This must-attend event has been specifically designed for all senior trade mark and design administrators. It will bring you up to date with recent EUIPO legal reforms, focusing on changes to the law and practice, including a case law summary.
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.
This is a must-attend event for all senior trade mark and design administrators to bring you right up to date with the latest changes and their implications for you and your role. It also provides the opportunity to network with like-minded people to discuss your challenges and to ask your questions of the expert faculty.
Benefits of attending
By attending this event you will:
- Learn about the latest EUIPO updates - including latest case law and practice changes
- Get to grips with EU, US and UK foreign designs - differences and pitfalls
- Expand your knowledge of the latest good practice for design filings
- Examine the latest updates on USPTO practice - trade marks
- Clarify foreign filing pitfalls and learn how to avoid them
- Master country-specific issues
- Understand international registration of trade marks and designs
- Get up to date with the Madrid and Hague Systems - recent developments and trends
Certifications:
- CPD: 12 hours for your records
- Certificate of completion
Agenda
Day 1
Chair's introduction- Welcome and introduction to the course
- EUIPO updates and practice changes
- Case law points resulting in practice changes
- Cases from CJEU, General Court, Boards of Appeal
- Trends in EU filings
- Office tools and projects
- Brexit - the years after
- 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
- Selection of representations
- Issues with photo filings
- Grace periods
- Priority issues
- Reliance on unregistered rights
- 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
- Managing local Counsel
- Notarisation and legalisation
- Translations and local language requirements
- Practicalities (time zones, National holidays etc)
- Country-specific issues
- Classification
Summary of the day and questions
Day 2
Overview of the Madrid System and Recent Legal Developments
- How the Madrid System works, main features
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Geographical coverage and possible expansion
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Recent legal developments
Practical considerations when filing an international application
- The role of the Office of origin and of WIPO
- Irregularities in international applications
- How to lower the risk of incurring in irregularities
- Madrid eServices
- Madrid online services demo (eMadrid)
- WIPO Account and email address
- The future of eMadrid
- Overview of the Hague System and recent developments
- Overview, statistics, latest accessions
- Recent legal developments
- Useful online tools
- EU case law update and practical implications - trademarks and designs
- Learn about the latest case law and how it affects you and your role
Speakers
Juan Rodriguez
WIPO
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.
Xiaodan Dai
WIPO
Ms. DAI joined Madrid Operations Division of WIPO in 2018. In her role as an examiner, she has focused on the examination of international applications, renewals, modifications, corrections, and other related tasks. Additionally, she is dedicated to delivering exceptional customer services to Madrid clients, offering precise and prompt responses tailored to their specific inquiries with her comprehensive knowledge of the Madrid system. Furthermore, she actively contributes as a member of an internal board, collaborating to establish consistent resolutions on examination practice issues.
Prior to joining WIPO, Ms. DAI served as a senior trademark examiner at China National Intellectual Property Administration (CNIPA), specializing in Madrid System. Throughout her tenure, she acquired extensive experience and expertise in conducting trademark examinations under Madrid System. She spearheaded the successful development of the Madrid e-Filing service of CNIPA and facilitated Madrid e-Communication between CNIPA and WIPO, along with the development of an internal examination system tailored for Madrid filings.
She has been invited as speaker to several webinars conducted in both English and Chinese languages, where she shares her expertise and insights on topics related to international applications under Madrid system.
Catherine Dupenloup
WIPO
Catherine Dupenloup joined WIPO in 1996 and presently works as a Senior Applications Support Assistant in the Madrid Information and Promotion Division, Madrid Registry, Brands and Designs Sector. Since 2012, she has been the focal point for user Support in relation with Madrid System Online Services. Before 2012, she worked at the WIPO IT helpdesk as a user support for IT matters.
Silke Weiss
WIPO
Silke Weiss is a fully qualified lawyer with a Master's degree in Intellectual Property from Victoria University in Wellington, New Zealand. She has worked at WIPO since 2008, initially in WIPO's PCT
Legal Division before moving to the Hague System Legal Division. Prior to that, she worked in a law firm in Germany and at the University of Economics in Vienna, Austria.
JoAnna Emery
atai Life Sciences
JoAnna Emery, CLAS, F.Inst.Pa, is Project Manager, Intellectual Property at atai Life Sciences.
Previously, JoAnna was Senior Intellectual Property Paralegal for Cambridge Mechatronics Limited
where she was responsible for aiding in the management and growth of the patent portfolio.
Prior to that she was the Head of and Director for Pure Ideas Limited where she managed the
strategy, P&L, KPIs and intellectual property operations of the firm.
JoAnna has over 27 years experience in intellectual property in both the US and England. She holds an Associate and Bachelor’s degree in Paralegal Studies from Rivier College.
Rowena Tolley
Kilburn & Strode
Rowena Tolley, a trade mark partner with Kilburn & Strode. She has almost 20 years of experience helping businesses protect and build value in their brands. She specialises in helping UK-based businesses in their international growth, as well as US and EU multinationals for whom the UK market is key. There are very few countries where Rowena hasn’t filed trade marks, making her an expert in the local nuances of international brand protection. Her work includes everything from multi-jurisdictional clearance work, prosecution, oppositions and cancellations, through to portfolio reviews and management, infringement, dispute resolution and due diligence. Rowena works with clients of all sizes and across a wide range of sectors, including in particular food & drink, pharma, fintech, sports and music.
Rowena is well-known and respected in the industry, having sat on various intellectual property committees including FICPI, TIPLO and INTA. She has been ranked by MIP as one of their “Top 250 Women in IP” and by World Trademark Review as a “Gold Individual” in their WTR1000.
Nora Fowler
Kilburn & Strode
Nora Fowler, trade mark attorney and counsel with Kilburn & Strode, has over a decade of experience in advising clients and assisting them with the protection of their trade marks and designs. Nora has a particular focus on contentious matters and dispute resolution, as well as helping clients manage their worldwide trade mark and design portfolios. Throughout her career Nora has assisted clients with complex strategic international trade mark and design filing projects, working with clients from a broad range of sectors including the travel, sports, automotive, fashion, food and beverage, and beauty industries. She advises in relation to matters at the IPO, IPEC and EU General Court. She regularly represents clients at hearings before the UKIPO including in trade mark opposition and cancellation matters and trade mark and design registrability/absolute grounds hearings. Nora has an international background; she has worked in the UK and Germany and often assists clients in multijurisdictional matters and projects.
Yvonne Stone
D Young & Co
Yvonne Stone, Partner, D Young & Co, advises international and domestic clients in all contentious and non-contentious aspects of national and international trade mark, design, copyright and unfair competition law. Her non-contentious experience covers inter alia advice on trade mark and design filings as well as clearance searches/registrability advice. Yvonne’s contentious work includes extensive experience in handling national and multi-jurisdictional disputes ranging from opposition and cancellation proceedings to civil infringement proceedings. The latter comprises assisting clients with their anti-counterfeiting strategies as well as trade fair enforcement activities in Germany.
Yvonne handles proceedings before the German Patent and Trade Mark Office, the Federal German Patent Court, all German civil courts, the European Union Intellectual Property Office (EUIPO) and the General Court in Luxemburg. Before joining D Young & Co in 2019, Yvonne worked in the IP department of an international law firm.
Yvonne speaks German and English fluently.
Who Should Attend
This programme has been specifically designed for:
- Senior trade mark administrators
- Formalities managers
- Senior design administrators
- IPR and legal assistants
- Paralegals
Location
ADDRESS
Rembrandt Hotel
11 Thurloe Pl,
Kensington
London
SW7 2RS
United Kingdom
DIRECTIONS
The Rembrandt Hotel is located at 11 Thurloe Place, London, SW7 2RS. The hotel’s location in central London couldn’t be better, whether you’re travelling for business or leisure. You’ll be right between two of London’s most fashionable areas – South Kensington and Knightsbridge – within walking distance of museums, theatres, Harrods and Hyde Park.
You can hop on the Tube at South Kensington and take the District, Circle or Piccadilly lines direct to the City of London, Heathrow Airport and all other areas of the city. Look out of your window and you may well see the Victoria and Albert Museum – it’s right across the street.
