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Working Towards the 21st Century IP Office Workshop

An all-day workshop developed exclusively for IP Offices around the world. Coordinated by IP Australia, Spain’s Oficina Espanola de Patentes y Marcas and Colombia’s Ministry of Industry, Commerce and Tourism. The workshop will feature several closed door sessions develop specifically for IP Office representatives attending the Annual meeting and will end the day with an open session to all Annual Meeting registrants on the customer-centric topic of e-filing and e-transactions, specifically chosen as a result of a survey to several in-house registrants.

This full day of programming is an excellent opportunity for registrants from your office to benchmark with other offices, network and learn.


Schedule

Tuesday, May 23

8:00 am–8:45 am 
Breakfast
(Exclusive to IP Office Officials)

Join us for breakfast before we start the day of closed door sessions just for IP Office representatives attending the Annual Meeting.
9:00 am–10:15 am

Session 1 – Closed Session
How to Reduce Unsolicited Correspondence: Insight from IP Offices around the World

Unsolicited correspondence is mail from non-official 3rd parties offering trademark registration or renewal services in a manner that often suggests an existing relationship or obligation. IP Rights and their owners’ details are a matter of public record.  This makes it easy for companies to trawl trademark databases and mass mail. Such companies also offer renewal services at an inflated price and other trademark “services” that are often simple and provided free of cost by offices.  These are often expensive and of no or little practical benefit to the IP Right owner.

This growing problem affects unwitting businesses, often SME’s, who are duped into handing over significant sums of money for no tangible benefit.

Join speakers from several offices to discuss and benchmark strategies to counteract and reduce unsolicited mail. Speakers will also share tips and practices on how to raise awareness amongst IP Rights holders to this nefarious practice.

Moderator:

Ana Cariño, Oficina Espanola de Patentes y Marcas (Spain)
           
Speakers:
Magnus Ahlgren, Swedish Patent & Registration Office / SPRO (Sweden)
Dimitris Botis, European Union Intellectual Property Office (EUIPO) (Spain)
Allan James, UK Intellectual Property Office (United Kingdom)

10:15–10:45 am 
Coffee Break           
10:45 am–12:00 pm 

Session 2 – Closed Session
Trademark Register Cluttering

Cluttering occurs when trademark registers become crowded with trademark applications and registrations with broad, generalized claims for goods and/or services. The trademarks are not being used in connection with some or all of the goods and services claimed or there is no intention to use the trademark in connection with some or all of the goods and services claimed. The existence of these types of trademarks on registers often leads to other trademark applications being “held up” as they, on face value, have competing claims to the same or similar goods and services.

IP Offices face the challenge of striking a balance between a system that is streamlined and accessible without excessive regulation and one that more accurately represents actual commercial realities and reduces anti-competitive behavior.

Speakers from different offices will discuss strategies to combat cluttering and achieve balance in the trademark system.

Moderator:
Fatima Beattie, IP Australia (Australia) 
           
Speakers:
Cynthia Henderson, Representative from the United States Patent and Trademark Office (United States)
Damaso Pardo, IP Office of Argentina (INPI) (Argentina)
Jai Prakash, Intellectual Property Office (India)

12:15 pm–1:30 pm
Lunch        
1:45 pm–3:00 pm 

Session 3 – Closed Door Session
Trademark Use: A Closer Look at Bad Faith Registrations and Zombie Marks

Trademark use related issues are a growing theme across different jurisdictional legal structures. How these legal systems have regulated (or not) what is fair use of a trademark and how it affects registration, enforcement and cancellation has become subject to increased international focus. Whether a trademark has been ‘used’ is an important enquiry. Use is a cornerstone of trademark law and fundamental to a trademark registration system.

Speakers from different IP offices will discuss strategies and mechanisms to deal with zombie marks and bad faith registrations and offer different perspectives on trademark use. 

Moderator:
Jose Luis Londoño Fernandez, Ministry of Industry, Commerce and Tourism (Colombia)  

Speakers:
Miguel Angel Margain, Mexican Institute of Industrial Property (IMPI) (Mexico)
Adil El Maliki, Moroccan Office for Industrial and Commercial Property (Morocco)
Shaohua Ouyang, State Administration for Industry & Commerce of the People's Republic of China (SAIC) (China) 


3:00 pm–3:15 pm 

Coffee Break

3:15 pm–4:30 pm 

Session 4
An Open Discussion with IP Offices
(Open to all Annual Meeting Registrants)

A recent INTA survey identified three common themes of interest to members in their interactions with trademark offices:

• Electronic filings and transactions with customers.
• Customer education initiatives.
• Quality and consistency. 

Speakers from Colombia, Spain and Australia will discuss these three themes in turn and provide a unique insight to the current capabilities and emerging challenges they can present for Trademark Offices.
                           
Speakers:
Fatima Beattie, IP Australia (Australia)
Ana Cariño, Oficina Espanola de Patentes y Marcas (Spain)
Jose Luis Londoño Fernandez, Ministry of Industry, Commerce and Tourism (Colombia)
Lachlan Fremantle, IP Australia (Australia)

7:00 pm–8:30 pm 

Government Officials Reception
(By invitation only to Government Officials)
Location: Hospital de Sant Pau

Join INTA’s leadership and government officials from around the world for a reception thanking these officials for their dedication and support of the trademark community. This reception will be held at Hospital de Sant Pau and provides an opportunity for officials to share information and best practices with their colleagues in the trademark community.

 

Saturday, May 2
Sunday, May 3
Monday, May 4
Tuesday, May 5
Wednesday, May 6
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