This one-day trade mark administrator training course has been specifically designed for trade mark administrators, formalities assistants and other IP support staff dealing with trade marks.
This course will provide a comprehensive overview of:
- What trademarks are
- How to choose new trade marks
- The process of registration at UKIPO, EUIPO, WIPO
- Contentious proceedings
- Recording changes on the Trade Mark Register
- Administration of your domain name portfolio
The expert trainer will use her extensive experience and knowledge to bring the topics alive and work through a number of case studies throughout the sessions to ensure delegates get the most from this course.
Why you should attend
- Improve your understanding of the trademark process
- Learn how to register your trademark using the most commonly used registration systems
- Understand the importance of accuracy in your role
- Gain practical time-saving tips
- Get insights into best practices
Certification:
- CPD: 6 hours for your records
- Certificate of completion
Agenda
Introduction to trade marks
- What is a trademark?
- Why register a trademark?
- The structure of the registers (typically national v. the more international nature of many businesses)
Choosing new trade marks
- Inherent registrability and market acceptability
- Relative registrability; searching and clearance
- Lawyers in collaboration with marketing colleagues
Registration and prosecution
- Understanding registration at UKIPO, EUIPO, WIPO
- Applying to register
- Communicating with the UKIPO, EUIPO, WIPO
- Outline of the process
- Objections (relative and absolute grounds)
- Responses, evidence and acquired distinctiveness
Pitfalls and practicalities around the world
- Timeframes
- Sanctions
- Documentary requirements
- Office practices
Contentious proceedings - opposition, invalidity and revocation
- Opposition
- Revocation
- Invalidity
- Evidence
- Hearing and appeal
Recording changes on the trade mark register
- When will you need to record changes and why?
- How to deal with changes
Renewal and maintenance
- Overview
- Databases
- Renewal agencies v. In-house
Administration of a Domain Name Portfolio
- Overview of portfolio management
- Use of Domain Name Management Companies
- Watching services
- Maintenance of domain names
- Renewals
- Achieving a ‘tidy’ portfolio
- Ownership of domains
- Controlling the filing of domains
- UDRP - domain disputes
- acquisition of domain names
- Pointing/technical issues
- Social media handles
Speakers
Victoria Silk,
BATVictoria Silk is Senior Counsel, Trade Marks – New Category Products for BAT. She is a Chartered Trade Mark Attorney and in-house Counsel. She qualified in London in 2005 and spent 6 years in-house with ICI paints before becoming Virgin’s in-house Trade Mark Attorney in Geneva in 2011. She joined BAT in 2017.
Who Should Attend
- Trademark/Patent Administrators
- Formalities Assistants
- Legal Assistants
- Paralegals
- IP Support Staff
- Others wishing to learn more about trademark administration
