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Annual Update for Senior Trade Mark & Design Administrators Training Course

This annual update, specifically designed for senior trade mark and design administrators, includes the latest updates from WIPO with discussion on the Madrid and Hague systems and a review of the differences between US, EU and UK practice and what to do about them.

3-4 Nov 2020

& 5-6 Nov 2020

Book now

Details

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

Programme

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

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

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

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, Senior Legal Officer, WIPO

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

Juan Rodriguez
Felicity Hide 
JoAnna Emery 
Matthew Ridley 

Presenters

Felicity Hide (More...)

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 (More...)

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 (More...)

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 (More...)

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

Book now

3-4 Nov 2020
Face-to-face, Rembrandt Hotel London
3-4 Nov 2020
Face-to-face
Rembrandt Hotel London
GBP 799.00
EUR 1,119.00
USD 1,246.00
Until 22 Sep*
Enrol now
to attend
Face-to-face
Rembrandt Hotel London
  • 2 days of classroom-based training
  • Meet presenters and fellow attendees in person
  • Lunch and refreshments provided
  • Download documentation and certification of completion
  • Fair transfer and cancellation policy
5-6 Nov 2020
Live webinar
5-6 Nov 2020
Live webinar
GBP 599.00
EUR 879.00
USD 1,006.00
Until 24 Sep*
Enrol now
to attend
Live webinar

Learn more about our face-to-face and webinar training formats.

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

Customised in-house training

We can customise this course to meet the requirements of your organisation and deliver it at your location and/or online.

Contact us

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Previous customers include...

  • Alfa Laval Corporate AB
  • ASSA ABLOY Entrance Systems AB
  • Bawden & Associates
  • Chas. Hude A/S
  • Coloplast A/S
  • DeltaPatents B.V.
  • Essity Hygiene & Health AB
  • 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
  • Mithra Pharmaceuticals
  • MorphoSys AG
  • Naspers Group
  • Noréns Patentbyrå AB
  • Oslo Patentkontor AS
  • Patrade Legal ApS
  • Philips International BV-IP&S
  • Research and Markets
  • Rockwool International A/S
  • Sealed Air S.r.l.
  • Shell International Ltd
  • Synthon BV
  • Tomkins & Co
  • Unilever R&D
  • Zacco Norway AS

Splendid!

Claudia Görgey, IP Paralegal, Senior Specialist, MorphoSys AG, Nov 19

I really think that the course fulfilled my expectations. As a small group, we all had a chance to chip in with comments and it really felt nice that there was the time for that.

Christine Bruhn Sander, Trademark Paralegal, Chr. Hansen A/S, Nov 19

I hoped to learn more on designs and to get an update on the latest case law and this was definitely accomplished. I also appreciated the demo of the latest TM & design search tools and the interaction between all speakers and how they shared their knowledge with us in discussions.

Annelies Dobbelaere, IP Paralegal, Mithra Pharmaceuticals, Nov 19

I felt it was a serious and interesting course that covered important topics which we as administrators need to follow. It's hard to cover everything in a two-day course but I felt inspired to keep myself more updated regarding case law and also to use the international filing systems even more. I liked that we got a chance to hear more about WIPO from a person who works there, and got the opportunity to ask him our questions.

Helen Magnusson, Paralegal, Essity Hygiene & Health AB, Nov 19

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, Nov 18

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, Nov 18

Very good, enjoyable, great presentations and great interaction.

Hannah Webb, IP Formalities Manager, Dyson Technology Limited, Nov 17

Very good speakers

Elisabeth Ippolito, Paralegal, Noréns Patentbyrå AB, Nov 17

Very relevant

Lilli Merete Fanefjord Pedersen, Trademark Administrator, Chas. Hude A/S, Nov 17

Well organised. interesting update - experienced teachers.

Katrien Geerts, Trademark Paralegal, ETEX Services NV, Nov 17

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

Laura Newby, Formalities Officer, Ministry of Defence, Sep 16