The Principles of Trade Mark Law for Patents Candidates - Mentor's Guide (2010)

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Mentor’s Guide

Principles of Trade Mark Law for Patents Candidates Foundation Level Training Manual Author: Rebecca Chambers Editors: Keith Farwell and Robert Weston

Principles of Trade Mark Law for Patents Candidates Foundation Level Training Manual Mentor’s Guide

Author: Rebecca Chambers Editors: Keith Farwell and Robert Weston

ďƒŁ Chartered Institute of Patent Attorneys 2009

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The moral rights of the author have been asserted.

All rights reserved. No part of this publication may be translated, reproduced, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording or otherwise, without the prior permission of the author. Š Chartered Institute of Patent Attorneys, 2010 Published and placed on sale by: The Chartered Institute of Patent Attorneys 95 Chancery Lane London WC2A 1DT United Kingdom Tel: +44 20 7405 9450 Fax: +44 20 7430 0471 Website: www.cipa.org.uk

ISBN 978-0-903932-40-0 This Trainer’s Guide should be used in conjunction with the Training Manual.

Printed and bound by Intype Libra Ltd, Wimbledon.

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Introduction

Welcome to the Principles of Trade Mark Law for Patents Candidates Foundation Level Training Manual Mentor’s Guide.

This Guide is designed to accompany the Principles of Trade Mark Law for Patents Candidates Foundation Level Training Manual, which we have written to assist students preparing to take the Principles of Trade Mark Law for Patents Candidates Foundation Level examinations.

The manual is designed primarily for trainees who are new to trade marks and who do not have day-to-day experience of a trade marks practice.

We have designed the manual to help students prepare for the examination. However, we must stress to them that simply reading this manual alone cannot guarantee exam success. We encourage them to try to read more widely on the subject wherever possible, and we also recommend that they attend the lectures provided by the Informals. If you are able to suggest further reading for them at any point, this will be most helpful.

We also stress that what we cover here is law, rather than practice. As an example of what this means, we talk about the requirements for filing a valid trade mark application in the UK, but don’t discuss how to fill in the application form.

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What is the Mentor’s Guide for?

Although the manual is generally designed for trainees to study alone, most trainees will, at various stages, need some guidance, input and support from you, as their appointed mentor. This is the object of the Mentor’s Guide.

The manual begins by covering general areas, then continues in separate sections that deal with the UK, the CTM and the Madrid Protocol. These sections are divided into modules. The modules are colour-coded so that, with very few exceptions, you can decide the order in which trainees tackle them, to suit your own training needs.

However, trainees must start with the Orange Module.

There is some freedom to choose the order for working through the modules – for example, to tie in with what the trainee is working on or learning about day to day.

However, some modules must be completed before others can be worked through.

Each module begins with a short introduction to what it covers and what trainees can expect to have achieved by the time you have finished it. The modules will include some information, research, exercises to attempt and a short quiz for trainees to review what they have learnt. At the start of each module, we indicate approximately how long it will take to complete, assuming careful study of all the recommended reading material. We will also tell you what additional materials the trainee needs to complete the module - generally, this will require internet access.

This Guide also briefs you on areas that trainees may want to ask questions about. We also suggest, for those of you who have a trade marks practice, using relevant files and documents from your office to help build on what the trainee has learnt

4

Orange Module Sources and Resources

In this module, we begin by introducing students to the main internet resources with which they must become familiar. We look briefly at the UK-IPO, OHIM and WIPO websites, helping students to find the law and implementing regulations with which they need to become familiar.

This is an introductory module, mainly designed to help students become familiar with using important resources, so we explain to them that they will have the opportunity to learn much more about the topics mentioned here as they work through the manual. At this stage, they should not be too concerned about understanding the detail.

To complete this module, students will need access to the internet and the following web pages in particular 

The Trade Marks Act 1994 http://www.ipo.gov.uk/tm/legal/tmact94.pdf

The Trade Marks Rules 2008 http://www.ipo.gov.uk/tmrules2008.pdf 

Council Regulation (EC) No 207/2009 http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009: 078:0001:0042:EN:PDF



The Community Trade Marks Rules http://oami.europa.eu/ows/rw/resource/documents/ CTM/regulations/2868en-codified.pdf



Protocol to the Madrid Agreement http://www.wipo.int/madrid/en/legal_texts/trtdocs_wo016.html

Students will need about a day to work through this module, because of the amount of reading involved.

They should move on to the White Module after completing this one.

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White Module Introduction to Trade Mark Law and Background

In this module, the trainees build on what they learnt while looking at resources.

We talk about the purpose and history of trade marks and look further at the Trade Marks Act 1994 and secondary and other legislation. We consider the history of trade marks, particularly in the UK, and look further at topics introduced in the previous module and introduce the Paris Convention.

To complete this module, students need 

The Trade Marks Act 1994 http://www.ipo.gov.uk/tm/legal/tmact94.pdf

The Trade Marks Rules 2008 http://www.ipo.gov.uk/tmrules2008.pdf 

DIRECTIVE 2008/95/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 22 October 2008 to approximate the laws of the Member States relating to trade marks http://eur-lex.europa.eu/LexUriServ/LexUriServ.do? uri=OJ:L:2008:299:0025:0033:EN:PDF



The Paris Convention for the Protection of Industrial Property, as amended at Stockholm 1967 and 1979, effective 3 June 1984 http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html

Students will need about a day to complete this module.

There is a great deal of reading matter in this module and we introduce many new concepts, so students may be feeling a bit confused by the time they have finished this module. We stress that we will look in more detail at these concepts in later modules, but it might also be reassuring to students if you are able to reinforce this message.

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Silver Module Passing-Off

In this module, we give the student a basic introduction to the concept of passing-off.

We discuss briefly the difference between common law and civil law countries.

To complete this module, students need 

The Trade Marks Act 1994 http://www.ipo.gov.uk/tmact94.pdf

Students are likely to need about half a day to complete this module.

After working through this module, the student may wish to talk to you about unfair competition law. We mention this, but it is outside the scope of this manual generally, so it may help the student if you are able to discuss it.

It might also be useful to discuss the concept of torts generally, as well as Trade Descriptions Act 1968, which we refer to briefly along with the role of local Trading Standards officers.    To follow up this module, and add depth to the student’s understanding of this important subject, we strongly recommend that they read   Passing Off: Law and Practice by John Drysdale and Michael Silverleaf Publisher: Butterworths Law (31 Dec 1986) ISBN-10: 0406253404 ISBN-13: 978-0406253408 

Reckitt & Colman Ltd v Borden Inc [1990] 1 RPC 341 1

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Green Module Distinctiveness and Absolute Grounds

Before beginning this module, students should have worked through the White Module.

Here, we talk about distinctiveness in trade mark terms and what makes a mark nondistinctive. We look at Section 3(1) of the Trade Marks Act 1994 in some detail.

We explain that overcoming Trade Marks Registry objections on absolute grounds falls under practice, and is therefore outside the scope of this manual. However, trainees may wish to talk to you about this.

To complete this module, students will need 

The Trade Marks Act 1994 http://www.ipo.gov.uk/tm/legal/tmact94.pdf



The Trade Marks Rules 2008 http://www.ipo.gov.uk/tmrules2008.pdf

It will take about half a day for students to complete this module.

We recommend that trainees read the following when they have finished this module, to add to their understanding of the subject. The TREAT case (British Sugar Plc v James Robertson & Sons Ltd, [1996] RPC 281).

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Turquoise Module Prior Rights and Relative Grounds

Trainees should have worked through the White and Green Modules before they begin this one.

In this module, we take an introductory look at prior rights in trade marks, and the relative grounds on which a third party may raise objections to an application.

We explain that the UK Trade Marks Registry does not raise objections on relative grounds.

To complete this module, students need 

The Trade Marks Act 1994 http://www.ipo.gov.uk/tmact94.pdf



The Trade Marks Rules 2008 http://www.ipo.gov.uk/tmrules2008.pdf

It will take less than half a day for students to complete this module.

We recommend to trainees that they read these cases after they have completed this module 

Sabel v Puma C-251/95 [1998] RPC 199



Canon v Metro-Goldwyn-Mayer (formerly Pathe) C-39/97 [1999] RPC 118.

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Yellow Module Filing of UK Trade Mark Applications

Before trainees begin this module, they should already have worked through the Green and Turquoise Modules.

Students build on what they studied in the earlier modules, and learn about the law relating to filing and examination of trade mark applications at the UK Trade Marks Registry.

We talk about the requirements for filing an application, including the fees.

To complete this module, students need 

The Trade Marks Act 1994 http://www.ipo.gov.uk/tmact94.pdf



The Trade Marks Rules 2008 http://www.ipo.gov.uk/tmrules2008.pdf



‘How we classify’, IPO website http://www.ipo.gov.uk/types/tm/t-applying/t-class.htm

Students are unlikely to need more than half a day for this module.

Because this manual focuses on the law, rather than on practice, trainees may wish to discuss the practicalities of filing with you.

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Navy Module Examination, Registration and Renewal of UK Trade Mark Applications

Before students begin this module, they should already have completed the Yellow Module.

In this module, we look at what happens to trade mark applications at the UK Trade Marks Registry after filing. We also talk about the publication, registration and the renewal of a UK trade mark.

To complete this module, trainees will need 

http://www.ipo.gov.uk/



The Trade Marks Act 1994 http://www.ipo.gov.uk/tmact94.pdf



The Trade Marks Rules 2008 http://www.ipo.gov.uk/tmrules2008.pdf

It will take trainees about half a day to work through the module.

As areas of practice, as opposed to law, fall outside the scope of this module, trainees may wish to know, for example, what a letter from the Trade Marks Registry looks like.

They might also like to discuss reasons why, for example, a restoration might be refused.

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Lavender Module Oppositions in the UK

Before trying this module, students should have worked through the Navy Module.

In this module, we talk in more detail about oppositions and observations, which we mentioned briefly in the previous module.

To complete this module, trainees need 

http://www.ipo.gov.uk/



The Trade Marks Act 1994 http://www.ipo.gov.uk/tmact94.pdf



The Trade Marks Rules 2008 http://www.ipo.gov.uk/tmrules2008.pdf

Students need approximately half a day to complete this module.

We mention that at OHIM, only the proprietors of earlier rights may oppose, whereas in the UK, anyone may do so. We explain that this may change. Students may like to talk to you about this.

The filing of evidence falls within the scope of practice rather than law, and we therefore don’t go into detail in this manual. However, students may wish to talk to you about this, and it might also be helpful for them to see some of your files that deal with oppositions, if possible.

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Gold Module Infringement of a UK Trade Mark Registration

In this module, we introduce trainees to the rights conferred by a trade mark registration, the acts which amount to infringement of those rights and the limitations of the effect of a trade mark registration.

To complete this module, trainees will need 

The Trade Marks Act 1994 http://www.ipo.gov.uk/tmact94.pdf

It should take students about half a day to work through this module.

We mention the following cases, which trainees might like to read in full when they have finished this module 

Trebor Bassett Ltd v The Football Association [1997] FSR 211



AB Volvo v Heritage (Leicester) Ltd [2000] FSR 253



ARSENAL case ([2003] ETMR 19)

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Red Module Damages and Remedies

Before starting this module, students should have completed the Silver and Gold Modules.

In this module, we take a brief look at the remedies that may be available to someone who has suffered from someone taking unfair advantage of their trade marks, building on what trainees learnt in the modules on passing-off and infringement.

Students will not need any other materials to complete this module.

They will need less than half a day to work through this module.

As this is only a very brief introduction to this subject, trainees may find it helpful to talk about 

Safeguards on the rights of defendants and third parties



Appeals against granted remedies

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Blue Module Licences and Assignments of UK Trade Marks

Before trying this module, students should have completed the Navy Module.

In this module, we will discuss the assignment and licensing of registered trade marks in the UK.

To complete this module, trainees need 

http://www.ipo.gov.uk/



The Trade Marks Act 1994 http://www.ipo.gov.uk/tmact94.pdf



The Trade Marks Rules 2008 http://www.ipo.gov.uk/tmrules2008.pdf

They will need less than half a day to complete this module.

Points that students might like to discuss with you include 

Stamp duty – we explain that, with some limitations, it does not apply to intellectual property transactions



Assignments which might constitute a restriction on the free movement of goods.

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Purple Module Loss of Trade Mark Rights in the UK

Before trainees start this module, they should have worked through the White, Yellow and Navy Modules.

In this module, we look at how it is possible to lose rights in trade marks, looking at invalidation, revocation and rectification.

We also talk about steps that trade mark owners can take to prevent this happening.

We also ask trainees to look at the page of the UK-IPO website that refers to intervention.

Trainees will need to look at 

The IPO website http://www.ipo.gov.uk/



The Trade Marks Act 1994 http://www.ipo.gov.uk/tm/legal/tmact94.pdf



The Trade Marks Rules 2008 http://www.ipo.gov.uk/tmrules2008.pdf

It will take about half a day to complete this module.

If you have any files covering invalidation, revocation or rectification, it would be useful for trainees to be able to see actual examples of what happens in these actions.

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Brown Module Certification and Collective Marks

Before beginning this module, trainees should have worked through the Yellow Module.

In this module, we introduce students to Certification Marks and Collective Marks, explaining that they are relatively rare.

To complete this module, students will need 

The IPO website http://www.ipo.gov.uk/



The Trade Marks Act 1994 http://www.ipo.gov.uk/tmact94.pdf



The Trade Marks Rules 2008 http://www.ipo.gov.uk/tmrules2008.pdf

Students will need less than half a day to complete this short module.

We recommend that they read the Trade Marks Registry Work Manual chapter at http://www.ipo.gov.uk/tmmanual-chap4-certcoll.pdf after they have completed this module.

It will also be very helpful to them to be able to read any files that you have that include regulations for certification or collective marks.

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Mauve Module Counterfeiting and Parallel Imports

In this module we talk about situations where the owners of trade marks have to deal with unauthorised use of their marks, covering parallel imports, “grey goods” and anti-counterfeiting measures, as well as the roles of trading standards officers and HM Revenue & Customs.

To complete this module, trainees will need 

The Trade Marks Act 1994 http://www.ipo.gov.uk/tmact94.pdf



SI 2004 No 1473 “The Goods infringing Intellectual Property Rights (Customs) Regulations 2004



CIPA Journal July 2009 p 454-5 [CIPA members can access this online at: http://www.cipa.org.uk/ download_files/CIPA-2009-07-pp433-504.pdf]

It will take trainees about half a day to work through this module.

After they have finished this module, we recommend that students read the text of Customs Regulation 1383/2003, which is available at http://eur-lex.europa.eu/ LexUriServ/LexUriServ.do?uri=OJ:L:2003:196:0007:0014:EN:PDF.

If you have files covering any of these areas, it would be helpful if you could discuss them with the student.

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Bronze Module Introduction to the Community Trade Mark

Trainees should have completed the whole of the section covering the UK before embarking on this section, as basic concepts are explained there, and we will be building on them here, rather than covering them again.

To complete this module, trainees need 

DIRECTIVE 2008/95/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 22 October 2008 to approximate the laws of the Member States relating to trade marks http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri= OJ:L:2008:299:0025:0033:EN:PDF



Council Regulation (EC) No 207/209 http://eur-lex.europa.eu/LexUriServ/LexUriServ.do? uri=OJ:L:2009:078:0001:0042:EN:PDF



Commission Regulation No 2868/95 http://oami.europa.eu/ows/rw/resource/documents/OHIM/ news/newsItem/2868en-Codified.pdf



EC Treaty http://www.europarl.europa.eu/topics/treaty/pdf/amst-en.pdf

Trainees need about a day for this module, as they need to do a considerable amount of reading.

After completing this module, we recommend that students learn more about the institutions of the EU by visiting http://europa.eu/index_en.htm.

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Scarlet Module Making an Application for a Community Trade Mark

Before starting this module, students should have worked through the Bronze Module.

This module introduces the filing of a CTM and we include a look at the form. We talk about the various ways to file, but explain that OHIM prefers electronic filing.

To complete this module, trainees will need 

The OHIM website http://oami.europa.eu/ows/rw/pages/index.en.do



Council Regulation (EC) No 207/209 – The Community Trade Mark Regulation http://eur-lex.europa.eu/LexUriServ/ LexUriServ.do?uri=OJ:L:2009:078:0001:0042:EN:PDF



Commission Regulation No 2868/95 http://oami.europa.eu/ows/rw/resource/documents/ OHIM/news/newsItem/2868en-Codified.pdf

It will take trainees about half a day to complete this module.

Students may wish to discuss practical filing problems with you.

We also recommend that they discuss claiming priorities with you, including the differences between total priority, partial priority and multiple priorities.

It will be helpful also to talk to students about how to substantiate priority claims.

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Lemon Module Introduction to European Competition Law

Before starting this module, trainees should have worked through the Bronze Module.

In this module, we spend some time looking at areas of European competition law and talk about the EU treaty and relevant matters that arise from it.

To complete this module, students will need 

Treaty on European Union and of the Treaty establishing the European Community http://eur-lex.europa.eu/LexUriServ/LexUriServ.do? uri=OJ:C:2006:321E:0001:0331:EN:PDF

It will take about half a day for students to work through this module.

We suggest several cases as further reading 

Case 78/70 Deutsche Grammophon GmbH v Metro-SB-Grossmaerkte GmbH & Co. KG [1971] ECR. 487



Case 16/74 Centrafarm BV v Winthrop BV [1974] ECR. 1183



Case 192/73 Hag I (Van Zuylen Frères v Hag AG) [1974] ECR. 731



Case 102/77 Hoffmann-La Roche & Co. AG v Centrafarm Vertriebsgesellschaft Pharmazeutischer Erzeugnisse mbH [1978] ECR. 1139



Case 3/78 Centrafarm BV v American Home Products Corporation [1978] ECR. 1823



Case C–10/89 Hag II (SA CNL-Sucal v HAG GF AG) [1990] ECR. I-3711.

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Aqua Module Grounds for Refusal of a CTM, and Registration

Before beginning this one, trainees should have completed the Bronze and Scarlet Modules. In this module, we look at OHIM’s examination of applications and also look briefly at what happens after a mark had been accepted.

To complete this module, students need 

The OHIM website



The OHIM Manual of Trade Mark Practice Part B http://oami.europa.eu/ows/rw/resource/documents/ CTM/legalReferences/partb_examination.pdf



Council Regulation (EC) No 207/209 – The Community Trade Mark Regulation http://eur-lex.europa.eu/LexUriServ/LexUriServ.do? uri=OJ:L:2009:078:0001:0042:EN:PDF

Students will need about half a day to work through this module.

Some useful further reading. 

Case C–299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd, June 18, 2002, [2002] E.C.R. II-5475; [2002] ETMR. 955(81)



Case C–363/99 Koninklijke KPN Nederland NV v Benelux Trade Marks Office [2004] ETMR 57



Case C–210/96 Gut Springenheide and Rudolf Tusky v Oberkreisdirektor des Kreises Steinfurt—Amt für Lebensmittelüberwachung (Chief Administrative Officer of the Rural District of Steinfurt-—Office for Supervision of Foodstuffs) [1998] E.C.R. I–4681; OHIM O.J. 3/99 561

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Cream Module Law on Community Oppositions

Students should have completed the Bronze, Scarlet and Aqua Modules before starting this one.

In this short module, we will talk about oppositions at OHIM and the grounds on which opposition may be filed. We refer to the importance of Sabel v Puma in this context.

To complete this module, trainees will need 

Commission Regulation No 2868/95 http://oami.europa.eu/ows/rw/resource/documents/ OHIM/news/newsItem/2868en-Codified.pdf



Council Regulation (EC) No 207/209 – The Community Trade Mark Regulation http://eur-lex.europa.eu/LexUriServ/LexUriServ.do? uri=OJ:L:2009:078:0001:0042:EN:PDF

We recommend that students spend some time reading Case C-251/95 of 11 November, 1997) Sabèl BV v Puma AG, Rudolf Dassler Sport

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Beige Module Duration and Renewal of a CTM

Before they begin this module, trainees should have completed the Bronze and Scarlet Modules.

This is another fairly shortly module. We look briefly at the lifetime of a registered CTM and how to renew a registration, as well as at the alteration and surrender of a registered CTM.

To complete this module, trainees need 

Commission Regulation No 2868/95 http://oami.europa.eu/ows/rw/resource/documents/OHIM/ news/newsItem/2868en-Codified.pdf



Council Regulation (EC) No 207/209 – The Community Trade Mark Regulation http://eur-lex.europa.eu/LexUriServ/LexUriServ.do? uri=OJ:L:2009:078:0001:0042:EN:PDF



List of fees http://oami.europa.eu/ows/rw/pages/CTM/feesPayment/listFees.en.do

This module will take less than a day to work through.

As students are unlikely to have had any practical experience of these areas, it will be useful if you can show them files covering the renewal of a CTM, and discuss with them reasons why a trade mark owner might want, or need, to surrender a CTM.

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Copper Module Rights Conferred by a Community Trade Mark Registration, and Infringement

Before they begin this module, students should have completed the Bronze and Aqua Modules.

In this module, we look at the rights which a proprietor has in a CTM, infringement of CTMs and at limitations on the rights of proprietors. We don’t cover practice in relation to the infringement of a CTM, as this is outside the scope of this manual.

To complete this module, trainees need 

Commission Regulation No 2868/95 http://oami.europa.eu/ows/rw/resource/documents/ OHIM/news/newsItem/2868en-Codified.pdf



Council Regulation (EC) No 207/209 – The Community Trade Mark Regulation http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009: 078:0001:0042:EN:PDF

Students will need about half a day for this module.

We mention that there are circumstances in which proprietors may seek a declaration of non-infringement from a national court. Students may wish to discuss this with you.

25

Violet Module Law relating to Revocation and Invalidity of a Community Trade Mark

Trainees should have worked through the Bronze, Beige and Copper Modules before trying this one.

In this module, we look at why a CTM might be revoked, and we consider the reasons for revocation. We also discuss declarations of invalidity.

To complete this module, students need 

Commission Regulation No 2868/95 http://oami.europa.eu/ows/rw/resource/documents/ OHIM/news/newsItem/2868en-Codified.pdf



Council Regulation (EC) No 207/209 – The Community Trade Mark Regulation http://eur-lex.europa.eu/LexUriServ/LexUriServ.do? uri=OJ:L:2009:078:0001:0042:EN:PDF



List of fees http://oami.europa.eu/ows/rw/pages/CTM/feesPayment/listFees.en.do

It will take about half a day to complete this module.

It will be helpful if trainees can see any files that you have covering either the revocation of a CTM, or a declaration of invalidity. If you have applied for either, it will be useful to discuss the reasons and outcome with the trainee.

26

Peach Module Seniority and Conversions

Trainees should have completed the Bronze and Scarlet modules before tackling this one.

Here we look at seniority and also briefly at conversion into national rights.

To complete this module, students will need 

Commission Regulation No 2868/95 http://oami.europa.eu/ows/rw/resource/documents/ OHIM/news/newsItem/2868en-Codified.pdf



Council Regulation (EC) No 207/209 – The Community Trade Mark Regulation http://eur-lex.europa.eu/LexUriServ/LexUriServ.do? uri=OJ:L:2009:078:0001:0042:EN:PDF

It will take students less than half a day to work through this module.

It will be helpful if you are able to discuss the benefits to trade mark owners of being able to claim seniority and to convert, and to see any files you have that include these areas.

27

Lime Module Licences and Assignments of Community Trade Marks Before they start this module, students should have completed the Bronze, Scarlet and Copper Modules.

In this module, we look at licensing the use of a registered CTM and at transferring ownership of CTMs. We also deal briefly with the recordal of simple changes of name and address.

To complete this module, trainees will need 

Commission Regulation No 2868/95 http://oami.europa.eu/ows/rw/resource/documents/ OHIM/news/newsItem/2868en-Codified.pdf



Council Regulation (EC) No 207/209 – The Community Trade Mark Regulation http://eur-lex.europa.eu/LexUriServ/LexUriServ.do? uri=OJ:L:2009:078:0001:0042:EN:PDF

Trainees should need less than half a day for this module.

We explain that whether a matter is considered to be a transfer of ownership or a matter of recording a change of name may depend on national laws. It will be helpful if you are able to discuss these circumstances and countries where the approach differs.

28

Emerald Module Restitutio in Integrum

This should be the final module in the Community Trade Mark section that students work though.

In this short module, we look at resitutio, explaining what it is, the rare circumstances under which it may be granted and safeguards.

To complete this module, trainees will need 

Commission Regulation No 2868/95 http://oami.europa.eu/ows/rw/resource/documents/ OHIM/news/newsItem/2868en-Codified.pdf



Council Regulation (EC) No 207/209 – The Community Trade Mark Regulation http://eur-lex.europa.eu/LexUriServ/LexUriServ.do? uri=OJ:L:2009:078:0001:0042:EN:PDF



List of fees http://oami.europa.eu/ows/rw/pages/CTM/feesPayment/listFees.en.do

It will take less than half a day to complete this module.

If you have ever had reason to apply for restitutio, it will be very helpful for the trainee to be able to examine the file.

29

Grey Module The Madrid Agreement and Protocol: Introduction and Background Students should have completed all the UK modules before they begin this section.

This module introduces the Madrid Protocol. We also mention briefly the Madrid Agreement but generally it falls outside the scope of this manual.

Trainees will learn about the various online resources available as they work through this module.

To complete it, trainees will need 

The WIPO website http://www.wipo.int/portal/index.html.en



The Protocol relating to the Madrid Agreement Concerning the International Registration of Marks http://www.wipo.int/madrid/en/legal_texts/trtdocs_wo016.html



The Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement http://www.wipo.int/export/sites/www/madrid/en/legal_texts/pdf/ common_regulations.pdf



UK-IPO International Examination Guide http://www.ipo.gov.uk/tmmanual-chap5-international.pdf



Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol http://www.wipo.int/madrid/en/guide/

Students will take about a day to work through this module, which includes time to look at the various websites listed.

30

Magenta Module The Madrid Protocol: Filing Applications, from a UK Perspective and Filing Subsequent Designations Trainees should finish the Grey Module before starting this one.

In this module, we look at the procedure for filing a trade mark application under the Madrid systems from the point of view of a UK applicant.

We also look at the procedure for filing “subsequent designations”.

To complete this module, students will need 

The Protocol relating to the Madrid Agreement Concerning the International Registration of Marks http://www.wipo.int/madrid/en/legal_texts/trtdocs_wo016.html



The Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement http://www.wipo.int/export/sites/www/madrid/en/legal_texts/pdf/ common_regulations.pdf



Forms http://www.wipo.int/madrid/en/forms/



Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol http://www.wipo.int/madrid/en/guide/



Fee calculator http://www.wipo.int/madrid/en/fees/

Trainees will take about a day, or a little less, to work through this module.

It would be useful if you are able to discuss the mechanics of paying IR fees with the student.

31

Lilac Module The Madrid Protocol: WIPO’s Examination of Applications, and Publication

Before starting this module, trainees should have completed the Grey and Magenta Modules.

In this module, we talk about what WIPO actually does once it has received a new International Registration. We look at what happens if it finds any irregularities in the International Registration, and we give students an opportunity to browse the Gazette.

To complete this module, trainees will need 

The Protocol relating to the Madrid Agreement Concerning the International Registration of Marks http://www.wipo.int/madrid/en/legal_texts/trtdocs_wo016.html



The Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement http://www.wipo.int/export/sites/www/madrid/en/legal_texts/pdf/ common_regulations.pdf



WIPO Gazette http://www.wipo.int/madridgazette/en/

This module will take less than half a day to work through.

If you have any files that include rejections of International Registrations in any countries, please could you discuss these with the student.

32

Ivory Module The Madrid Protocol: Replacement, Renewals, Assignments, Merging and Licensing Trainees should have completed the Grey and Lilac Modules before beginning this one.

In this module, we look at the renewal of an International Registration, as well as at replacement and what it may mean to the holder of an International Registration. We also discuss transfer of ownership and licensing of an International Registration and some of the implications.

To complete this module, students will need 

The Protocol relating to the Madrid Agreement Concerning the International Registration of Marks http://www.wipo.int/madrid/en/legal_texts/trtdocs_wo016.html



The Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement http://www.wipo.int/export/sites/www/madrid/en/legal_texts/pdf/ common_regulations.pdf



Forms http://www.wipo.int/madrid/en/forms/

It will take about half a day to work through this module.

As replacement is a completely new topic, students may wish to talk to you about its implications.

33

Azure Module The Madrid Protocol: Central Attack, Transformation, Infringement, Limitation, Renunciation and Cancellation

Students should have worked through the Grey, Magenta and Lilac Modules before this one.

In this module, we look at the way in which third parties can challenge an International Registration under the “central attack” provision. We also look at what happens when a third party attacks that part of an International Registration that is protected in the UK, and, very briefly, at other post-registration issues.

To complete this module, trainees need 

The Protocol relating to the Madrid Agreement Concerning the International Registration of Marks http://www.wipo.int/madrid/en/legal_texts/trtdocs_wo016.html



The Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement http://www.wipo.int/export/sites/www/madrid/en/legal_texts/pdf/ common_regulations.pdf



Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol http://www.wipo.int/madrid/en/guide/

Trainees should not need more than half a day for this module.

If you have dealt with cases of central attack and transformation, it would be useful to talk to your student about why this occurred.

34

Jade Module The Madrid Protocol: Refusal

Before beginning this module, trainees should have completed the Grey, Magenta and Lilac Modules.

In this module, we talk fairly briefly about the differing approaches to examination and opposition in the context of what happens when designated countries refuse a registration under the Protocol.

To complete this module, students will use ď Ź

The Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement http://www.wipo.int/export/sites/www/madrid/en/legal_texts/pdf/ common_regulations.pdf

ď Ź

Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol http://www.wipo.int/madrid/en/guide/

It is unlikely to take trainees more than half a day to complete this module.

Students may well not have come across any approaches to examination and opposition other than that of the UK-IPO, so it would be useful to have a general chat about how these matters may differ in other systems.

35

Cerise Module Relationship between the Protocol, the CTM, and the UK National Register, Comparison of Advantages and Conclusion

This module is the final one of this manual, and students should have completed all the other modules before starting this one.

In it, students revise what they have learnt in earlier modules and we look at the relative merits of the different registration systems, considering the various systems particularly from the point of view of a UK applicant.

No additional materials are needed.

This is a very short module, and will take less than half a day to work through.

We stress that this manual covers trade mark law, not practice and that we have not been able to include practical matters, including how to advise clients. We therefore remind trainees that this manual is not intended to help them with practicing as a trade mark attorney, and remind them that there is much they will learn only in day-to-day practice in trade marks.

We strongly advise that they build on what they have learnt here by working through the other trade marks training manuals in this series.

In this module, we ask students to prepare a simple table comparing the various advantages and disadvantages of the various routes to trade mark registration. They may wish to discuss this with you.

36

Sources and Acknowledgements

The author wishes to thank the following people for their assistance 

David Bradley



William Jones



Nicholas Pope and the staff at CIPA



Robert Weston



Keith Farwell



Arthur Boff

Source materials 

UK-IPO website http://www.ipo.gov.uk



The WIPO website http://www.wipo.int/portal/index.html.en The OHIM website http://oami.europa.eu/ows/rw/pages/index.en.do



Council Regulation (EC) No 207/209 – The Community Trade Mark Regulation http://eur-lex.europa.eu/LexUriServ/LexUriServ.do? uri=OJ:L:2009:078:0001:0042:EN:PDF



Elements of Trade Mark Law and Practice by W.M. Faulkner, Chief Executive Officer of the Trade Marks Registry 1944-1950.

37



The UK Trade Marks Training Manual, publ. CIPA 2008



The Foundation Level Training Manual The Madrid Agreement and Protocol publ. CIPA 2004



Foundation Level Foreign Law The Community Trade Mark Training Manual publ. CIPA 2003



Passing-Off Law and Practice, John Drysdale & Michael Silverleaf. Butterworths. 1986.

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Cover-Mentor’s Guide:Layout 1

13/03/2010

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Page 2

Principles of Trade Mark Law for Patents Candidates

Foundation Level Training Manual Author: Rebecca Chambers Editors: Keith Farwell and Robert Weston

The manual that accompanies this Mentor’s Guide will give the trainee a basic introduction to the law relating to trade marks in the UK, as well as the Community Trade Mark and the Madrid Protocol. The manual is designed primarily for those who are new to trade marks and who do not have day-to-day experience of a trade marks practice. We have designed the manual to help trainees to prepare for their examinations on the principles of trade mark law that they need to pass in order to qualify as a UK patent attorney.