Certificate in Trademark Law

Programme objectives

On completion of this Certificate in Trademark Law 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.

Modules

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

Module 1: Introduction to trademarks

• The concept of a trademark,
• Benefits of registration,
• Types of trademarks,
• PGIs, collective, certification, non-conventional,
• Filing systems.

Module 2: Community Trademark Regulation

• Regulation 2015/2424 (23 March 2016),
• Main changes,
• Practical impact.

Module 3: Registering trademarks

• Pre-filing considerations, searches and parameters,
• Classification of trademarks (Nice, Vienna),
• Application to Irish Patents Office,
• Application to EUIPO,
• Application to WIPO,
• Formality and maintenance procedures.

Module 4: Trademark 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

• Trademark use, including genuine use,
• Revocation, applicable grounds,
• Acquiescence and coexistence,
• Invalidity practice and procedure,
• Appeals.

Module 7: Infringement of trademarks

• Types of infringement,
• Defences,
• Remedies,
• Passing-off,
• Litigation.

Module 8: Registrable transactions

• Assignments,
• Licences,
• Security interests,
• Agreements, recording transactions.

Module 9: Advanced trademarks

• 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 trademark agent exam.

Workshops take place on three Saturdays throughout the course.

Assessments

2,500-word written assignment.

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.

Faculty

Lecturers and tutors will consist of solicitors, barristers, and intellectual property practitioners, all of whom are registered trademark agents and European trademark attorneys and who will provide in-depth analysis and practical advice.

Previous lecturers have included:

• Colette Brady, William Fry
• Mary Bleahene, FR Kelly
• Maureen Daly, Beauchamps Solicitors
• Glen Gibbons BL
• Niamh Hall, FRKelly
• Robin Hayes, Whitney Moore Solicitors
• Helen Johnson BL
• Gerard Kelly, Mason Hayes & Curran
• Judy McCullagh, Tomkins
• Patricia McGovern, DFMG Solicitors
• Elaine McGrath, Reddy Charlton
• Kate McKenna, The Stars Group
• Claire O’Mahony, Law Society of Ireland
• Carol Plunkett, Consultant
• Shane Smyth, FRKelly.

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 2021 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 2020. 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.