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Webinar: An Insight Into the EU – Best Practices for the Protection and Defense of European Union Trademarks

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May 28 @ 10:00 am 11:00 am

1 Participatory MCLE Credits

Presented by the International Interest Group.

International conventions and treaties have contributed to a certain degree of harmonization of trademark law. However, there are significant differences between the US and EU legal systems. In this webinar, we will provide relevant insights into the EUTM legal system.

Speaker: Joana Fialho Pinto
Moderator: Mariana Paula Noli

Non-Member Price

Member Price

I – Overview

  • European Union Intellectual Property Office and EUTMs
  • First to file rule
  • The unitary nature of the EU trademark & validity in the 27 EU Member States
  • The relationship between the EU trademark and the national trademarks of the EU Member States (anteriority; priority; seniority; conversion)
  • Link with the Madrid System

Brief note on the Court of Justice and harmonized interpretation practices within the EU.

II – Tailoring EUTM applications – optimizing the investment

  • Absolute grounds for refusal and avoidance of office actions; the secondary meaning
    (including: notes on non-traditional marks)
  • Avoidance / handling of opposition proceedings

III – Post-registration protection  

  •  Relevance of genuine use of trademarks and the high standard of proof of use
  • The importance of monitoring of trademark applications and filing oppositions in the EU and EU Member States
  • Acquiescence, defense to invalidity or infringement of the later mark
  • Note on Border control measures

We are committed to accessibility! Virtual events are equipped with closed captioning. To request an in-person accommodation, send us a note at or contact us at 916-516-1760 for assistance.


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