Lesson 1Descriptiveness and other substantive risks: when slogans or descriptive elements are refused or limitedLooks at descriptiveness, genericness, and other key risks. Focuses on slogans and descriptive parts, secondary meaning, disclaimers, and how EU, US, and Japan deal with tricky 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/limitationsExplains national and regional filing paths and the Madrid System. Compares EUIPO, USPTO, and JPO processes, costs, and timelines, and shows 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 similaritiesLooks at how to check earlier rights and likelihood of confusion. Explains comparing signs and goods, phonetic, visual, and conceptual similarity, and how EU, US, and Japan weigh these 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 plans.
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 areas. Focuses on vehicles, electronics, software, repair and maintenance, and advertising, with drafting tips and overlap risk handling.
Nice classes for vehicles and partsElectronics and smart devices classificationSoftware, apps and SaaS in Nice classesRepair, maintenance and installation servicesAdvertising, marketing and retail servicesLesson 6Trademark 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 reading results.
Defining search scope and objectivesUsing EUIPO eSearch and TMviewSearching USPTO TESS effectivelySearching J‑PlatPat and Japanese dataUsing WIPO Global Brand DatabaseLesson 7Selecting trademark types: word marks, figurative marks (logos), slogans and stylized marks — legal treatment across jurisdictionsExplains word, figurative, slogan, and stylized marks and their legal handling. Compares registrability, scope of protection, and enforcement effects 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/JPLooks at portfolio maintenance, renewals, and recordals in EU, US, and Japan. Covers assignments, licensing, security interests, renewal periods, fees, and effects 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 trademark law: distinctiveness, registrability, and grounds for refusal in EU, US, JapanLooks at distinctiveness standards and registrability in EU, US, and Japan. Explains absolute and relative grounds for refusal, acquired distinctiveness, and how examiners check marks in industrial and commercial areas.
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 harmonizing word mark + logo protectionFocuses on building consistent global brands across key markets. Covers jurisdiction choice, filing sequences, word and logo combos, transliteration, and matching 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
