Trade Marks and Patents Symposium 2021
Hear from leading trade mark and patent practitioners about the hottest issues while gaining your CPE points from in-depth presentations covering the latest cases, legislation, trends and best practices. Explore inherent trade mark distinctiveness, use, reputation and more. In the afternoon, examine exhaustion of patent rights, inventive step, Swiss-style use claims, and protection & enforcement strategies after the end of the innovation patent. WEB216V04
Description
Attend the full day and earn 7 CPD/CPE units in Substantive Law
This program is applicable to practitioners from all States & Territories
Session 1
Trade Marks Review
Chair: Michael Wolnizer, Principal, Davies Collison Cave; Best Lawyers 2021, Intellectual Property Law; Recommended Non-Contentious Intellectual Property Lawyer, Doyle’s Guide 2020
9.00am to 10.00am s.41 of the Trade Marks Act: Recent Cases, Tips and Traps
- Recent cases dealing with inherent distinctiveness
- Approaching the assessment of inherent distinctiveness
- Tips and traps in overcoming s.41 through evidence
Presented by Andrew Sykes, Barrister, Trade Mark Attorney and NMAS Mediator, Greens List
10.00am to 11.00am Use as a Trade Mark: Recent Cases
- Definition of ‘use as a trade mark’
- Development of the concept in case law
- Recent cases including:
- Pinnacle Runway v Triangl (DELPHINE)
- Urban Alley v La Sireene (URBAN ALE)
Presented by Margaret Ryan, Lawyer and Trade Marks Attorney, IP by Margaret
11.00am to 11.15am Morning Tea
11.15am to 12.15pm Treatment of Well-known Trade Marks and Establishing Reputation
- The treatment of well-known trade marks under s. 60 of the Trade Marks Act 1995 (Cth)
- Impact of fame on s. 120 of the Trade Marks Act 1995 (Cth)
- Establishing reputation of mark
Presented by Melissa Marcus, Barrister, List G Barristers; Recommended Intellectual Property Law Junior Counsel and Recommended Technology, Media & Telecommunications Junior Counsel, Doyle’s Guide 2020
12.15pm to 1.15pm Unregistered Trade Marks and the Consequences of Kraft v Bega
- What is goodwill?
- Property in unregistered trade marks
- Property in trade mark applications
- Licensing of unregistered trade marks
Presented by Susan Gatford, Svenson Barristers; Recommended Intellectual Property Law Junior Counsel, Doyle’s Guide 2021 and Alan Ford, Barrister, Patterson’s List
Session 2
Patents: A Critical Update
Chair: Tom Cordiner KC, List G Barristers; Pre-eminent Intellectual Property Law Senior Counsel, Doyle’s Guide 2020; Best Lawyers 2021, Intellectual Property Law
2.00pm to 2.45pm Exhaustion of Patent Rights: The High Court’s Decision in Calidad Pty Ltd v Seiko Epson Corporation
From the counsel that was involved in this significant case, gain insights into:
- Implied licence vs exhaustion of patent rights
- When does modification amount to ‘making’?
- Implications for patentees and competitors
- Consequences for other intellectual property rights
Presented by Jonathan Kelp, Partner, MinterEllison; Recommended Contentious Intellectual Property Lawyer, Doyle’s Guide 2020 and Rebecca Pereira, Senior Associate, MinterEllison; Rising Star, Managing Intellectual Property 2019
2.45pm to 3.30pm Inventive Step After the Raising the Bar Amendment
- How have the Australian Courts and the Commissioner’s delegates approached inventive step under the Raising the Bar amendments?
- VMS v SARB [2020] FCA 408
- Selected Office decisions
- More issues to consider and the different approaches to the same test in the UK and under the EPC, including Emson v Hozelock [2020] EWCA Civ 871
Presented by Warwick A Rothnie, Barrister, List A Barristers; Preeminent Intellectual Property Law Junior Counsel, Doyle’s Guide 2020
3.30pm to 3.45pm Afternoon Tea
3.45pm to 4.30pm A 'New Old' Interpretation of Swiss-Style 'Use' Claims
- Swiss-style claims vs method of treatment claims and the different ways they can be deployed against infringers
- The construction of Swiss-style claims following the decision in Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd
- The implications of the Mylan decision for the enforcement of Swiss-style and method of treatment claims
Presented by Lauren John, Allens; Rising Star, Managing Intellectual Property 2021
4.30pm to 5.15pm End of the Innovation Patent: Alternative Protection and Enforcement Strategies for SMEs and their Advisors
- A brief history of the innovation patent: what was it for, and how did it fail?
- Pros and cons of innovation patents versus other forms of IP protection, e.g. standard patents, registered designs, trade marks, copyright and trade secrets
- Findings of the Mortley review of the accessibility of the
- patent system to Australian SMEs
- Transitioning to a system without innovation patents: strategies, challenges and opportunities
Presented by Dr Mark Summerfield, IP and Technology Consultant
Presenters
Michael Wolnizer, Principal, Davies Collison Cave
Michael practices in all areas of trade mark law including availability and infringement searches, prosecution, domain name conflicts, trade mark opposition and infringement issues and related copyright, trade practices and associated common law actions. Since joining DCC in 1994, Michael has managed the trade mark portfolios of numerous Australian and multi-national companies. Michael has been named one of Australia's leading trade mark law practitioners in the Managing Intellectual Property Expert Guides publication and the World Trade Mark Review 1000. He was a member of the inaugural auDA Domain Name Advisory Panel whose recommendations led to the reform of policy in the .au name space in 2000.
Andrew Sykes, Barrister, Trade Mark Attorney and NMAS Mediator, Greens List
Andrew specialises in trade mark law, domain names and passing off. His other areas include domain names, copyright, designs, internet law, software, confidential information and related areas of misleading and deceptive conduct. Andrew is the author of Australian Trade Mark Opposition Law, which is now in its second edition and published by LexisNexis Butterworths. He is also the co-author of the chapter “Trade Marks and the Internet” in the leading publication “Lahore’s, Patents, Trade Marks & Related Rights”. Andrew has been recognised numerous times in the World Trade Mark Review 1000, including in the gold band for Australian junior counsel. And he currently sits on a number of expert dispute resolution panels in the field of domain name law.
Margaret Ryan, Lawyer and Trade Marks Attorney, IP by Margaret
Margaret has spent almost 20 years with a specialist IP law firm, practising in commercial IP law, IP litigation and conducting trade mark oppositions before the Trade Marks Office. Margaret performs her own advocacy and is a registered Trade Marks Attorney. She has lectured and tutored in IP and contributed to the copyright sections of The Laws of Australia and The Law Handbook (2018, 2019 2020 and 2021). Margaret undertakes IP commercial and dispute resolution work and trade marks advice and oppositions. She accepts instructions to appear at Trade Mark Office hearings.
Melissa Marcus, Barrister, List G Barristers
Melissa practises in all aspects of IP with particular interest and experience in trademarks, misleading or deceptive conduct and passing off. Melissa also practises in defamation law and general commercial disputes. Melissa has experience of Royal Commissions, having represented a client the subject of a case study before the Royal Commission into Institutional Responses to Child Sexual Abuse and having acted for a client in the Royal Commission into Violence, Abuse, Neglect and Exploitation of People with Disability. Melissa also has experience as an independent auditor in relation to the ACCC. Melissa contributes quarterly to the specialist law journal, IP Forum.
Susan Gatford, Svenson Barristers
Susan Gatford is an experienced commercial advocate with a strong IP practice. She has appeared in a wide range of patent, trade mark, trade practices, copyright and designs trials and appeals, as well as in numerous interlocutory hearings. She also appears in corporate, contractual, franchising and general commercial trials, principally in the Federal Court but also in the Supreme Court and represents parties in IP Australia hearings as well. Susan has extensive experience acting for Australian and multinational corporations in wide range of industries. She is a Registered Trade Mark Attorney and an accredited mediator who is often appointed to mediate or to represent parties in mediations both prior to and during court proceedings.
Alan Ford, Barrister, Patterson’s List
Alan practices in all areas of commercial and public law and is particularly interested in intellectual property and trade practices, corporations and securities, tax, public/administrative law and equity and trusts. He is a member of IPSANZ and the Commercial and Tax Bar Associations. Alan has acted in and advised on a range of complex matters, including intellectual property opposition and infringement matters, financial services compliance with Chapter 7 of the Corporations Act, constructive and resulting trust claims, resisting tax claims by the tax office, and migration issues. Alan is a headnote writer for LexisNexis Intellectual Property Reports.
Tom Cordiner KC, List G Barristers
Tom Cordiner is a barrister and also a registered Australian Patent Attorney and Trade Marks Attorney. His practice is divided between intellectual property law, commercial/ corporations law and some administrative law. From 1998 to 2003, Tom was a solicitor with Blake Dawson Waldron (now Ashurst Australia). In 2002, Tom held an extended secondment with GE Capital Finance Australia Pty Ltd where he built on his skills in trade practices and commercial law.
Tom is a member of IPSANZ and IPTA. He also contributes quarterly to the specialist law journal, IP Forum, and has taught post graduate courses concerning intellectual property at Monash University and at Melbourne University.
Jonathan Kelp, Partner, MinterEllison
Jonathan specialises in IP and technology disputes, and has acted for a broad range of clients in various industry sectors including pharmaceutical and life sciences, IT and telecommunications, FMCG and manufacturing. Jonathan has more than 10 years' experience in acting for clients in High Court, Federal Court, and Supreme Court litigation regarding trade mark infringement and passing off, ownership and breach of copyright, patent infringement and validity, breach of contract, trade practices, misuse of confidential information, and breach of director's duties. He also advises on various IP issues, including use of social media and compliance with applicable regulatory frameworks. Jonathan has extensive experience acting for clients on complex IT disputes arising from technology outsourcing, software licensing and systems implementations, which are typically resolved in mediation or arbitration as an alternative to Court-based litigation.
Rebecca Pereira, Senior Associate, MinterEllison
Rebecca has over 12 years' advisory and litigious experience. She focuses on patent litigation in the pharmaceutical, biopharmaceutical, biotechnology and medical device sectors. She has considerable trial and appellate litigation experience, particularly in relation to multi-jurisdictional patent disputes, interlocutory disputes, the analysis of patent infringement and validity and in the preparation of evidence with expert witnesses. Rebecca also provides strategic advice to pharmaceutical and biopharmaceutical clients on launch strategies for biologics and biosimilar products, small molecules and medical devices. Rebecca has a strong educational science background which is invaluable in her development of commercial strategies and legal arguments regarding scientific subject matter and in her dealings with expert witnesses. She is a member of the Victorian Committee of IPSANZ.
Warwick A Rothnie, Barrister, List A Barristers
Warwick practices in all aspects of IP law and commercial law generally; appearing mainly in the federal courts and before IP Australia. Prior to coming to the Bar, he was a partner in the IP and telecommunications group at (then) Mallesons Stephen Jaques. He is a contributing author to Lahore, Lindgren and Rothnie, Copyright and Designs and, since 2013, the specialist contributor to Lahore's Patents, Trade Marks and Related Rights on patent validity. Warwick is a Senior Fellow at the University of Melbourne teaching Patents Law and Design Law and Practice. He is one of WIPO's UDRP panelists and blogs at ipwars.com. His memberships include the Law Council of Australia's Intellectual Property Committee, IPSANZ, AIPPI Australia and the Copyright Society of Australia.
Lauren John, Allens
Lauren specialises in intellectual property law, acting for clients in both commercial and litigious matters across all types of IP. She is particularly experienced in patent law and patent litigation, having acted for numerous clients in patent infringement and revocation proceedings, as well as in patent matters concerning contractual obligations, duties relating to confidential information and inventorship disputes. Lauren’s experience also includes commercial and regulatory advice, brand protection advice and M&A-related IP due diligence. Lauren is a member of the Victorian Local Committee of the Intellectual Property Society of Australia and New Zealand (IPSANZ).
Dr Mark Summerfield, IP and Technology Consultant
Mark is an IP and technology consultant and registered Australian Patent and Trade Marks Attorney. His interests include digital systems, information and communications technologies, and software development, applying machine learning techniques to the analysis of patent data. In 2018 Mark was engaged by IP Australia to apply some of these techniques in automating the production of the Intellectual Property Government Open Data (IPGOD) dataset, which comprises detailed information on over 100 years of IP rights administered by IP Australia. Mark operates the Patentology blog where he writes regularly on issues relating to innovation, patents, law and policy. He has lectured at La Trobe University, Monash University and is a Senior Fellow at the University of Melbourne.