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Moderator: Keith Hodkinson, ECTA Council Member, Patent and Trademark Attorney, Marks & Clerk, UK
STEP 2: Filing Strategies
- The sign: word mark, script, labels, packaging, 3D, colour / black & white etc.;
- The goods/services: class headings, specific, broad, how many classes, etc.;
- National, CTM (direct/Madrid), Madrid, etc., priority claim, seniority claim;
- Negotiations and agreements with other parties (before or after filing, wait for opposition, etc.);
- Seniority Claim;
- CTM/CD or both.
Mei-lan Stark FOX Entertainment, INTA President, US and
Karla Hughes, Solicitor, Hogan Lovells, Alicante S.L. & Cia., ES
STEP 3: Obtaining Strategies
Examination
- Motivation of objections. Who has the burden of the proof?;
- Arguments and evidences;
- The acquired distinctiveness burden;
- Geographic names;
- Unconventional trade marks (3D, packaging).
Opposition Applicant’s perspective
- Negotiations to settle. Limitation, coexistence agreements.
- Request of proof of use
- Conversion alternatives
- How to draft a convincing reply
Opposition Opponent`s perspective
- Negotiations to settle. Limitation, coexistence agreements;
- Request of proof of use;
- Conversion alternatives;
- How to draft a convincing reply.
OHIM
- Examination procedure of opposition.
- How examiners analyze the arguments of parties and deliberate before adopting a decision
- Recommendations to users
Dr. Nikolaos Lyberis, ECTA Council Member, Attorney at Law, Vayanos Kostopoulos, Member of the Board of Directors of the Greek Patent Office (OBI), GR
Lia Young, Attorney, Trade Marks, Law and Public Policy, Legal Services Division, Caterpillar Legal Services, UK and
Karin Kuhl, Head of Service Quality Matters and Cancellation (OD), OHIM, ES
Discussion with the audience
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