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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Wednesday, July 6, 2022

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE webinar will guide trademark counsel on trademark registration and use in the European Union (EU). The panel will discuss what can and cannot be registered to file the trademark application. The panel will discuss refusals, documentation, the classification system, the examination procedure, and use and proof of use. The panel will address appealing a denied application and oppositions. The panel will offer best practices for U.S. applicant drafters to protect trademarks in Europe without sacrificing U.S. strategy and vice versa.

Faculty

Roberto Kunz-Hallstein
Partner
Dr. Kunz-Hallstein Rechtsanwälte

Mr. Kunz-Hallstein practices in all fields of intellectual property, especially in trademark prosecution and litigation as well as portfolio management.

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Peter Gustav Olson
Partner
NJORD Law Firm

Mr. Olson specializes in EU and UK trademarks, EU and UK designs, and domain name conflicts. Having been involved in the EUTM since its inception in 1996, Mr. Olson has filed over 1500 TM applications and has been involved in over 1000 EUTM oppositions (as opponent as well as applicant). He assists primarily U.S. clients with EUTM and UKTM issues, both applications filed at EUIPO, and is also taking over the representation of WIPO International Registrations (IR) designations of those jurisdictions. Prior to Brexit, Mr. Olson regularly represented clients before the UKIPO, and he continues to do so post-Brexit via a UK subsidiary. He now represents approximately 2000 UKTMs. Mr. Olson is a member of the EUIPO subcommittee of the INTA Trademark Offices Practice Committee and the MARQUES Designs Team. From 2019-2021 he was an EUIPO SQAP Auditor.

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Description

For companies considering or doing business in Europe, addressing registering trademarks in the EU is an important step. Trademark registration will confer an exclusive right to use the company's marks in Europe.

A registered EU trademark carries a presumption of validity unless and until it is invalidated or revoked. The mark owner can prevent unauthorized third parties from using identical or similar signs and can take action against counterfeit goods in transit in the EU unless it can be proved there was no infringement.

Use of a mark does not have to be claimed before the mark can be registered, and proof of use does not have to be submitted. Also, the EU trademark regulation provides for priority that may be claimed of one or more previous trademark applications filed in or in respect of a state party to the Paris Convention.

Listen as our authoritative panel of IP attorneys examines trademark registration and use in the EU. The panel will discuss what can and cannot be registered and filing the trademark application. The panel will discuss refusals, documentation, the classification system, the examination procedure, and use and proof of use. The panel will also address appealing a denied application and oppositions. The panel will offer best practices for U.S. applicant drafters to protect trademarks in Europe without sacrificing U.S. strategy--and vice versa.

Outline

  1. Trademark registrations
    • What can and cannot be registered
    • Clearance
    • Filing process
    • Documentation
    • Classification system
    • Use and proof of use
  2. Examination procedure
  3. Refusals
  4. Appealing denied applications
  5. Oppositions
  6. Best practices

Benefits

The panel will review these and other vital issues:

  • What factors should companies and their counsel consider when determining whether to file trademark applications in the EU?
  • What are the grounds for opposing a trademark application or canceling a trademark registration in the EU?
  • What steps can U.S. companies and their counsel take to minimize infringement risks?