The Trademark Agents and Trademark Attorneys Training Course is for lawyers and agents who want to be recognized by the 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.
The program is comprised of six (6) days of training for trademark agents (non-lawyers) and eight (8) days of training for trademark attorneys
The Trademark Agents and Trademark Attorneys Training Course will be held face-to-face in a venue in Metro Manila.
Oct 16-18 & 21-25, 2024
Fees:
- For Trademark Agents – P48,000.00
- For Trademark Attorneys – P64,000.00
For inquiries:
- Engr. Kevin U. Facun, kevin.facun@ipophil.gov.ph
- Ms. Mary Diane Duran diane.duran@ipophil.gov.ph
You may also call IP Academy at (02)7238-6300 loc 1008 or 1009.
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
Conducting a Comprehensive Trademark Search using Vienna Classification, Nice Classification, and Other Considerations
Part 1:
(e.g., translation/transliteration of the mark, searches in WHO INN, MIMS, eAmbrosia, GI View, Bureau of Plant Industry Variety Database, etc).
Part 2:
(e.g., Navigating eTM File, GBD, ASEAN TM View, Other TM Databases, Mock trademark search activity, Mock trademark registration)
Continuation: Conducting a Comprehensive Trademark Search using Vienna Classifcation, Nice Classification, and Other Considerations.
Part 3: Presentation of TM Search reports
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
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
Continuation: 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
Discussions on TM filing tips and best practices
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
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
Filing Simulations and Demo
- eTM File and eDoc File Simulation
- eCorr Demo
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)
- Trademark Management Workshop
- Feedback on workshop exercises
UNDERSTANDING 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
- Suggested Ethical Standards for Trademark Representatives
- Professional Responsibilities
- Case Studies and Scenarios
INTER PARTES PROCEEDINGS: RULES, AND REGULATIONS ON OPPOSITION AND CANCELLATION CASES
- Overview of Inter Partes Proceedings
- Procedural Rules
- Evidentiary Requirements
- Role of the Trademark Office
- Case Studies
PRACTICAL APPLICATIONS AND CASE STUDIES ON OPPOSITION AND CANCELLATION CASES
- Filing Opposition Cases
- Managing Cancellation Cases
- Best Practices for Case Management
- Case Study Analysis
- Practical Tips and Strategies
RULES AND REGULATIONS ON ADMINISTRATIVE COMPLAINTS FOR VIOLATION OF LAWS INVOLVING INTELLECTUAL PROPERTY RIGHTS (IPV)
- Understanding Intellectual Property Violation on Trademarks
- Rules and Regulations for Filing Administrative Complaints
- Case Studies and Examples
PRACTICAL APPLICATIONS AND CASE STUDIES ON ADMINISTRATIVE COMPLAINTS FOR VIOLATION OF LAWS INVOLVING INTELLECTUAL PROPERTY RIGHTS (IPV)
- Preparing for an IPV Administrative Complaint
- Filing Procedures and Best Practices
- Case Study Analysis
- Practical Tips and Strategies
ALTERNATIVE DISPUTE RESOLUTION
- ADR in Trademark Disputes
- Choosing the Right ADR Mechanism
- Preparing for ADR
- Conducting ADR Sessions
- Case Study/Analysis
APPEALS
- Appeal Process
- Periods and When to File an Appeal
- Petition to Question the Action
- Practical Tips on Filing an Appeal
- Case Studies and Best Practices
MOCK LITIGATION
- Case Preparation
- Conducting the Mock Litigation
- Open to Floor Questions
HOW TO REGISTER
STEP 1: CREATE AN ILAW ACCOUNT
- Go to ILAW website (https://ilaw.ipophil.gov.ph/)
- Click “Log in” and then click “New Account”
- Complete the required information to create an account
- Check email for confirmation to verify your account
STEP 2: SELECT THE COURSE
- Once verified, go to “Courses”
- Choose “Trademark Training”
- Click the course shell “Trademark Agents and Trademark Attorneys Training Course”
- Click “Enrol Me”
STEP 3: PRE-REGISTRATION
- Once enrolled in the course shell, answer the Pre-registration Form
- Wait for IP Academy’s email for the next steps and payment of fees.