Presented by
Management Forum
Key Updates 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.
★★★★★ "I hoped to learn more on designs and to get an update on the latest case law and this was definitely... more"
21-22 September 2023
+ 7-8 March 2024
from £999
- Format: Classroom, Live online
- CPD: 12 hours for your records
- Certificate of completion
Course overview
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 course is part of our collection of IP & Patents Training Courses.
Why you should attend
Key topics to be covered at this annual update:
- EUIPO updates – latest case law and practice changes
- EU, US GB and foreign designs – differences and pitfalls
- Latest good practice for design filings
- Update on USPTO practice – trade marks
- 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 and trends
Who should attend?
- Senior trade mark administrators
- Formalities managers
- Senior design administrators
- IPR and legal assistants
- Paralegals
The Key Updates for Senior Trade Mark & Design Administrators course will cover:
Chair's introduction
- Welcome and introduction to the course
EUIPO
- 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 3 years on
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
General good practice for design filings
- Selection of representations
- Issues with photo filings
- Grace periods
- Priority issues
- Reliance on unregistered rights
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
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
Summary of the day and final questions
International registration of trade marks and designs: the Madrid and the Hague systems
The Madrid system
- Overview of the Madrid System, filing trends, geographical coverage, possible accessions
- Recent developments
- Electronic exchange of communications
- Email address as a prescribed indication; introduction of WIPO Account; confirmation (signature) of a request for recording
- Early renewal of an international registration
- New means of representing trade marks
- Status of protection in designated Contracting Parties
- Future developments
- Time limit to reply to provisional refusals
- ID and portfolio management
- E-Madrid
- Possible introduction of new languages
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
International registration of trade marks and designs: the Madrid and the Hague systems continued
The Hague system
- Overview of the Hague System and recent developments
- Differences and similarities between the Madrid and the Hague Systems
- The Hague System online tools
- Considerations when designating certain Contracting Parties
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
Round table discussion
Juan Rodriguez
Felicity Hide
JoAnna Emery
Matthew Ridley
21-22 Sep 2023
7-8 Mar 2024
Felicity Hide
Boult Wade Tennant LLP
Felicity Hide, Chartered Trade Mark Attorney, Boult Wade Tennant, focuses primarily around the dispute resolution side, handling conflicts before the UK Office and, if possible, settlement agreements.
She also advises on the clearance process around the selection of marks, including the search work and related activities around clearing a mark for use, including revocations, invalidity applications, domain name disputes and co-existence agreements. She has had twenty years’ experience in advising clients in relation to proceedings before both the UK Office and the European Union Intellectual Property Office, including handling disputes up to the General Court and the European Court of Justice. Although she no longer acts before the EUIPO and its appeal tribunals, she still acts as a consultant for European matters.
Felicity works primarily with corporate clients ranging from the entertainment and media sectors to technology and financial service clients.
21-22 Sep 2023
Sarah Merrifield
Boult Wade Tennant LLP
Sarah Merrifield, Chartered Patent Attorney and European Patent Attorney, Boult Wade Tennant, deals with all aspects of patent and design protection in the mechanical engineering field. She has substantial experience in relation to preparation of patent specifications, filing and prosecution of patent applications, and opposition work, before the UK Intellectual Property Office and the European Patent Office. Sarah also advises on the registration of designs at the UK Intellectual Property Office and EU Intellectual Property Office. She has particular experience in dealing with recordal of assignments and other transactions.
Sarah works with a broad range of different clients ranging from corporate clients to SMEs to private clients. She deals with a number of technologies including: medical and industrial endoscopy; healthcare equipment; filter apparatus; construction equipment; oil and gas production; offshore technology; and materials processing and handling.
She has tutored candidates for the UK and European final examinations and has regularly lectured at universities including the University of Bath and to various companies. Sarah is a contributor to the Concise European Patent Law volume of the “Concise IP” series of books produced by Kluwer Law International and the CITMA and CIPA Community Designs Handbook.
Sarah has a BEng (Hons) Mechanical Engineering from Southampton University.
21-22 Sep 2023
7-8 Mar 2024
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.
21-22 Sep 2023
7-8 Mar 2024
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.
7-8 Mar 2024
Jonathan Pratt
Boult Wade Tennant
Jonathan Pratt, Partner and European Patent Attorney and Chartered Patent Attorney (UK), Boult Wade Tennant. He works on the preparation, filing and prosecution of patent applications in the UK, Europe and worldwide.
Jonathan has significant experience working for small to medium-sized clients, such as start-ups, looking to start or grow their intellectual property portfolio. He regularly provides commercially relevant advice to his clients regarding balancing the costs of an intellectual property strategy with other needs of a growing business. This involves working with the key decision makers to develop a strategy that works for their business and provides them a strong position for the present and the future.
Although Jonathan has a primary focus within the Engineering and Designs Group he is very comfortable handling technology which includes electronics or computing. He particularly works on a number of mechatronics cases which span between classic mechanical engineering, electrical engineering, and programming. With traditionally mechanical sectors expanding rapidly in this area, Jonathan’s ability to handle this subject-matter is particularly appreciated by his clients.
Jonathan is currently a Council member for the Chartered Institute of Patent Attorneys (CIPA) having been elected by his peers. In this position, Jonathan assists with the leadership of CIPA across many fronts including both an international scale as the UK negotiates new trade deals which may have intellectual property implications as well as national matters like the development of UK patent attorneys of the future and ensuring that intellectual property continues to be a diverse, inclusive and welcoming place to work. The training of the next generation of patent attorneys is an area where Jonathan has particular interest and he has served as an Examiner for the Infringement and Validity paper (FD4/P6) of the UK Patent Examination Board Final Diploma examinations since 2019.
Jonathan has an MEng (Hons) Mechanical Engineering from Imperial College London. During his studies, he developed a three degree of freedom computer simulation of an improved MRI machine as well as developing the electronics and control system for the IC+ electric racing motorbike which raced in the Isle of Man TTZero event in 2013.
Book Key Updates for Senior Trade Mark & Design Administrators Classroom/Live online training
NEW higher discounts for multiple bookings - bring your colleagues to make your training budget go further:
- 30% off the 2nd delegate*
- 40% off the 3rd delegate*
- 50% off the 4th delegate*
Please contact us for pricing if you are interested in booking 5 or more delegates
21-22 September 2023
Classroom
London venue TBC
09:00-17:30 UK (London)
Course code 14137
Optional £235/€335/$385 per night
- GBP 1,199 1,399
- EUR 1,729 2,009
- USD 1,977 2,289
Until 17 Aug
- 2 days classroom-based training
- Optional accommodation - 2 nights including breakfast, checking in the day before the course
- Meet presenters and fellow attendees in person
- Lunch and refreshments provided
- Download documentation and certification of completion
- Fair transfer and cancellation policy
Not ready to book yet?
for 7 days, no obligation
7-8 March 2024
Live online
09:30-17:30 UK (London) (UTC+00)
10:30-18:30 Paris (UTC+01)
04:30-12:30 New York (UTC-05)
Course code 14138
- GBP 999 1,199
- EUR 1,439 1,719
- USD 1,647 1,959
Until 01 Feb
- 2 days live online training
- Browser-based, no download usually required
- See presenters and interact with fellow attendees
- Download documentation and certification of completion
- Fair transfer and cancellation policy
Not ready to book yet?
for 7 days, no obligation
* Early booking discounts may not be combined with other discounts or offers. As such, the discounts for 2nd/3rd/4th delegates are based on the full price.
Reviews of IPI's Key Updates for Senior Trade Mark & Design Administrators training course
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.
Nov 7 2019
Annelies Dobbelaere 
IP Paralegal, Mithra Pharmaceuticals
Nov 7 2019
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 7 2019
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 7 2019
Splendid!
Claudia Görgey 
IP Paralegal, Senior Specialist, MorphoSys AG
Nov 8 2018
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 8 2018
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 
Legal & Corporate Affairs Manager, MBC FZ-LLC
Nov 9 2017
Very relevant
Lilli Merete Fanefjord Pedersen
Trademark Administrator, Chas. Hude A/S
Nov 9 2017
Very good, enjoyable, great presentations and great interaction.
Hannah Webb 
IP Formalities Manager, Dyson Technology Limited
Nov 9 2017
Well organised. interesting update - experienced teachers.
Katrien Geerts
Trademark Paralegal, ETEX Services NV
Nov 9 2017
Very good speakers
Elisabeth Ippolito
Paralegal, Noréns Patentbyrå AB
Sep 15 2016
The course as ever runs smoothly, is well organised and a pleasure to attend
Laura Newby
Formalities Officer, Ministry of Defence
United Kingdom
- BAE Systems Plc
- Bawden & Associates
- BTG International Ltd
- Dyson Technology Limited
- Ministry of Defence
- Richemont International Limited
- Shell International Ltd
- Unilever PLC
- Unilever R&D Colworth
Denmark
- Chas. Hude A/S
- Chr. Hansen A/S
- Coloplast A/S
- Grundfos Holding A/S
- Patrade A/S
- Patrade Legal ApS
- Rockwool International A/S
- VKR Holding A/S
Netherlands
- DeltaPatents B.V.
- Koninklijke KPN N.V.
- Naspers Group
- Philips International BV-IP&S
- Synthon B.V.
- Synthon BV
Sweden
- Alfa Laval Corporate AB
- ASSA ABLOY Entrance Systems AB
- Essity Hygiene & Health AB
- Kransell & Wennborg KB
- Noréns Patentbyrå AB
- SCA Hygiene Products AB
Belgium
- ETEX Services NV
- Mithra Pharmaceuticals
Finland
- Berggren Oy
- Heinänen Oy
Germany
- Airbus Defence and Space GMBH
- MorphoSys AG
Ireland
- Alkermes Pharma Ireland Ltd
- Tomkins & Co
Norway
- Oslo Patentkontor AS
- Zacco Norway AS
Italy
- Sealed Air S.r.l.
Nigeria
- Jackson, Etti & Edu
United Arab Emirates
- MBC FZ-LLC
Run Key Updates for Senior Trade Mark & Design Administrators Classroom/Live online for your team
2 days
Typical duration
Pricing from:
- GBP 800
- Per attendee
- Course tailored to your requirements
- At your choice of location, or online
We can customise this course to your requirements and deliver it on an in-house basis for any number of your staff or colleagues.
Contact our in-house training experts Aleksandra Beer and Yesim Nurko to discuss your requirements:
