Advanced European Union Trade Mark and Design Law Certified Course -

Please note that the University Diploma and the Certified Course "Advanced European Union Trade Mark and Design Law" will not be opening this year.

However, seminars 3 (Pleading before the General Court in TM and design matters) and 4 (Alternative Dispute Resolution in IP disputes) will be maintained at a later date.

The details and schedule will be communicated shortly.

Public concerned

Training program for students and practitioners (and future practitioners) active in this area.

Prerequisites / Access conditions

As this is a non-degree training program, there are no formal entry requirements. However, a good command of English (recommended level: B2) is advised.

Teaching objectives

The number of European Union trademarks filed each year exceeds 200 000, while the number of Community design applications filed on an annual basis exceeds 100,000. In addition, the European Union Intellectual Property Office (EUIPO) receives over 20,000 oppositions each year, including more than 2,000 applications for a declaration of invalidity, almost 3,000 appeals to the Boards of Appeal and 300 request for annulment before the General Court of the EU.

This modular training program in Advanced European Union Trade Mark and Design Law is designed for students and practitioners (and future practitioners) interested in this area. Participants may choose to enroll in one or more individual modules according to their interests and professional needs. Upon completion of each module, a certificate of participation will be awarded.

While the full program prepares candidates for the French qualification exam with the mention “marques, dessins et modèles” and for careers as judges or lawyers, the modular format offers flexible learning paths tailored to varying goals and schedules.

Brochure

click on the image to download the brochure.

Content

Module 1: Procedural and evidentiary issues in administrative proceedings: from filing to opposing

Pre-filing consideration & risk assessment: workshop
Workshop – Practical Tools: Effective use of EUIPO tools (eSearch Case Law database), Curia, Darts-IP
Recap on absolute grounds for refusalWorkshop - Drafting a response to an examiner’s objection: Do’s and don’ts
Acquired distinctiveness: what to prove and how?
Overview of opposition proceedings
Proof of use (including non-use excused: evidentiary issues)
Weak marks in opposition proceedings
Opposition based on non-traditional trade marks
Article 8(4) EUTMR - earlier national right: Substantiation; Legal standing; Types of rights that can be invoked; Use of more than mere local significance; Proof of National Law
Article 8(5) EUTMR - Proving reputation: The issue of the “link”; Assessing the risk of injury; Proving due cause

Module 2: Procedural and evidentiary issues in cancellation and appeal proceedings

Revocation proceedings
Invalidity based on relative grounds: Copyright, personality rights and other IP rights; Proving and arguing national laws
Demonstrating bad faith
Overview of proceedings before the Board of appeal
Initiating the appeal
Additional evidence before the Boards
Workshop: Drafting the Statement of grounds and the response
Proceedings before the Grand Board of appeal: representing the intervener

Module 3: Pleading before the General Court in TM and design matters

Introduction to the General Court (including its jurisdiction in IP Matters)
Overview of the process
Organisation of the Court and the Rules of procedure
The scope of Review of the legality of the decision of the Boards of appeal: the grounds for annulment
Pleas raised ex officio by the Court: Public policy; right to be heard etc…)
Workshop: Identifying the weaknesses of the BOA decision in absolute grounds
Parties to the proceedings and their role: the Applicant, the EUIPO and the intervener
Lodging an application for annulment: When (time limits; Missing time limits: Force majeure and “excusable errors”)? How to file an application? By whom (the applicant; the successor in title; representation; Legal aid)
Content of the application: Language issues; Pleas and arguments; Inadmissibility of new pleas; Amplified pleas; The effect of a limitation of the EUTM or the contested mark on the scope of the dispute
Documents and Admissibility of New Evidence
Drafting the conclusions: Admissibility of a head of claim in the form of order sought; Request for the annulment of the contested decision; Request for altering the contested decision; Request regarding the costs
Workshop: Drafting an application and response (including drafting the response of the intervener)
The written procedure: Filing a cross-appeal; Procedural measures; Enquiry measures; Preliminary report
The hearing: Request for a hearing; Preparing the hearing
Advocacy before the general Court: Presentation skills; Basic notion of argumentation and reasoning; Avoiding common errors in arguing; Responding to expected and unexpected questions from the Bench; Developing counterarguments
Judgments and Orders (including Orders and the fixation of costs; Discontinuance; Situations where there is no need to adjudicate ; Requests for the appeal to be allowed to proceed)
Actions before the Court of Justice: The filtering mechanism for appeals and admissibility criteria

Module 4: Alternative Dispute Resolution in IP disputes

Negotiation; Conciliation; Early neutral evaluation; Expert determination Proceedings; Dispute Boards; Adjudication
French conciliation scheme relating to the employee’s inventions disputes under the auspices of the Commission Nationale des Inventions de Salariés (CNIS)
Mediation: The Patent mediation and arbitration centre under the Agreement on a Unified Patent Court; WIPO mediation; EUIPO mediation
Drafting mediation agreements
Transaction: Drafting Transactions; Homologation of transactions; Singapore Convention on Mediation
Introduction to arbitration: Overview of International Arbitration; Pros and cons of arbitration in the context of IP litigation: Ah hoc or Institutional Arbitration UNCITRAL and International Arbitration
Arbitration under the auspices of WIPO
Arbitration of FRAND disputes
Compulsory arbitration regarding the determination of the remuneration to be paid by digital platform services for the use of news content: the French and Australian experience
Arbitrability of IP Disputes: Validity; Licensing; Ownership; Infringement; Violation of moral rights; Arbitration agreement (validity and challenges against its validity)
Initiating the arbitration process: constitution of the Arbitral Tribunal
Drafting of the terms of reference
The Emergency Arbitrator pursuant to the ICC Arbitration Rules
Provisional injunction in arbitration proceedings: A comparative perspective
Conduct of the arbitration proceedings: Determining the law applicable to the dispute
Evidence in arbitration proceedings (including expert witnesses)
Challenge, Recognition and Enforcement of arbitration awards under the New York Convention (1958) (1h30)

Module 5: Granting third party the right to use: the contractual framework

Trade marks as objects of property within the frame work of the EUTMR
Drafting co-existence agreements
Trade mark assignment agreements
Trade mark licenses

Module 6: Advanced EU Design Law (including most recent amendments to the Design regulation)

Protecting the appearance of a product: Copyright, Trade mark, Design, Unfair competition?
The International System; The Hague System; Design Law Treaty (DLT)
Introduction to EU Design Law
Pre-filing considerations and searches
Application for an EU Design
Design invalidity proceedings: Grounds of invalidity and procedure
Design Infringement: Applicable law; Infringing acts; Defenses (Exhaustion of rights; Invalidity; Prior Use); Assessing the infringement; Damages
The “repair clause”
Protecting Designs in the World: China; USA; Japan; Brazil; Korea; India; Australia; Canada

Speakers*

Christoph Bartos, Member of the Boards of Appeal, EUIPO
Valérie-Laure Benabou, Professor, Versailles–Saint-Quentin University
Yann Basire, Professor, CEIPI – University of Strasbourg; Director General and Director of the French Section of CEIPI
Benjamin Fontaine, Partner, Plasseraud IP (Alicante)
Arnaud Folliard-Monguiral, Senior Lawyer, EUIPO
Frédéric Glaize, Partner, Plasseraud IP (Paris)
Anne-Emmanuelle Kahn, Professor, Lyon 2 University
Mehmet Polat Kalafatoglu, Professor, Koç University Law School
Paul Maier, Former President of the Boards of Appeal, EUIPO; Former Director of the Observatory, EUIPO
Pierre Massot, Founder, Arenaire
Iza Junkar, Senior Associate, Hogan Lovells (Alicante)
Stefan Martin, Chairperson of the Board of Appeal, CPVO; Member of the Boards of Appeal, EUIPO
Judges of the General Court of the European Union (to be confirmed)

*subject to modification

Heads of studies

Yann BASIRE, Professor, CEIPI – University of Strasbourg; Director General and Director of the French Section of CEIPI

Stefan MARTIN, Chairperson of the Board of Appeal, CPVO; Member of the Boards of Appeal, EUIPO

Teaching Methods and Language

The programme follows a hybrid format (in-person and online), combining lectures, seminars, and practical workshops.

This training offers a unique opportunity to learn from experienced practitioners, academics, and officials from IP offices.

It is designed to provide in-depth knowledge of European trade mark and design law, with a particular focus on procedural and evidentiary aspects.

The language of teaching is English.

Nature and sanction of the training

This training is an action for skills adaptation and development. Upon completion, a certificate of achievement will be awarded.

Course material

The speakers' presentations and other documents will be made available to participants online on the University of Strasbourg's distance learning platform (Moodle).

Location

Hybrid format :

Module 1: CANCELLED
Module 2: CANCELLED
Module 3: The details and schedule will be communicated shortly
Module 4: The details and schedule will be communicated shortly
Module 5: CANCELLED
Module 6: CANCELLED

Pedagogical and technical assistance

Online courses will be held via a videoconferencing platform. Connection details (link and password) will be provided to participants in advance.
Access to course materials will be provided through the CEIPI distance-learning platform (Moodle). Login credentials will be communicated to participants ahead of the first session.
Participants must ensure they have the necessary technical equipment to attend online sessions, including a computer or similar device and a reliable high-speed internet connection.
CEIPI provides users with technical support to help identify and resolve technical issues in a timely manner. However, CEIPI cannot be held legally responsible for service malfunctions or for participants’ or speakers’ insufficient connection quality or network performance.

Technical support contact: diploma_eutm_cd[at]ceipi.edu