IP Fundamentals: Trade Marks
Examine how domain name and trade mark law overlap. Work through the conflict between trade marks and geographical indications. Gain an essential toolkit for certification trade marks, distinctiveness and defensive trade marks, & the latest cases. Unpack common mistakes and pitfalls of trade mark opposition evidence and non-use removal actions. You will walk out the door with practical and tangible skills to ensure your practice is ready for trade mark issue that comes your way. WEB2111N20
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Description
Attend and earn 7 CPD units in Substantive Law
This program is applicable to practitioners from all States & Territories
Session 1
Trade Marks Fundamentals Roundup
Chair: Sally Foreman, Principal, Davies Collison Cave
9.00am to 9.05am Opening Comments by the Chair
9.05am to 9.50am Domain Name and Trade Mark Law Overlap: Key Essentials
- Australian domain name licence rules and trade marks
- When will a domain name infringe a trade mark
- Trade mark and domain name disputes under auDRP and UDRP
Presented by Donna Short, Partner, Addisons; Recommended Non-Contentious Intellectual Property Lawyer, Doyle’s Guide, 2021
9.50am to 10.35am Fundamentals of Certification Trade Marks: Practice Notes
- What is a certification trade mark (CTM)?
- Relevant legislation
- Application process
- Competition aspects and ACCC requirements
- International requirements
- CTM infringement
- Practical examples
Presented by Bill Singleton, Partner, HWL Ebsworth; Best Lawyers 2022, Commercial Law; Recommended Technology, Media & Telecommunications Lawyer, Doyle’s Guide 2020 and Alexandria Trezise, Associate, HWL Ebsworth
10.35am to 10.50am Morning Tea
10.50am to 11.35am Guide on the Conflict between Trade Marks and Geographical Indications
- What is the difference between a Geographical Indication and a Trade Mark and which traders are entitled to use them?
- Where there is a conflict between producers regarding the right to use a name said to be both a Geographical Indication and a Trade Mark, which will prevail and in what circumstances?
- The relevance of the US/Australia Free Trade Agreement regarding that conflict – i.e. the first to use versus the first to apply
- The Australian cases so far
- Rothbury Wines v Tyrell
- Best and Ors Application for Great Western v Seppelts
- Why the protection given to Geographical Indications for agricultural goods will be of increasing importance in the future
- The EU/Australia Wine Treaty
- The UK/Australia Free Trade Agreement
- The EU/Australia Free Trade Agreement
- Proposals by IP Australia for new legislation covering Geographical Indication Rights, in addition to those provided for under the Wine Australia Act
Presented by Marianne Barker, Barrister, Foley’s List
11.35am to 12.20pm Trade Mark Distinctiveness: Analysing Recent Cases and Key Learnings
- The key role of distinctiveness in trade mark law
- How to distinguish between a distinctive and descriptive mark
- Recent Full Court and single judge Federal Court authority
Presented by Stephen Rebikoff, Barrister, List G Barristers; Recommended Intellectual Property Law Junior Counsel, Doyle’s Guide 2021; Recommended Technology, Media & Telecommunications Junior Counsel, Doyle’s Guide 2020
12.20pm to 1.05pm Looking Back on 2020/2021: A Review of Key Recent Cases
- A review of recent trade mark decisions
- Things to look forward to and look out for in the near future
Presented by Fiona McNeil, Barrister, 5 Selborne Chambers
1.05pm to 1.15pm Final Q&A and Closing Comments by the Chair
Session 2
Trade Mark Oppositions, Non-Use and Defensive Trade Marks
Chair: Ben Coogan, Partner, Thomson Geer; Preeminent Intellectual Property Lawyer and Recommended TMT Lawyer, Doyle’s Guide 2021; Best Lawyers 2022, IP, Entertainment Law, IT, ADR, Defamation and Media Law; Deputy Chair, Technology and IP Law Committee, QLS
2.00pm to 3.00pm Trade Mark Opposition Evidence: Common Mistakes and Pitfalls
- Evidence considerations for specific grounds of opposition
- Evidence timeframes, extensions of time, and late evidence
- Common mistakes by practitioners not familiar with preparing trade mark opposition evidence
Presented by Blake Knowles, Hearing Officer, IP Australia and former Principal, Spruson & Ferguson
3.00pm to 4.00pm Is There Still a Need for Defensive Trade Marks in Australia?
- Background and history of defensive trade marks in Australia
- Utilisation of defensive trade marks
- Defensive trade marks and s120(3) infringement of well-known trade marks
Presented by Meagan Ryan, Senior Legal Counsel – Commercial and Intellectual Property, Bega Cheese Limited
4.00pm to 4.15pm Afternoon Tea
4.15pm to 5.15pm A Guide to Trade Mark Non-Use Removal Actions
- What is a non-use removal application?
- Applying to a remove trade mark for non-use: Who? When? Why?
- The two statutory grounds for removing a trade mark for non- use
- Removal application process walk-through
- Evidence, onus/burden of proof and the Registrar’s discretion
- Some tips for avoiding or mitigating non-use removal risks
Presented by Ben Thorn, Legal Practitioner Director, Xuveo Legal; Recommended Intellectual Property Lawyer, Doyle’s Guide 2021; Chair, Technology and IP Committee, Queensland Law Society
Presenters
Ben Coogan
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.
Donna Short
Donna’s work involves the entire intellectual property life cycle from initial innovation stage, IP protection, commercialisation to enforcement of IP rights. Her practice covers both contentious and non-contentious intellectual property matters. Donna’s expertise includes trade marks, copyright, designs, privacy and data protection and technology issues. Donna was named in the IP Stars (Managing Intellectual Property) Top 250 Women in IP list for 2021 in its global rankings. She is also ranked in the Chambers Global Guide and Chambers Asia Pacific Guide 2021 for Intellectual Property, Trade Mark and Copyright. Donna is also ranked as a leading trade mark professional for prosecution and strategy and trade mark enforcement and litigation in The World’s Leading Trademark Practitioners 2021.
Marianne Barker
Marianne practices in all areas of intellectual property, trade practices, general commercial law and sports law. Her practice has encompassed appeals, trials and various types of interlocutory applications for orders including injunctions, civil search and seizure orders and contempt orders. Her clients in the trade marks area have included Rolex, Gap, Nike, Valentino, Caterpillar, Treasury Wines and Christian Dior. She has also acted in copyright and design matters for clients such as Autodesk, Musidor and Spotlight Stores. Marianne is a Nationally Accredited Mediator. She is the deputy convenor of the trade marks sub-committee of the IP Committee (IPC) of the Law Council and a member of the recently formed GI sub-committee of the IPC of the Law Council. She is also a member of the International Wine Law Association, the AIDV, and was herself the co-owner of a vineyard on the Mornington Peninsula and a member of the Mornington Peninsula Vineyards Association.
Bill Singleton
Bill has extensive experience and advises on both the legal and IT aspects of transactions. His practice includes legal aspects of cloud technology, privacy and data security, social marketing, procurement of ICT products and services, and digital commercialisation; commercial and strategic legal advice on structuring and leveraging IP to capitalise on the digital opportunity including the registration, protection and commercialisation of branding (trade marks), patents, designs and confidential information; and providing legal advice on the collection, exploitation and protection of information and data, encompassing privacy advice, digital data (IP) rights, data mobility, data security (and breach) and surveillance.
Alexandria Trezise
Alexandria is a commercial lawyer with a focus on intellectual property, privacy and technology.
Stephen Rebikoff
Stephen Rebikoff is a barrister who practises extensively in intellectual property, with a particular focus on technology, media and brands. He is an experienced trial and appellate advocate, and regularly appears in the Federal Court and Supreme Court, as well as before bodies such as the Trade Marks Office, Copyright Tribunal and Administrative Appeals Tribunal. He has acted for a wide range of leading corporations including Cadbury, Toyota, Telstra, Red Bull, Facebook and realestate.com.au, and specialises in strategic litigation involving key intellectual property assets. He is recommended in Doyle's Guide to leadingintellectual property and technology, media and telecommunications barristers, Best Lawyers Australia and the World Trade Mark Review 1000.
Fiona McNeil
Fiona McNeil is a barrister at 5 Selborne Chambers. Fiona has a broad commercial law practice which includes advising and appearing in intellectual property and consumer protection matters.
Sally Foreman
Sally is a Principal in the Trade Mark Group of DCC with 20 years’ experience in managing local and international trade mark portfolios. During this time she also worked for a European Intellectual Property firm and on secondment as in-house counsel at Telstra. She acts for leading Australian and international technology, manufacturing, mining sector and motor vehicle companies, Government owned organisations, SME’s and individuals. Sally has ranked highly as an Australian ‘IP Star’, 2014, 2015 , 2017, 2019 & 2020 in Managing Intellectual Property ‘IP Stars’: and was published in the Who's Who Legal IP 2021.
Blake Knowles
Blake Knowles recently re-joined IP Australia as a Hearing Officer in the Trade Marks and Designs group. Previously, Blake practiced as a trade marks attorney and was a Principal at Spruson & Ferguson and Partner at Cullens. During his time in the profession, Blake acted on behalf of many clients including ALDI, Samsung, Hyundai, Kia, Billabong, and Dominos. Blake has extensive experience in trade mark oppositions, prosecution, clearance searching, and dispute resolution. Before joining the profession, Blake was also a Principal Examiner and team leader during his first stint at IP Australia, and was responsible for authoring parts of the Trade Marks Office Manual of Practice and Procedure.
Meagan Ryan
Meagan is an intellectual property lawyer with a particular interest in trade marks. Working in-house at Bega Cheese Limited she is fortunate to work with iconic brands such as VEGEMITE. Meagan has dual undergraduate degrees of Law and Biomedical Science, and a Master of Laws (Intellectual Property and Information Law) from King's College London. Meagan’s previously worked at MinterEllison and KPMG Law. She is currently the Co-Chair of the Law Institute of Victoria's Intellectual Property / Information Technology Committee.
Ben Thorn
Ben has over 15 years of experience in the intellectual property and commercial law fields and has represented clients from a diverse range of industries and sectors including creative industries, design, fashion, agriculture, information technology, manufacturing, education, not-for-profit and disability support services. Ben has been recognised alongside Xuveo Legal as a recommended lawyer in the Queensland Leading Intellectual Property Lawyers category of Doyle’s Guide in its 2020 and 2021 editions. Ben is a member of the Queensland Law Society (QLS); the Intellectual Property Society of Australia and New Zealand (IPSANZ); and is an associate member of the .au Domain Administration (auDA).