Overview of the Madrid System for International Registration of Trade Marks (RECORDING)

This webinar is intended to provide an overview of the Madrid System of International Registration of Trade Marks. Trade Mark owners face budget and time limitations when registering and maintaining a Trade Mark portfolio. Speakers will provide an introduction to the international route for registration of Trade Marks, together with various tips and best practices in the making use of the Madrid System.

Topics include:

• overview of the legal framework and the main features of the Madrid System,

• overview of the role of the Office of origin, WIPO, and the Office of the designated contracting party,

• tips for preparing to file an International Trade Application,

• priority claims,

• the 5-year dependency period,

• substantive examination,

• drafting of Trade Mark specifications for International Applications,

• recording changes in the International Trade Mark Application,

• transformation, and

• subsequent designations

Denis Croze

Director

World Intellectual Property Organization

Denis Croze is Director of the Madrid Information and Promotion Division, Madrid Registry, Brands and Designs Sector of the World Intellectual Property Organization (WIPO) since September 2020. Prior to this, Mr. Croze held various positions at WIPO, such as Director of the WIPO Regional Office in ASEAN, located in Singapore (2012 -2020), Director of the Assemblies and Documentation Affairs Division (AADD) in the Office of the Director General (2010 -2012), Acting Director Advisor in the Executive Office of the Deputy Director General in charge of  the Copyright and Enforcement Sector (2006 – 2009),  Acting Director Advisor in the Executive Office of the Deputy Director General, Economic Development Sector (2004 - 2006), Head of the International Law Development Section (2002 – 2004) and Head of the Trademark Law Section in the Industrial Property Law Division of WIPO (1999 – 2002). Mr. Croze headed the Multilateral Affairs Department of the French Patent and Trademark Office (INPI) in Paris, France from 1996 to 1999, and was Consultant at WIPO to set up the WIPO Mediation and Arbitration Center from 1994 to 1996. His previous experiences were with the International Chamber of Commerce (ICC) in Paris as Head of the Legal Division (1990-1994) and as an Attorney with the Office of Legal Affairs of the United Nations in New York (1987-1990).

Frances M. Jagla

Member, Chair of the Trademark Practice Group

Christensen O'Connor Johnson Kindness PLLC

Frances Jagla advises clients across a wide range of industries, from Fortune 100 companies to startups, in all areas of trademark law. She focuses her practice in assisting clients with both U.S. and foreign trademark matters, including name development, search, clearance, filing, registration, and maintenance, as well as with regulatory issues, and with the enforcement of trademarks and copyrights. Fran provides vital counsel to clients navigating the complexities of brand approval and protection for companies in the pharmaceutical and other highly regulated industries, including medical devices, wine and spirits, cannabis and beyond. She also advises clients in trademark-related acquisitions, divestitures, licensing, and Internet domain name matters.

Victoria Longshaw

Partner

Houlihan² Patent and Trademark Attorneys

Dr. Victoria Longshaw, a partner of Houlihan2, is located in their Melbourne Head Office in Australia. She has over 15 years experience in intellectual property law. Victoria works in both patent and trademark areas and is a registered patent and trademark attorney in both Australia and New Zealand. She is also admitted to the Australian Federal Court as a solicitor.  She assists clients in prosecuting and enforcing trademark rights in Australia, New Zealand, Malaysia and Singapore. She has experience in proceedings relating to removal of trademarks for non-use, opposition to trademark registration before IP Australia, and infringement proceedings in trademark and copyright cases before the Australian Federal Court. Victoria also holds a PhD in Biochemistry.

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