Appeal against refusal: what the decision maker looks at
A trade mark refusal is not the end of the file. It opens a right of appeal to a higher instance inside the same office, and that instance reviews the case afresh. The decision maker checks whether the refusal was reasoned correctly, whether the appellant met every formal step on time, and whether the evidence on file is enough to change the result.
What the decision maker checks first
Admissibility comes before substance. The appellate instance confirms that the appeal was lodged by a party with standing, that the fee formalities were completed, and that the filing arrived within the period stated in the refusal decision itself. A late or informal filing is set aside without any look at the merits.
Once admissibility is settled, the reviewer re-reads the original refusal line by line. It checks which ground was applied, which evidence supported it, and whether the examiner addressed every argument the applicant already raised at first instance. Gaps in that reasoning are the strongest lever an appellant has.
New evidence is treated with caution. Most offices admit it only if it could not reasonably have been filed earlier, or if it answers a point the examiner raised for the first time in the refusal. A speculative submission filed late tends to be disregarded entirely.
What changes once you file
Filing suspends the refusal. The mark stays pending rather than refused, and any commercial decision that depended on registration — a licence, a security interest, a rebrand — should wait for the appeal outcome, not be planned around the original refusal date.
Costs can shift depending on the outcome and, in inter partes matters, on which side is found to be at fault procedurally. Neither side should assume the fee structure of the first instance still applies once the file moves up a level.
What to prepare and who does it
- Instruct counsel to read the refusal decision in full before drafting anything. The grounds for appeal must answer that decision, not restate the original application.
- Collect the evidence that was already on file at first instance and identify what is genuinely new.
- Draft the statement of grounds, addressing each finding in the refusal in the order it appears in the decision.
- File within the period stated in the decision. Do not wait for a reminder from the office.
- Where the same file also touches a security interest or a related contract, apply the same discipline used in Contract review against a security annex before the appeal is finalised.
- Keep a document register for the appeal itself, the way How conflict of interest register token issuance documents to keeps one for an unrelated issuance file.
Who decides, and where
The forum is a dedicated appellate body inside the office that issued the refusal, staffed separately from the examiners who made the first decision. The table below sets out the stages most files pass through.
| Stage | What is checked | Recorded where |
|---|---|---|
| Admissibility | Standing, fee, timing of the filing | Registry file |
| Statement of grounds | Each finding in the refusal, answered point by point | Appeal submission |
| Response (inter partes only) | Counter-arguments from the other party | Case file |
| Substantive review | Whether the reasoning holds and the evidence supports it | Decision of the appellate instance |
| Outcome | Uphold, annul, or remit to first instance | Final decision |
The appellate decision can itself be challenged further in some systems, but that next step sits outside the scope of this page.
If your situation is different
If the refusal is on relative grounds — a conflict with an earlier mark — the review focuses on similarity of the signs and of the goods or services. Prepare a comparison table rather than a descriptiveness argument.
If the refusal is on absolute grounds — descriptiveness or lack of distinctiveness — evidence of acquired distinctiveness through use becomes central. Sales figures, advertising spend and consumer recognition carry more weight than legal argument on its own.
If you also hold a patent that a third party is trying to buy while the mark sits under appeal, the two files do not merge procedurally. A separate track applies, and A patent is offered to you for sale patent sets out what changes when the other side moves first.
What this page does not cover
This page does not cover the fee schedule, the exact length of the appeal period, or judicial review after the appellate instance decides. Those points depend on the office and the jurisdiction and are stated in the decision itself, not repeated here. It also does not set strategy for a specific mark — that depends on the file.
Verified
This page was checked against the published procedural guidance of the relevant trade mark office at the time of writing. Where the question turns into a data point rather than a procedural step — tracking maintenance risk across a portfolio, for instance — the relevant format is set out in Asset report when maintenance is in doubt in detail.
Related publications
A related procedure on a different file type is covered in How customs application for action trade mark what the.
Frequently asked questions
How long does appeal against refusal take in practice?
The length is set by the office handling the file and stated in its own procedural rules. It depends on whether the matter is inter partes and whether a hearing is requested. There is no single figure that applies across every office.
Which documents are needed to start?
The refusal decision itself, the original application file, the statement of grounds, and any evidence the appellant intends to rely on. A power of attorney is needed where counsel files on the applicant's behalf.
What happens if the other side does not respond?
In an inter partes appeal, silence from the other side does not stop the case. The instance proceeds on the file as it stands and decides on the arguments actually submitted.
If a refusal has landed on a design rather than a mark, the cost of getting the response wrong is different: When a design is copied by a competitor in sets out what that costs. For a first read of your file, get in touch.