About the course
The purpose of this course is to enable students who are part way through the existing qualification system to benefit from some of the features of the new system without starting from scratch. Students who take and pass the course will be able to gain entry on the Register of Trade Mark Attorneys (subject to fulfilling the experience requirements and passing the Design and Copyright Paper).
Assessment
Wherever possible, assessments are set in a practical context. In addition to a written three hour written examination paper in Trade Mark Practice and Procedure, there will be with two skills assessments:
- client interviewing
- advocacy before the registry.
Nottingham Law School is accredited by ITMA and IPReg.
Contact details
For further information please contact our enquiry desk:
Telephone: +44 (0)115 848 4460
Email
Visit Nottingham Law School website.
Please note the following information for applicants
Course dates
- Unit one: 21 - 23 June 2012
- Unit two: 27 - 29 September 2012
- Unit three: 22 - 24 November 2012
Course Content (provisional)
Unit one: Introduction to UK and International Trade Mark Practice, Searching and Client Relationships Skills (including Client interviewing and Advice) (Four days, including course induction)
In this unit you will meet and interview a client who wishes to search and register a trade mark; one centring on goods and one on services. You will need to investigate the situation, conduct the correct searches and checks and then advise the client on the best route to take, encompassing both practical and strategic issues. Upon receiving instructions from the client, you will then make an application to register the trade mark.
The Unit will focus on the following substantive legal issues of trade mark practice:
- what defines a good trade mark
- UK trade mark searching, (including register and in use searches)
- filing strategies (national vs. OHIM and Madrid)
- initial advice regarding registration (including which mark to register, where, and consideration of designs and domains).
In addition, there will be a significant focus on the acquisition of professional skills, via the use of case studies. You will consider issues of ethics and professional conduct, client interviewing, written and one-to-one client advice and client relationship management.
Unit two: Registry Procedures (three days)
In this unit you will prosecute the various applications made in Unit One through to registration, dealing with absolute ground objections and oppositions or invalidations or revocations.
The Unit will focus on the following substantive legal issues of trade mark practice:
- UKIPO and OHIM practice and procedure on absolute grounds (applying the work manuals)
- grounds for refusal - responses to registry objections on absolute grounds for refusal under Trade Marks Act 1994
- international IP skills - OHIM/Madrid searches and reports
- UKIPO and OHIM practice and procedure on opposition and revocation.
In addition, there will be the opportunity for you to deal with an unsuccessful application to register and an Opposition. You will deal with the refusal, preparing an advice to client and drafting and filing responses, including any issues of client expectation management and the commerciality and strategic nature of advice and options offered to the client.
There will be an emphasis on the development of drafting skills (pleadings and skeleton arguments as well as letter writing and advice) as well as case management and client management techniques. There will also be the opportunity to practice advocacy skills and appearance before the registry.
Unit three: Enforcement, Commercial Exploitation and Management of Trade Marks (Three days)
The main focus of this unit is the management of trade marks as an asset with an emphasis on how to enforce them. The case studies may, for instance, involve either a brief from a marketing manager to you as an in-house trade mark attorney or to you as an external firm to which the task has been outsourced.
This unit will introduce you to the various tasks that you may undertake in this context, from managing a portfolio of trade marks to dealing with trade mark infringement or an action for passing off. This unit will also give you the opportunity to negotiate with an opponent to the alleged infringement action with a view to putting an agreement in place, a licence or an assignment. Issues such as the mortgaging of trade marks as well as the taxation and potential competition issues (regarding, for instance, coexistence agreements) may also be included within the negotiation exercise.
The Unit will focus on the following substantive legal issues of trade mark practice:
- infringement and passing off – comparison of marks and goods, evidence, outline of court procedure
- negotiation of assignments and licensing agreements (considering issues such as taxation, competition law and coexistence agreements)
- retainer management with internal and external clients regarding the monitoring of a trade mark portfolio and their use and maintenance
- trade mark due diligence exercise on portfolio of trade marks – checking registration and any infringement actions or other issues to point out to a purchaser.
In addition to the substantive issues, you will be able to develop your skills in negotiation, communication and advocacy, drafting (instructions to counsel, licences, and coexistence agreements), client management and working effectively in legal teams with solicitors, barristers and other professionals.
There is currently no careers information available for this course.
Please click the Apply online button at the top of the page to start your application.
Applicants must also complete the request for confirmation of eligibility
form and forward it to ITMA. ITMA will then decide if you are eligible to take this course. In the interim, whilst you may submit an application to Nottingham Law School to undertake this course, an offer of a place cannot be made until your eligibility has been confirmed by ITMA.
Please note that the number of places on the course will be limited to 30. Equally the course will run only if there is sufficient demand.
