Programs and Events
Trademark Protection under the Madrid and OHIM
Discussion Outline



 Discussion outline


OHIM and WIPO have recently introduced a number of changes to the application process.  In light of these new developments in the law, practitioners will benefit from a discussion concerning the current legal landscape as well as impact of these new changes. This roundtable will draw on participants personal experiences with the OHIM and WIPO application processes as well as the new changes.  Come join your colleagues for lunch, and take part in an active discussion and exchange ideas on the following topics:

  • New Developments in the Madrid System and Community Trademarks (CTMs) – reclassification, potential new members, etc.
  • Latest advances on the Madrid and CTM systems – downloading certified copies of registrations, terminology used on WIPO, refusals, dropping nationals for CTM, and other challenges.
  • Impact of the decision in the IP Translator case regarding the identification of goods and services in CTM applications and registrations.
  • Is use in one EU country is sufficient to count as use in all EU member states?  The impact of the Advocate General’s recommendation to the CJEU in the Omel v. Onel case on this very issue.
  • Registered Community Designs (RCDs) – UCD vs. RCD, Article 5 novelty requirements.
  • Requirements for submitting an international application through the USPTO.
  • Pros and cons of Madrid filing.
  • Advantages and disadvantages of CTMs.



 Suggested Reading


EUROPEAN UNION: Court of Justice Rules on Class Headings.”  INTABulletin.  Vol. 67, No. 13.  July 15, 2012. 

MARQUES speaks out on IP Translator.”  Marques Class 46.  July 5, 2012. 

IP Translator case official decision:  Chartered Institute of Patent Attorneys v. Registrar of Trade Marks.  Case C 307/10.  Judgment of the Court (Grand Chamber).  19 June 2012.

Genuine use of a CTM: the Advocate General takes a middle line.”  Marques Class 46.  July 5, 2012. (just below the article regarding the IP Translator case).

Omel v. Onel Case official Advocate General’s recommendation:  Leno Merken BV v. Hagelkruis Beheer BV Case C 149/11.  Opinion of Advocate General Sharpston.  5 July 2012.

Colombia Joins Madrid Protocol, Changing Landscape in Latin America.”  INTABulletin.  Vol. 67, No. 11.  June 15, 2012.

WIPO Madrid System – current list of members