The seminars were held in Amsterdam, Munich and London. They were attended by a diverse range of trade mark practitioners, including lawyers, attorneys and paralegals.
“We were particularly pleased to have paralegals and young attorneys attending,” said Tove Graulund of the MARQUES International Trade Mark Law and Practice Team. “These are the people who actually fill in the forms, and put the lists of goods and services together, so it was a very practical workshop for them.”
Each seminar was attended by about 30 people, and covered local trade mark registration issues as well as those arising from International Registrations and specifically from US designations.
Among the speakers were Karen Strzyz, Office of the Commissioner for Trademarks, USPTO and André Ntamack, Head, Quality and Training Section, Madrid Registry, WIPO. They both explained how their processes work and answered questions about common problems that applicants have when using the Madrid System.
In the US some 97% of applications get provisional refusals. The speakers addressed what applicants can do to try avoid objections, what they can do when they get such a refusal and how to respond.
There were some interesting insights from the offices. In the US the applications are transformed into XTML format which means that what the examiner sees may be different to what the applicant filed, and misunderstandings may arise.
Strzyz explained that the USPTO’s approach is “to register as much as we can”, which is why the Office prefers the list of goods to be limited to the actual products: the policy is to keep registrations narrow, in order to free up space for other applicants.
The workshop was also a useful experience for the offices’ representatives, said Tove: “I think they also learned from the feedback from users, for example about the difficulty of identifying colour marks in the application form.”
MARQUES thanks De Brauw Blackstone Westbroek, Baker & McKenzie and Penningtons Manches for hosting the seminars. More seminars on this topic, in other locations in Europe, are planned for next year.
Read this post about the London seminar on Class 46.
Issue 071
