Lesson 1Descriptiveness and other substantive risks: when slogans or descriptive elements are refused or limitedExamines descriptiveness, genericness, and other substantive risks. Focuses on slogans and descriptive elements, secondary meaning, disclaimers, and how EU, US, and Japan handle borderline cases and partial refusals.
Descriptive and generic terms in practiceSuggestive vs descriptive slogansSecondary meaning and evidenceDisclaimers and non-distinctive elementsGeographical and laudatory indicationsLesson 2Filing systems and routes: national filings, EU trade mark (EUIPO), USPTO national filing, Japan Patent Office, Madrid System basics and advantages/limitationsDescribes national and regional filing routes and the Madrid System. Compares EUIPO, USPTO, and JPO procedures, costs, and timelines, and explains strategic use and limits of international registrations.
EUIPO EUTM filing and scopeUSPTO national filing routesJapan Patent Office filing practiceMadrid System basics and workflowCentral attack and dependency risksLesson 3Likelihood of confusion and prior rights: assessing earlier identical and similar marks and searching for phonetic/visual/conceptual similaritiesAnalyses how to assess earlier rights and likelihood of confusion. Explains comparison of signs and goods, phonetic, visual, and conceptual similarity, and how EU, US, and Japan weigh these factors in practice.
Identifying relevant earlier rightsComparing goods and services overlapPhonetic, visual and conceptual similarityConsumer perception and market contextCoexistence agreements and risk mitigationLesson 4Oppositions, office actions and prosecution timelines: EUIPO, USPTO examination and responses, JPO peculiaritiesCovers oppositions, office actions, and prosecution timelines. Compares EUIPO, USPTO, and JPO procedures, deadlines, evidence standards, and settlement options, with practical response strategies.
Administrative examination stagesResponding to office actionsOpposition grounds and proceduresEvidence, proof of use and surveysAppeals, reviews and settlementsLesson 5Classes of goods and services: applying Nice Classification to vehicles, electronic devices, software, repair/maintenance and advertising servicesCovers Nice Classification structure and practice for key industrial and commercial sectors. Focuses on vehicles, electronics, software, repair and maintenance, and advertising, with drafting tips and overlap risk management.
Nice classes for vehicles and partsElectronics and smart devices classificationSoftware, apps and SaaS in Nice classesRepair, maintenance and installation servicesAdvertising, marketing and retail servicesLesson 6Trade mark search methodology: using EUIPO, USPTO TESS, J-PlatPat, WIPO Global Brand Database, and national registersDetails search planning and tools for clearance and filing. Compares EUIPO, USPTO TESS, J-PlatPat, WIPO Global Brand Database, and national registers, with guidance on search logic, filters, and interpreting results.
Defining search scope and objectivesUsing EUIPO eSearch and TMviewSearching USPTO TESS effectivelySearching J‑PlatPat and Japanese dataUsing WIPO Global Brand DatabaseLesson 7Selecting trade mark types: word marks, figurative marks (logos), slogans and stylised marks — legal treatment across jurisdictionsExplains word, figurative, slogan, and stylised marks and their legal treatment. Compares registrability, scope of protection, and enforcement implications across EUIPO, USPTO, and JPO practice.
Word marks and scope of protectionLogos and figurative mark strategiesStylized word marks and trade dressSlogans and registrability hurdlesSeries marks and family of marksLesson 8Portfolio maintenance and renewals: assignment, licensing, recordals, renewal periods and fees in EU/US/JPExplores portfolio maintenance, renewals, and recordals in EU, US, and Japan. Addresses assignments, licensing, security interests, renewal periods, fees, and consequences of non-compliance or late action.
Renewal periods and grace rulesTracking fees and renewal budgetsRecording assignments and mergersLicense recordals and quality controlNon-use cancellation and auditsLesson 9Fundamentals of trade mark law: distinctiveness, registrability, and grounds for refusal in EU, US, JapanExplores distinctiveness standards and registrability in EU, US, and Japan. Explains absolute and relative grounds for refusal, acquired distinctiveness, and how examiners assess marks in industrial and commercial sectors.
Absolute vs relative grounds for refusalInherent and acquired distinctivenessUse requirements and intent-to-use systemsPublic policy and morality exclusionsBad faith filings and defensive strategiesLesson 10Strategies for global brand consistency: selecting jurisdictions, timing, and harmonising word mark + logo protectionFocuses on building consistent global brands across key markets. Covers jurisdiction selection, filing sequences, word and logo combinations, transliteration, and alignment with marketing and product launches.
Prioritizing key jurisdictionsCoordinating word and logo filingsTransliteration and local language marksFiling around product launch timelinesHouse marks, sub-brands and brand architecture
