Cours certifié - Advanced European Union Trade Mark and Design Law !NOUVEAUTÉ!

Programme

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