Law - Trade Mark Law

Law Society of Ireland

Law - Trade Mark Law

Programme objectives
On completion of this training programme, participants will have:

An in-depth understanding of the legal issues pertaining to trademark law;

An ability to apply for registration of trademarks at the Irish Patents Office, EUIPO and WIPO;

A detailed knowledge of examination, publication, oppositions procedures;

The skills to manage a trademark portfolio in practice;

The ability to take an action for infringement of a registered/unregistered trademark;

A very sound basis for preparing for the registered trademark agent exam offered by the Irish Patents Office.

Programme structure and approach to learning
This programme gives participants an insight into the law and practice of trademarks. It provides a practical approach to trademark law that equips participants with the necessary skills to deal with issues that arise in practice. Regulation 2015/2424 (the CTM Regulation) came into force in March 2016 and represents a substantive change to the EU trademark regime. This legislation will be examined in detail, with the practical impact of the changes explored throughout each module of the course.

The course focuses on the legal principles and practical procedures for registering a trademark at the Irish Patents Office, the European Intellectual Property Office (EUIPO), and the World Intellectual Property Office (WIPO), as well as how to deal with objections and oppositions. In addition, we examine the process of managing a trademark portfolio and dealing with revocation, invalidity, and recordals.

The course also provides a detailed analysis of applicable procedures for enforcement of trademark rights, infringement, and passing-off, together with an examination of applicable defences. Finally, a module on advanced trademarks will guide students through the topical areas of online infringement, web-blocking orders, domain name infringement, and plain packaging legislation. It also covers the topic of design law as this is now examined on the Registered Trademark Agent exam offered by the Irish Patents Office.

CPD
We have designed our courses to enable you to satisfy as much of your CPD requirement as possible. Time spent attending lectures and workshops in person or completing these via e-learning as part of your course can be claimed towards your annual CPD requirement. The number of hours of CPD that you may claim in relation to your diploma/certificate course will depend on the way in which you access each of the individual sessions. Please note that the limit for e-learning has been removed for the 2022 CPD cycle. For further information, visit the CPD scheme and download the CPD booklet.

The Diploma Centre team will host our annual CPD conference in November 2022. This complimentary event is a dedicated management and professional development skills and regulatory matters session. We will post an invitation on your Diploma Hub page later in the year.

Subjects taught

Modules
The programme is based on the following module scheme and covers key themes as listed below:

Module 1: Introduction to trade marks
The concept of a trade mark,
Benefits of registration,
Types of trade marks,
PGIs, collective, certification, non-conventional,
Filing systems.

Module 2: Community Trade mark Regulation
Regulation 2015/2424,
Practical impact.

Module 3: Registering trade marks
Pre-filing considerations, searches and parameters,
Classification of trade marks (Nice, Vienna),
Application to Irish Patents Office,
Application to EUIPO,
Application to WIPO,
Formality and maintenance procedures.

Module 4: Trade mark registrability
Refusal on absolute grounds,
Acquired distinctiveness,
Refusal on relative grounds,
Official objections,
Overcoming objections and refusals.

Module 5: Publication and oppositions
Publication and its significance,
Observations, differences at IPO, EUIPO, WIPO,
Oppositions practice and procedure,
Irish v EUIPO approach to oppositions,
Appeals,
Registration.

Module 6: Revocation and invalidity
Trade mark use, including genuine use,
Revocation, applicable grounds,
Acquiescence and coexistence,
Invalidity practice and procedure,
Appeals.

Module 7: Infringement of trade marks
Types of infringement,
Defences,
Remedies,
Passing-off,
Litigation.

Module 8: Registrable transactions
Assignments,
Licences,
Security interests,
Agreements, recording transactions.

Module 9: Advanced trade marks
Comparative advertising,
Exhaustion of rights/parallel imports,
Anti-counterfeiting,
Online infringement/web-blocking orders,
Domain name infringement, UDPR,
Plain packaging legislation.
Module 10: Design Law
An introduction to design law in Ireland and the EU,
Unregistered and registered designs,
Infringement and remedies.

Workshops
Workshops are interactive and focus on analysing selected case studies to consolidate the student's knowledge. There is a key emphasis on a practical approach to the case studies. The final workshop will act as a revision of the core issues and as preparation for the Irish trade mark agent exam.

Workshops take place on three Saturdays throughout the course.

Entry requirements

Who should attend?
This course is suitable for the following:

Solicitors, barristers, and trainees who are working in the area of intellectual property or aspire to work in the area,

Professionals working in intellectual property firms and to those managing intellectual property portfolios in industry,

Sole traders and entrepreneurs.

The programme may also be of interest to those preparing for the Irish trademark agent exam, which is offered by the Irish Patents Office. The Irish trademark agent exam is set by the Irish Patents Office, and there is a separate fee payable to the Irish Patents Office in order to sit that exam.

We welcome applications for this course from suitably qualified non-members. Please explain your interest and set out any relevant experience in a cover letter and a brief CV. Such applications are subject to a supplemental fee of €100.

Application dates

We welcome applications for this course from suitably qualified professionals. Your application must be approved before you can formally register on the course. To apply please email the following documents to diplomateam@lawsociety.ie :

A completed application form

Your Curriculum Vitae

A short cover letter setting out your relevant experience

Please note, for non-members this course is subject to a supplemental fee of €100 bringing the total course fee to €1,750. No fees are required prior to approval.

Duration

Delivery Method
Lectures released on Wednesdays with interactive Saturday workshops. Available to view on-demand.

More details
  • Qualifications

    Certificate

  • Attendance type

    Part time,Evening,Daytime,Weekend,Blended

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    Course provider