Annual Update for Senior Trade Mark & Design Administrators

Senior Trade Mark & Design Administrators, speakers from WIPO discussing the Madrid and Hague systems, from OHIM discussing the guidelines, also presentation about differences between US and EU practice and what to do about them.

7-8 Nov 2019

GBP 999 799 *
EUR 1,399 1,119 *
USD 1,558 1,246 *
* When you book before 25 Sep

Book now

Course overview

This must-attend annual event has been specifically designed for all senior trade mark and design administrators. It will bring you up to date with any recent EUIPO legal reforms, focusing on changes to the law and practice, including a case law summary.

The EUIPO is constantly innovating and updating its online systems and tools, and you will get a tour through not only EUIPO but some of the linked databases. The programme will show you the differences between EU, US, UK and foreign design filing practices and how you should approach these. It will also highlight the pitfalls to be aware of in relation to trade marks in the US, as well as focusing on other country-specific issues that you need to be aware of.

There will be extensive coverage of the common issues that can be encountered and how to deal with them to best effect. You will also learn about the international registrations of trade marks and designs under both the Madrid System and the Hague System and how recent developments will affect you.

Why you should attend

Key topics to be covered at this annual update:

  • EUIPO updates – latest case law and practice changes
  • Office online tools and projects
  • Brexit implications for brand owners and practitioners
  • EU, US GB and foreign designs – differences and pitfalls
  • Update on USPTO practice – trade marks
  • Responding to office actions
  • Foreign filing pitfalls and how to avoid them
  • Country-specific issues
  • International registration of trade marks and designs
  • The Madrid and Hague Systems – recent developments

Who should attend

  • Senior trade mark administrators
  • Formalities managers
  • Senior design administrators
  • IPR and legal assistants
  • Paralegals

Programme Day One

EUIPO

  • EUIPO updates and practice changes
  • Case law points resulting in practice changes
  • Office tools and projects
  • Brexit implications for brand owners and practitioners – EUTMs and RCDs

Felicity Hide

Q&A and discussion session

Felicity Hide

EU, US, UK and foreign designs – the differences and pitfalls

  • Outline of US, EU and UK design filings and their differences
  • How to run a good docket for a US to EU portfolio
  • Filing applications elsewhere
  • Choosing between Hague and national applications

Matthew Ridley, Partner, Boult Wade Tennant

General good practice for design filings

  • Selection of representations
  • Issues with photo filings
  • Grace periods
  • Priority issues
  • Reliance on unregistered rights

Matthew Ridley

Update on USPTO practice – trade marks

  • Filing bases, including foreign use/registration • State Register, Federal Register A vs B
  • Differences in classification and goods/services descriptions
  • Responding to office actions – descriptions of device marks, disclaimers, likelihood of confusion, descriptiveness
  • Evidence of acquired secondary meaning, including surveys (practical examples)
  • TTAB procedure and practice
  • Declarations of Use and Incontestability at registration and maintenance stages
  • Interesting US cases

JoAnna Emery, Head of Pure Ideas and Group Formalities, Pure Ideas Ltd

Foreign filing pitfalls and how to avoid them

  • Managing local Counsel
  • Notarisation and legalisation
  • Translations and local language requirements
  • Practicalities (time zones, National holidays etc)
  • Country-specific issues
  • Classification

Felicity Hide

Programme Day Two

International registration of trade marks and designs: the Madrid and the Hague systems

The Madrid system

  • Overview of the Madrid System and recent developments
  • How to file your international trade mark application and decrease the risk of irregularities and refusals
  • Monitoring the status of your international trade mark application
  • What to do if your international trade mark registration is wrong
  • Decisions you can receive from designated offices
  • Changing the geographical scope and the list of goods and services of your international trade mark registration
  • Maintaining your rights in certain jurisdictions
  • How to manage your international trade mark registration

Juan Rodriguez, Senior Legal Officer, WIPO

International registration of trade marks and designs: the Madrid and the Hague systems

The Hague system

  • Overview of the Hague System and recent developments
  • Differences and similarities between the Madrid and the Hague Systems
  • How to file and prosecute your international design application with WIPO using the new E-filing interface
  • Specificities for designations of certain contracting parties
  • How to manage your international design registration

Juan Rodriguez

EU case law update and practical implications – trade marks and designs

  • Learn about the latest case law and how it affects you and your role

Felicity Hide and Matthew Ridley

Round table discussion
Felicity Hide
JoAnna Emery
Matthew Ridley
Juan Rodriguez

Presenters

Felicity Hide

Felicity Hide, partner at Boult Wade Tennant, is a Registered Trade Mark Attorney, European Trade Mark Attorney and European Design Attorney in the Trade Mark and Domain Name Group. She advises on a selection of marks, trade mark searches, strategic filing and portfolio management, and handles large overseas portfolios. She has substantial experience in relation to prosecution and opposition work before both the UK and European Union Trade Mark offices, in particular in the area of co-existence agreements. Felicity also advises on domain name registration and dispute resolution including UDRP and Nominet procedures. She has worked with counsel on appeal cases from the European Union Intellectual Property Office up to the Court of Justice of the European Union. She gives tutorials to candidates for the Institute’s final examinations, and is a regular speaker on trade mark matters both in the UK and overseas.

JoAnna Emery

JoAnna Emery, Head of Pure Ideas and Group Formalities at Pure Ideas Ltd, is an experienced intellectual property specialist with over two decades of transatlantic expertise in various roles within the IP industry. She has worked in various industries from US defence, water, financial and the FMCG sector. During her career she has gained knowledge in all areas of intellectual property law as well as gaining experience in corporate transactions and social media. Inspiring, training and managing teams, she is a seasoned speaker at international conferences. JoAnna is a certified legal assistant specialist in intellectual property in the US and a Fellow of the Institute of Paralegals in the UK.

Juan Rodriguez

Juan Rodriguez is a Senior Legal Officer for the Legal Division of the Madrid Registry at the World Intellectual Property Office (WIPO) in Geneva. He is an attorney with a law degree from the Universidad de Lima (Peru) and a master’s degree in business administration (MBA) from the University of Notre Dame (USA). Before joining WIPO he worked as the Head of Promotion at the Intellectual Property Office of Peru. 

Matthew Ridley

Matthew Ridley is a European Design Attorney, UK Patent Attorney and European Patent Attorney in the Engineering and Designs Group. He frequently prepares and prosecutes UK and EU design applications and liaises with local attorneys to file applications globally, particularly in the US, South Korea and China. He frequently handles freedom-to-operate design searches for his clients and acts before the EUIPO in applications for the invalidation of EU designs. Matthew also works with large US companies to file EU and UK designs based upon US first filings, and has significant experience in handling the associated issues that arise.

Book now

7-8 Nov 2019
7-8 Nov 2019 DoubleTree by Hilton London-West End, London GBP 999.00
EUR 1,399.00
USD 1,558.00
+ VAT @ 20.00%
GBP 799.00
EUR 1,119.00
USD 1,246.00
Until 25 Sep*
Enrol now

* Note the early booking discount cannot be combined with any other offers or promotional code

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  • Alfa Laval Corporate AB
  • Alkermes Pharma Ireland Ltd
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  • BAE Systems Plc
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  • Chas. Hude A/S
  • DeltaPatents B.V.
  • Dyson Technology Limited
  • Etex Services - IPSC
  • Grundfos Holding A/S
  • Heinänen Oy
  • Jackson, Etti & Edu
  • Koninklijke KPN N.V.
  • Kransell & Wennborg KB
  • MBC FZ L.L.C.
  • Ministry of Defence
  • Naspers Group
  • Noréns Patentbyrå AB
  • Oslo Patentkontor AS
  • Patrade A/S
  • Philips International BV-IP&S
  • Research and Markets
  • Rockwool International A/S
  • SCA Hygiene Products AB
  • Sealed Air S.r.l.
  • Synthon BV
  • Tomkins & Co
  • Unilever R&D
  • Zacco Norway AS

I was overall very pleased with the course. I was also pleased that the venue this year offered accommodation. It just makes it easier to plan when you are flying in from another country.

Dorthe Vangsgaard Sorensen, Trademark Portfolio Administrator, Rockwool International A/S

I think the course was very informative and very interesting. Especially when it comes to case laws and examples. It was a very interactive course and didn't feel bored at all

Hala Nagah, Contracts Manager, MBC FZ-LLC

Very good speakers

Elisabeth Ippolito, Paralegal, Noréns Patentbyrå AB

Very relevant

Lilli Merete Fanefjord Pedersen, Trademark Administrator, Chas. Hude A/S

Very good, enjoyable, great presentations and great interaction.

Hannah Webb, IP Formalities Manager, Dyson Technology Limited

Well organised. interesting update - experienced teachers.

Katrien Geerts, Trademark Paralegal, ETEX Services NV

The course as ever runs smoothly, is well organised and a pleasure to attend

Laura Newby, Formalities Officer, Ministry of Defence