Trade Marks and Patents Forum
Leading national and international experts at the forefront of trade marks and patents will share their practical insights on good faith trade mark defences and strategic considerations for non-use cancellation actions. Review Calidad Pty Ltd v Seiko Epson and the ramifications of the Productivity Commission Inquiry. Understand The Crown Use amendments and aural similarity infringements to keep your practice on the cutting edge. This seminar is not to be missed!. 216Q03
Description
Attend and earn 3 CPD/CPE units in Legal Knowledge
This program is applicable to practitioners from all States & Territories
Chair: David Logan KC, Gibbs Chambers; Leading Intellectual Property & TMT Senior Counsel, Doyle’s Guide 2020
2.00pm to 2.45pm Good Faith Trade Mark Defences: Tiffany & Co. v Costco Wholesale Corp
- Tiffany & Co. v Costco Wholesale Corp., U.S. Court of Appeals – was ‘Tiffany’ trade mark use? Does it describe a characteristic of the goods?
- Would use of ‘Tiffany’ be found to be in good faith in Australia?
- S122 ‘good faith’ defences
- Does s122(1)(b) apply to Pacific and Pale Ales?
Presented by Kellie Stonier, Principal, Griffith Hack IP Amplified; Leading Intellectual Property Lawyer, Doyle’s Guide 2020; Best Lawyers 2021, Intellectual Property Law
2.45pm to 3.30pm INTERNATIONAL SPEAKER: Trade Mark Non-use Cancellation Actions: Strategies for Australian Businesses to Succeed in China
- Why non-use cancellation actions are increasingly important
- Procedural considerations, appeal avenues, timeframes, and costs
- Strategic considerations
Presented by Coral Toh, Director Greater China, Director of Trade Marks Asia, Spruson & Ferguson (Hong Kong)
3.30pm to 3.45pm Afternoon Tea
3.45pm to 4.55pm Current Issues: The Crown Use Amendments and Aural Similarity Infringements
- The Crown Use amendments to the Patents Act (reflected also in the Designs Act)
- The need for amendment
- The amendments – a fairer process for the inventor/designer
- The Crown may now infringe a patent (or design) – how does this impact on proper remuneration for the inventor/designer?
- What is the BAG (Being Ahead of the Game) point? The loophole in the new regime.
- Infringement by reason of aural similarity: Hashtags Burgers v In-N-Out burgers (Full Court Dec 2020)
- Down-n-out vs In-n-out
- Visual dissimilarities and aural similarities: their interplay
- What should we be looking for?
- Are there any staple principles re TM infringements we may need to adjust?
- Is there a landscape from which to distil some guiding infringement considerations?
- What is the BAG point?
Presented by Dr Dimitrios Eliades, Barrister, The Room; Recommended Intellectual Property & TMT Junior Counsel, Doyle’s Guide 2020; co-author, Nutshell, Intellectual Property and Introduction to Intellectual Property, Thomson Reuters; author, Lahore – Copyright and Designs and Lahore – Patents Trade Marks and Related Rights, LexisNexis
4.55pm to 5.30pm Patent Law: Recent Developments
- Calidad Pty Ltd v Seiko Epson Corporation High Court decision
- Implied licence v patent exhaustion
- When does modification amount to making?
- Takeaway points / what does it mean for patentees and competitors?
- Productivity Commission Inquiry into Right of Repair: issues paper and outcome
- What does it mean for manufacturers and consumers?
- Why should patentees care?
- Section 144 of the Patents Act
- A reminder as to what it prohibits
- Is it a powerful defence?
- Is it about to be repealed?
Presented by Ben Coogan, Partner, Thomson Geer; Preeminent Intellectual Property Lawyer and Recommended Technology, Media & Telecommunications Lawyer, Doyle’s Guide 2020; Deputy Chair, Technology and Intellectual Property Law Committee, Queensland Law Society; Best Lawyers 2021, Intellectual Property, Entertainment Law, Information Technology, Defamation and Media Law, Alternative Dispute Resolution
Presenters
David Logan KC, Gibbs Chambers
David commenced private practice in 1990, after practising as a commercial litigation solicitor, particularly in the intellectual property field. His practice is commercial, with particular emphasis on a wide range of intellectual property disputes, including trade mark, copyright and patent matters. He has presented a number of conference papers on various intellectual property topics. David has also been a Sessional Lecturer at Queensland University of Technology, in the Masters of Law subject, Intellectual Property Law, and is an experienced mediator. David was appointed Queen's Counsel in 2014.
Kellie Stonier, Principal, Griffith Hack IP Amplified
Kellie has extensive experience in contentious and commercial intellectual property matters and in IP portfolio management. She covers patents, designs, trade marks, copyright, competition & consumer law matters and confidential information. Qualified as both a lawyer and trade marks attorney, Kellie’s advice covers the full range of IP matters, including patents, designs, trade marks, copyright, competition & consumer law matters and confidential information.
Kellie has been involved in various Federal Court proceedings including in relation to patent infringement, trade mark infringement, trade mark registration cancellation, appeals from the Trade Marks Office, misleading and deceptive conduct and breaches of confidential information.
Coral Toh, Director Greater China - Director of Trade Marks Asia, Spruson & Ferguson
Coral has been involved in both contentious and non-contentious aspects of intellectual property law. Her experience in contentious IP matters includes advising multi-national companies on regional anti-counterfeiting strategies, coordinating multi-jurisdictional private investigations, obtaining search warrants, liaising with local police, customs or administrative authorities, conducting raids, negotiating settlement terms between infringers and intellectual property owners, obtaining and enforcing interim injunctions and orders for delivery up or destruction.
Coral has advised on copyright infringement and filed or defended trademark opposition, revocation and invalidation actions in China, Hong Kong, Macau, Singapore and Malaysia. Coral’s experience in non-contentious intellectual property matters focuses on trademark portfolio management, trademark prosecution, and acquisition and exploitation of intellectual property including software development agreements, technology and patent licensing agreements.
Dr Dimitrios Eliades, Barrister, The Room
Dimitrios was called to the Brisbane Bar in October 1998 where he is now in private practice exclusively in the field of intellectual property. Dimitrios recommendations in his doctoral thesis on patent entitlement were largely adopted in one of the amendments made by the 2013 'Raising the Bar' amending legislation to the Patents Act. He writes for IP publications including the IP Forum, IP Bulletin, Hearsay, the Queensland Bar Association publication and the Queensland Law Society's publication Proctor.
Ben Coogan, Partner, Thomson Geer
Ben practises in the areas of intellectual property and commercial litigation, information technology, franchising, defamation, competition and consumer law and trade mark prosecution. He advises international and national clients about their IP and technology related contracts, licences and distribution agreements and regulatory compliance issues. Ben has specialist experience in patent, trade mark and copyright litigation nationally and internationally. He advises and litigates disputes relating to competition and consumer, confidential information and trade secrets law. Ben is a qualified mediator and also has experience in acting for clients and as an independent supervising solicitor in the execution of Anton Piller orders.
Venue
Hilton Brisbane
190 Elizabeth St
Brisbane City
Brisbane 4000
QLD
Australia
Directions
Due to one way road systems, please note that car access is via Elizabeth Street only. Please programme 190 Elizabeth Street if using a car navigational device.
Nearby Public Transport:Train Stations - Central Station
Bus Interchange - George Square Bus Station
Parking
Parking is not included in your registration. There is valet parking available for AU$58.00