Home » Trade Marks » The CITMA Paralegal Seminar ‘Madrid Protocol: tips and tricks – what paralegals need to know’

The CITMA Paralegal Seminar ‘Madrid Protocol: tips and tricks – what paralegals need to know’

Keltie LLP

K2 IP Limited

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(l-r: Roy Scott; Jonathan Clegg; Sharon Fleet; Melanie Oliver; Daniel Smart)

Following her Majesty the Queen’s approval of the ITMA’s Royal Charter and the news that the Trade Mark Administrators had in turn undergone a rebrand and become CITMA Paralegals, Keltie LLP were delighted to host the first CITMA Paralegal seminar on 27th October 2017 at their London office.

The seminar was chaired by Roy Scott from Keltie LLP, who in turn introduced the guest speakers: Sharon Fleet and Melanie Oliver (UKIPO), Jonathan Clegg (Cleveland Scott York) and Daniel Smart (Colman + Smart).

CITMA President Kate O’Rourke welcomed attendees before giving a brief overview of the latest Paralegal developments, including the benefits of undertaking the CITMA Paralegal course and the introduction of CPD from 2019. The CPD requirement was confirmed as 8 hours a year which can be broken down into 4 hours of personal development in the office and 4 hours external development such as webinars, EUIPO seminars etc.

Sharon and Melanie, both Senior Trade Mark Examiners at the UKIPO, were then introduced as the first speakers and they talked about some of the most common errors and deficiencies that they find on new International trade mark applications.  One of the most frequent mistakes is a failure to recognise that the owner’s name and address must be the same as the details of the UK mark on which the International application is based.  Another issue is that the incorrect Entitlement to File is indicated when basing an application on a UK mark (an error which has now been eliminated by a tweaked version of the MM2 form now available through the UKIPO website).  They also highlighted issues relating to a failure to add a colour claim (or indeed limiting a claim by adding a colour that doesn’t feature in the UK application) and the Legal Entity section being left blank which poses a particular problem if designating the United States.

Following a short coffee break, Jonathan Clegg commenced his talk entitled ‘WIPO session’.  However, before we could overwhelm him with the many questions, he made it clear that he doesn’t have any direct influence in the way WIPO handle and process matters!  Interestingly though, he recommended a 2 day course run by WIPO that would be well worth attending.

Jonathan gave us an overview of the latest WIPO news, in particular noting that the Madrid Agreement has now almost become obsolete because all 100 members are party to the Madrid Protocol.  In addition, Jonathan noted that Canada is also at an advanced stage in talks to become member of the Madrid Protocol – with one key stumbling block being that the Nice classification system for goods/services is only used by on a voluntary basis in Canada.  It was also observed that South American countries are reticent about joining the International trade mark system, as they are concerned of the impact on their national trade mark programmes.

In addressing the advantages of filing International trade marks, Jonathan referenced the possibility of avoiding the cost of employing foreign associates, reducing administration costs (e.g. a change of name can be actioned through the main International mark) and the fact that the time period for each designation to reach registration is capped, which is particularly helpful when designating countries that are notoriously slow at processing applications.  He did mention some disadvantages however, namely that the administration can be complex due to the number of parties involved and that the International Registration is also dependent on fate of the base mark for a period of five years.  One further notable disadvantage cited was that WIPO is administrative not substantive in nature meaning, for instance, that they don’t question the legitimacy of assignments.

The final talk of the day was delivered by Daniel Smart and his session was dedicated to filing International marks via the EUIPO.  He began by informing us that he is part of a WIPO Liaison Working Group, which sounds great, the only problem is that WIPO tends to listen more to governments than users and in turn our voice is relatively small in comparison to the many groups affiliated with the EUIPO.

Dan went on to discuss the pros and cons of basing an International on an EU mark as opposed to a UK mark for companies with a real and effective business presence in the UK.  In summary, his position was that basing an International Registration on a UK trade mark is likely to be preferable, as a UK mark may be less likely to be challenged during the five year dependency period (n.b. central attack), the handling fee is cheaper and, of course, the elephant in the room, BREXIT!

A short Q & A session followed, the speakers were thanked for their time and a lively drinks reception ensued in Keltie’s bar area.

Rachel Culverwell Senior Trade Mark Administrator | Roy Scott Senior Paralegal, co-authored 10 November 2017


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