The Trade Mark Administrator In-house Training

A comprehensive overview of what every trade mark administrator needs to know to succeed in their role.

★★★★★ "Excellent delivery of the presentation, Victoria is very knowledgeable and kept a good pace. Easy t... more"

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Format: Live online
CPD: 6 hours for your records
Certificate of completion

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Course overview

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 trade mark administration, record-keeping and handling the process of applying for and registering a trade mark. It will bring you up to date with potential pitfalls to be aware of and the practicalities of timeframes, sanctions and office practices at the UKIPO, EUIPO and WIPO.

The key topics covered include:

What trade marks are
How to choose new trade marks
The process of registration at UKIPO, EUIPO, WIPO
Dealing with 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. There will also be time during the course to ask your specific questions and to network with other delegates.

This course is part of our collection of IP & Patents Training Courses.

Benefits of attending

By attending this course you will:

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

Who should attend?

Thhis course has been designed speocifically for:

Trademark/patent administrators
Formalities assistants
Legal assistants
Paralegals
IP support staff
Others wishing to learn more about trademark administration

This course will cover:

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

Victoria Silk
BAT

Victoria 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.

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Reviews of IPI's The Trade Mark Administrator training course

Excellent delivery of the presentation, Victoria is very knowledgeable and kept a good pace. Easy to follow. Sufficient times for breaks and lunch.

Sep 16 2024

Leticia Smith Isle of Man
Paralegal and IP Manager, Games Global

Sep 18 2023

Victoria was very well spoken and presented the material in an easy to understand manner. I enjoyed the case study as it tied in all the elements we learned in a way we could visualise it. I enjoyed the presentation and thought it flowed well. I learned a lot.

Heidi Shelton Switzerland
Trademark Coordinator, CSL Vifor