeks of the day of the irregularity notice.
2.3 Combined Irregularity Notice
If an application has formal deficiencies, as described under section 2.1 paragraph three, but can still be examined on substance, PRV may issue a combined Irregularity Notice instead of separate ones for formal and substantive grounds. In such case the applicant should reply to the substantive grounds and correct the formal deficiencies within a time limit of ten weeks.
2.4 Final Irregularity Notice
PRV may – according to chapter 2 article 18 of the TmA – refuse an application without further communication after the applicant has submitted its reply. PRV may however – where further information is deemed likely to affect the outcome – in a final Irregularity Notice invite the applicant to submit further comments. The time limit should be set to eight weeks from the day of the Irregularity Notice.
2.5 Actions under the Madrid Protocol
For international applications based on a Swedish application/registration and for international registrations where Sweden is a designated state under the Madrid Protocol there are certain rules that apply.
Where an international application does not match the base application/registration, the applicant is required to correct those deficiencies. The same applies for situations where the application forms have been filled out incorrectly. The time limit should be set to three weeks from the day of the irregularity notice.
The time limit for a provisional refusal against a designated registration under the Madrid Protocol (Art. 17.2) should be twelve weeks from the day of the provisional refusal. In exceptional cases, a second provisional refusal may be issued with a time limit of eight weeks.
3. Time limits in opposition cases
3.1 Notification of the opposition
The holder of the registration is to be informed of the opposition as soon as possible and be invited to submit its comments within eight weeks (opposition notice). Where the owner has submitted such reply, it should be forwarded to the opponent for their information. Whether or not to invite the opponent to submit further comments in reply with additional time limit has to be decided on a case by case basis.
3.2 Final Notice
The parties should be invited, in a so called Final Notice, to submit complementary information. The time limit should be set to eight weeks. If, at this stage, a party submits new information this should be forwarded to the counterparty. The examiner has discretion to decide whether to invite the counterparty to submit further comments within a new time limit, or whether the documents in question should be forwarded for information purposes only and a decision be taken in the case.
3.3 Oppositions under the Madrid Protocol
The same time limits apply to oppositions under the Madrid Protocol as those indicated for national registrations under section 3.1 and 3.2 above.
4. Time limits in registry matters
(i.e. requests for recordal of assignments, licenses, rights in rem, amendments of registrations, and applications for renewal)
4.1 Missing application fee.
If an application fails because the application fee has not being paid to PRV, the applicant is requested to pay the fee within four weeks as of the day of the Irregularity Notice. The PRV should inform the applicant that the application may be dismissed if they do not pay the fee on time.
4.2 Irregularity Notice due to other deficiencies
If an application fee has been paid but the application in general does not fulfil the requirements underchapter 2 article 1 of the TmA, the applicant is required to complete the application within eight weeks of the day of the Irregularity Notice. If the deficiency only consists of a power of attorney missing or being incomplete, the time limit should be set to four weeks.
5. Extension of time limits
5.1 General Guidelines
An extension of a time limit may be granted only if the request is submitted in writing stating reasons for the request. Requests received by fax or e-mail are considered to be in writing.
5.2 Extension of time in conjunction with formal deficiencies (according to 2.1 and 4.1)
In regards to formal deficiencies, extensions are granted only in exceptional cases where the requesting party has to present reasons which justify an extension. Such exceptional circumstances include, amongst others, difficulties to establish the list of goods and services on the account of the applicant living abroad. Extension of time is approved for a maximum of eight weeks. No extensions are granted for payment of fees.
5.3 Extension of time in conjunction with substantive grounds. (2.2-2.4 resp. 4.2-4.3)
Extension of time for submission of replies in response to substantive grounds for refusal may be approved only when this is justified. Example of such reasons is reference to ongoing negotiations (for consent), pending litigation or the applicant needs time to collect evidence of acquired distinctiveness. An extension of time period is eight weeks at the most unless there are specific reasons to decide on a longer period, however, no longer than sixteen weeks. Normally only one extension of time period is granted. However further extension/-s may be granted where the applicant makes it likely that the handling of the case would benefit from additional extension.
5.4 Extension of time in opposition matters
Extension of time is normally allowed with maximum 20 weeks all together. If the parties show that negotiations are ongoing, further extensions may be granted. In cases with more than one opponent, grants of extension should only be given where this is justified by particular circumstances.
If extension of time in accordance with the first paragraph is not granted, an extension of time may be allowed for a party to reply to a final Irregularity Notice; however the circumstances must be such that specific reasons allow it. Such specific reason may for example include, pending dispute at court regarding the disputed rights in question or ongoing negotiations (proved by correspondence or similar).
5.5 Extension of time under the Madrid Protocol.
The guidelines under section 5.1-5.4 apply also to requests of extension of time where Sweden is a designated state under to the Madrid Protocol. Extension of time is not granted for applications for registration before the International Office where a Swedish application or registration forms the base.
With respect to summer vacations, public holidays etc., time limits and extension of times may be set longer than indicated under sections 2-5. These exceptions do not apply for section 2.1 paragraphs 1 and 5, section 2.5 paragraph 2, section 4.1, section 5.2 last sentence and section 5.5 paragraph 2.