Trademark Registration and Use in the EU: Navigating Examination, Refusals, Appeals, and Oppositions

A live 90-minute premium CLE video webinar with interactive Q&A

This program is included with the Strafford CLE Pass. Click for more information.
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Wednesday, July 6, 2022 (in 6 days)

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

or call 1-800-926-7926

This CLE webinar will guide trademark counsel on trademark registration and use in the European Union (EU). The panel will discuss what can and cannot be registered to file the trademark application. The panel will discuss refusals, documentation, the classification system, the examination procedure, and use and proof of use. The panel will address appealing a denied application and oppositions. The panel will offer best practices for U.S. applicant drafters to protect trademarks in Europe without sacrificing U.S. strategy and vice versa.

Description

For companies considering or doing business in Europe, addressing registering trademarks in the EU is an important step. Trademark registration will confer an exclusive right to use the company's marks in Europe.

A registered EU trademark carries a presumption of validity unless and until it is invalidated or revoked. The mark owner can prevent unauthorized third parties from using identical or similar signs and can take action against counterfeit goods in transit in the EU unless it can be proved there was no infringement.

Use of a mark does not have to be claimed before the mark can be registered, and proof of use does not have to be submitted. Also, the EU trademark regulation provides for priority that may be claimed of one or more previous trademark applications filed in or in respect of a state party to the Paris Convention.

Listen as our authoritative panel of IP attorneys examines trademark registration and use in the EU. The panel will discuss what can and cannot be registered and filing the trademark application. The panel will discuss refusals, documentation, the classification system, the examination procedure, and use and proof of use. The panel will also address appealing a denied application and oppositions. The panel will offer best practices for U.S. applicant drafters to protect trademarks in Europe without sacrificing U.S. strategy--and vice versa.

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Outline

  1. Trademark registrations
    1. What can and cannot be registered
    2. Clearance
    3. Filing process
    4. Documentation
    5. Classification system
    6. Use and proof of use
  2. Examination procedure
  3. Refusals
  4. Appealing denied applications
  5. Oppositions
  6. Best practices

Benefits

The panel will review these and other vital issues:

  • What factors should companies and their counsel consider when determining whether to file trademark applications in the EU?
  • What are the grounds for opposing a trademark application or canceling a trademark registration in the EU?
  • What steps can U.S. companies and their counsel take to minimize infringement risks?

Faculty

Kunz-Hallstein, Roberto
Roberto Kunz-Hallstein

Partner
Dr. Kunz-Hallstein Rechtsanwälte

Mr. Kunz-Hallstein practices in all fields of intellectual property, especially in trademark prosecution and...  |  Read More

Olson, Peter Gustav
Peter Gustav Olson

Partner
NJORD Law Firm

Mr. Olson specializes in EU and UK trademarks, EU and UK designs, and domain name conflicts. Having been involved in...  |  Read More

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