The Trademark Agents and Trademark Attorneys Course is for lawyers and agents (non-lawyers) who want to be recognized by the Intellectual Property Office of the Philippines (IPOPHL). This course involves an in-depth training program in preparation for the Trademark Agents/Attorneys Qualifying Examination (TAQE) for the official recognition of trademark agents/attorneys.
March 18-26, 2024
For inquiries:
- Ms. Jessah Marsamolo, Intellectual Property Rights Specialist II, IP Academy jessah.marsamolo@ipophil.gov.ph
- Mr. Benjamin Villarico, Junior Specialist for Training and Education, IP Academy benjamin.villarico@ipophil.gov.ph
CURRICULUM
OVERVIEW OF THE TRADEMARK SYSTEM
Introduction to Trademarks
- Types of Trademarks
- Word Marks
- Figurative Marks
- Three-Dimensional (3D) Marks
- Pattern Marks
- Hologram Marks
- Color Marks
- Motion Marks
- Position Marks
- Creating Trademarks
- Protecting Trademarks
- Trademarks Abroad
Overview of the Examination Process (Process Flow)
PRE-FILING CONSIDERATIONS:
- Vienna Classification
- Building Clear and Accurate Description Goods and Services using Nice Classification
IDENTIFYING REGISTRATION REQUIREMENTS
Formality Examination and Assessing Sufficiency of Formality Requirements
- Reproduction of the Mark
- Title of the Mark
- Translation and Transliteration
- Natural and Juridical Persons (Legal Entities)
- Priority Claim
- Disclaimer Requirement
- Color Claim
- Appointment of Agents
- Schedule of Fees
PART 1: Conducting a Comprehensive Trademark Search using Vienna Classification, Nice Classification, and Other Considerations
(e.g., translation/transliteration of the mark, searches in WHO INN, MIMS, eAmbrosia, GI View, Bureau of Plant Industry Variety Database, etc).
PART 2: Conducting a Comprehensive Trademark Search using Vienna Classification, Nice Classification, and Other Considerations
(e.g., translation/transliteration of the mark, searches in WHO INN, MIMS, eAmbrosia, GI View, Bureau of Plant Industry Variety Database, etc).
SUBSTANTIVE EXAMINATION OF TRADEMARKS
Discussion on the Absolute Grounds for rejecting a Trademark Application
- Lack of Distinctiveness (Sec. 121.1, IP Code; Rule 101(j) TM Regulations)
- Descriptiveness (Sec. 123.1(j) IP Code and Rule 102(j), TM Regulation)
- Customary/Generic signs (Sec. 123.1(h) and (i), IP Code and Rule 102(h)(i)
- Shapes or other characteristics with an essentially technical function, substantial value, or resulting from the nature of the goods or their related services (Sec. 123.1(k) IP Code and Rule 102(k)
- Signs contrary to public order or principles of morality (Sec. 123.1(m) IP Code and Rule 102(m)
- Misleading or deceptive signs (Sec. 123.1(g), IP Code and Rule 102(g)
- Signs in conflict with flags and other sovereign symbols (Sec. 123.1(b) IP Code and Rule 102(b))
- Signs identifying a particular individual or institution (Sec. 123.1(c) IP Code and Rule 102(c))
- Signs indicating false suggestion or connection or bringing contempt or disrepute (Sec. 123.1(a) IP Code and Rule 102(a))
- Special Topic: Acquired distinctiveness through use
- Special Topic: Distinctiveness of the Earlier Mark
- Special Topic: Well Known Trademarks
PART 1: SUBSTANTIVE EXAMINATION OF TRADEMARKS
Discussion on the Relative Grounds for rejecting a Trademark Application
- Double Identity (Sec. 123. 1(d)(i) IP Code)
- Likelihood of confusion (Sec. 123. 1(d)(ii) and (iii) IP Code)
- Visual Similarity
- Aural Similarity
- Conceptual Similarity
PART 2: SUBSTANTIVE EXAMINATION OF TRADEMARKS
Discussion on the Relative Grounds for rejecting a Trademark Application
- Double Identity (Sec. 123. 1(d)(i) IP Code)
- Likelihood of confusion (Sec. 123. 1(d)(ii) and (iii) IP Code)
- Visual Similarity
- Aural Similarity
- Conceptual Similarity
THE MADRID PROTOCOL SYSTEM
Navigating Global Trademark Protection: Madrid International Registration
- IR Examination Process Workflow
- Relevant Forms to be Used
- Subsequent Designation
- Ceasing of Effect
- Transformation
- Replacement
- Renewal
- Revocation
- Invalidation
PART 1: Communications and Timelines: Understanding Office Action and Identifying Deadlines
- Registrability Report, Subsequent Action, Refusal, Provisional Refusals, Deferment
- Common hurdles in the examination phase
- Office Communication: Deadlines
- Appeals (Notice of Appeal, Appellant’s Brief, Appellant’s Reply)
Administrative Processes: Procedural Aspects
- Amendments to an application
- Division or merger of application
- Abandonment and revival of an application
- Allowance and publication of an application
- Remand of applications
PART 2: Communications and Timelines: Understanding Office Action and Identifying Deadlines
- Registrability Report, Subsequent Action, Refusal, Provisional Refusals, Deferment
- Common hurdles in the examination phase
- Office Communication: Deadlines
- Appeals (Notice of Appeal, Appellant’s Brief, Appellant’s Reply)
Administrative Processes: Procedural Aspects
- Amendments to an application
- Division or merger of application
- Abandonment and revival of an application
- Allowance and publication of an application
- Remand of applications
TRADEMARK MAINTENANCE MANAGEMENT
- Renewal
- Amendments/Changes of entries in the register
- Removal from Register
- Cancellation
- Correction of Errors/ Correction of mistakes in a registration
- Recordation (Merger, Licensing, Assignment)
- Change of Name, Address, and Agent
- Other Matters Affecting Title
- Declaration of Actual Use
- Evidence of use
- Examination of evidence of actual use
- Contents of the Declaration of Actual Use
- Use of the mark related to the specific goods/services
- Use of the mark in a form different than registered
- Use by the applicant/registrant or another on behalf of the applicant/registrant
- Non-use and Declaration of Non-Use (DNU)
GEOGRAPHICAL INDICATIONS
- Collective Marks, Certification, Marks and Geographical Indications
- GI Implementing Rules and Regulations and the Application Process
ETHICAL CONSIDERATIONS AND PROFESSIONAL RESPONSIBILITIES OF RECOGNIZED TRADEMARK REPRESENTATIVES
APPEALS
- Appeal Process
- Periods and When to File an Appeal/Petition to Question the Action
- Practical Tips on Filing an Appeal
INTER PARTES PROCEEDINGS: RULES, AND REGULATIONS ON OPPOSITION AND CANCELLATION CASES
PRACTICAL APPLICATIONS AND CASE STUDIES ON OPPOSITION AND CANCELLATION CASES
ALTERNATIVE DISPUTE RESOLUTION
RULES AND REGULATIONS ON ADMINISTRATIVE COMPLAINTS FOR VIOLATION OF LAWS INVOLVING INTELLECTUAL PROPERTY RIGHTS (IPV)
PRACTICAL APPLICATIONS AND CASE STUDIES ON ADMINISTRATIVE COMPLAINTS FOR VIOLATION OF LAWS INVOLVING INTELLECTUAL PROPERTY RIGHTS (IPV)
ADDITIONAL CASE STUDIES, ACTIVITIES, AND/OR WORKSHOP