Management Forum Logo

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 (11)"

19-20 September 2024 »
from £1199

Need help?  Enrol or reserve

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

Enrol or reserve

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

Overview of the Madrid System and Recent Legal Developments

  • How the Madrid System works, main features
  • Geographical coverage and possible expansion
  • 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 – trade marks and designs

  • Learn about the latest case law and how it affects you and your role

Enrol or reserve

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. 

More details

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. 

More details

Catherine Dupenloup
WIPO

More details

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.

More details

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.

More details

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

19-20 September 2024

Classroom
Rembrandt Hotel
London

09:30-17:30 UK (London)
Course code 14155
Optional £240/€312/$360 per night

  • GBP 1,199 1,399
  • EUR 1,729 2,009
  • USD 1,977 2,289

Until 15 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

View basket 

 
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

Enrol or reserve

Run Key Updates for Senior Trade Mark & Design Administrators Classroom for your team

2 days

Typical duration

Pricing from:

  • GBP 800
  • Per attendee, based on 10 attendees
  • 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:

Multiple colleagues? See above for details of our discounts for 2, 3, or 4 delegates. For more, talk to one of our training experts to discuss how to:

Run this course conveniently and cost-effectively in-house for your staff and colleagues

Aleksandra Beer

Aleksandra BEER
Training expert

Yesim Nurko

Yesim NURKO
Training expert

+44 (0)20 7749 4749

inhouse@ipi.academy