Trade Marks Law and Practice
From initial trademark registration to intricate portfolio management, through to the complex domains of litigation, dispute resolution, and settlement – we've got it all covered in this practical intensive. Examine the latest case law developments impacting your practice now, receive a thorough assessment of those threats predicted to impact on the future, and gain critical knowledge that traverses the entire trademark landscape, all in just one day. 2310N09
Description
Attend and earn 7 CPD units in Substantive Law
This program is applicable to practitioners from all States & Territories
Session 1
Navigating Trade Marks: The Legal Issues and Practice, the 2023 Cases and Cyber Concerns
Chair: Lynne Lewis, Partner, Bird & Bird, Recommended Non-Contentious Intellectual Property Lawyers, Doyle’s Guide 2023
9.00am to 10.00am Trade Marks in Practice
- How to choose trade marks for registration and handle non-registered marks
- The art of creating sub-brands
- Tools to overcome examiner rejection
- Strategies for portfolio development and risk mitigation
- How to handle requests for consent
- Group assignments for collaborative learning
- Insights into licenses and the sale of registered trade marks
Presented by Melissa McGrath, Barrister, Nigel Bowen Chambers; Recommended Contentious Intellectual Property Lawyer, Doyle’s Guide 2021
10.00am to 11.00am Filing Considerations: What do Applicant’s Need to Know?
- Why register a trade mark?
- Types of trade marks
- The need to get it right from the outset
Presented by Lara Gun, Senior Associate Trade Mark Lawyer, Trade Mark Attorney, FB Rice Australia; Recommended WTR Trademark Prosecution and Strategy 2022, 2023
11.00am to 11.15am Morning Tea
11.15am to 12.15pm Unveiling the Current Trade Marks Landscape and Developments through 2023 Cases
- Latest case law developments
- Assessing deceptive similarity of trade marks - relevance of reputation and consumer confusion, use of signs as trade marks
- Good faith descriptive and own name use defences – when does it apply?
- Brand selection, clearance and use - greenwashing risk
- New judicial approaches to evidence
Presented by Odette Gourley, Partner, Corrs Chambers Westgarth, Leading Contentious Intellectual Property Lawyer, Doyle’s Guide 2023, Recommended Non-Contentious Intellectual Property Lawyers, Doyle’s Guide 2023, Biotechnology Law, Intellectual Property Law, Litigation, Privacy and Data Security, Best Lawyers 2022
12.15pm to 1.15pm Navigating the Future: Cyber Related Issues and Trade Marks
- Protecting and managing your brand and IP rights in new media channels
- Influencer marketing and your IP strategy
- Challenges and opportunities for brand owners
- Enforceability of restraints of trade clauses
- Hot topics: Unfair competition, new unfair contract terms laws and privacy watch outs
Presented by Alison Jones, Special Counsel, Corrs Chambers Westgarth
Session 2
Trade Marks Disputes: Non-use, Cancellations, Infringement and Settling Matters
Chair: Brett Doyle, Director Brands & Trade Marks, Clayton Utz
2.00pm to 3.00pm Trade Marks: Non-use and Cancellations Actions
- Grounds for removing a trade mark for non-use
- Defending a non-use application
- Grounds for amendment or cancellation of a trade mark
- Recent decision on non-use and cancellation of trade marks
Presented by Donna Short, Partner, Addisons, Recommended Non-Contentious Intellectual Property Lawyers, Doyle’s Guide 2023
3.00pm to 4.00pm Trade Mark Litigation: Analysis of Recent Cases and Key Relief Principles
A review of recent cases and a refresher on fundamental principles regarding common forms of relief in trade mark litigation including:
- Damages for trade mark infringement and unjustified threats
- Injunctions
- Account of profits
- Injunctions
- Declarations
Presented by Samuel J. Hallahan, Barrister, 5 Wentworth Chambers, Recommended Intellectual Property Junior Counsel, Doyle’s Guide 2023
4.00pm to 4.15pm Afternoon Tea
4.15pm to 5.15pm Considering the Framework for Settlement of Trademark Disputes
- Account of profits v damages
- Split elections – how do they work?
- Apportionment of damages/account
- Arguing the toss over deductions – what is allowable?
- Damages calculations vs settlement outcomes
Presented by Jane Owen, Partner, Bird & Bird, Preeminent Contentious Intellectual Property Lawyers, Doyle’s Guide 2023 and Rohit Dighe, Associate, Bird & Bird
Presenters
Lynne Lewis
Lynne is an experienced and respected advisor in the area of intellectual property. She is particularly recognised for her work in trade marks, patents, copyright, breach of confidence and advertising litigation. Lynne specialises in litigation and commercial advice across a broad range of industries including, pharmaceutical; biotechnology; medical devices; fast moving consumer goods; automotive; aviation; fashion; food and beverages; financial services; energy and resources; and telecommunications industries.
Odette Gourley
Odette is one of Australia’s foremost intellectual property and regulatory lawyers with special knowledge and experience in the pharmaceutical and life sciences industries. Odette is an expert across the full range of IP including patents, trade marks, copyright, registered designs and trade secrets. In regulatory and advertising and marketing law her expertise include the Competition and Consumer Act, regulation for TGA, PBS, NHA, APVMA, AICIS, FSANZ, Gene Technology, Biosecurity, cosmetics, FOI including industry ethical and advertising codes for a wide range of products. Odette has acted in notable cases that have changed the law. In patents, Odette acted for AstraZeneca (Hassle) in successfully defending the validity of a drug formulation patent and that case is now a leading authority on the standard for obviousness under Australian law. In administrative law, the decision in the Roche case on scheduling of over the counter medicines resulted in revision of the statutory provisions. In trademarks, Odette acted for Gallo in the High Court, now the leading authority on the nature of trade mark use, and for Winnebago in the Federal Court recovering the brand for the American owner after 30 years of unauthorised use. The Winnebago case established the principle of user pays damages for IP infringement under Australian law which are recoverable even where damages on a lost sales basis are not available nor an account of profits. In the Johnson & Johnson v Unilever case in the Federal Court, Odette successfully defended the methodology adopted for consumer in use testing to support comparative advertising claims. With her deep experience in all aspects of IP, regulatory and advertising and marketing law, Odette is able to provide illuminating insights in relation to recent developments and future trends.
Alison Jones
Alison Jones is a Special Counsel in the intellectual property practice of Corrs Chambers Westgarth, Australia’s leading independent law firm. Alison specialises in intellectual property and consumer protection law, and advises clients across all business sectors on a range of IP, regulatory and related areas including IP strategy, advising on commercial arrangements of various kinds and contract drafting, advertising and marketing, competition and consumer law issues, IP enforcement, and commercial regulatory (including food law, cosmetics, life sciences and therapeutic goods regulation, product liability risk and recall, privacy and data protection). Alison's experience in this area also includes secondments at leading companies in IP-driven sectors, including fast moving consumer goods and life sciences.
Brett Doyle
Brett Doyle is a Director in charge of the Clayton Utz Trade Mark and Brand Protection Group. He is both a lawyer and a registered trade mark attorney with over 30 years' experience in intellectual property. Brett is the delegate for the International Trademark Association on IP Australia's Trade Marks and Designs Consultation Group. He is on the Geographical Indications Committee for Marques, (European Trade Mark Association). He was previously a partner in a major international law firm; has worked at specialist patent and trade mark attorney firms, as well as holding the position of the General / IP Counsel for an Australian advertising agency. Brett has acted in all manner of IP issues including contentious disputes, administrative proceedings and non-contentious contractual and licensing matters. He has advised on the strategic development and protection of trade mark portfolios, including removal, opposition and infringement actions. Brett's combination of firm and in-house positions gives clients the benefit of significant specialist knowledge coupled with the commercial experience to provide succinct and practical advice.
Donna Short
Donna Short is a partner in the intellectual property group at Addisons. Donna’s work with clients involves the entire intellectual property life cycle from the initial innovation stage, IP protection, commercialisation and enforcement of IP rights. Donna's practice covers both contentious and non-contentious intellectual property matters. Donna’s areas of expertise includes trade marks, copyright, designs, privacy and data protection and technology issues. Donna is ranked in the Chambers Global Guide and Chambers Asia Pacific Guide 2023 for Intellectual Property, Trade Mark and Copyright. Donna is also ranked as a leading trade mark professional for prosecution and strategy, trade mark enforcement and litigation and trade mark transactions in The World’s Leading Trademark Practitioners 2023.
Melissa McGrath
Melissa McGrath is a specialist intellectual property lawyer with degrees in both law and science who advises domestic and multinational clients on commercial issues and dispute resolution strategy. She has worked with clients such as Universal Music Australia, Sony Music Australia, Westpac, Vodafone, Warner Chapel Music Australia, Louis Vuitton Malletier, Cadbury, Samsung, H Lundbeck and Mylan.
Lara Gun
Lara Gun is a Senior Associate at FB Rice Patent & Trade Mark Attorneys, an award winning independent practice. A lawyer and registered trade mark attorney, Lara previously worked for two top tier international law firms. She works with a variety of clients ranging from small and medium enterprises to large multinational entities across a broad range of industries including consumer electronics, IT, pharmaceutical, travel, food and beverage, and hospitality. Lara has a keen interest in the craft food and beverage sectors as well as clean green products such as industrial hemp and is an active member of a number of key organisations in these fields. Lara specialises in trade mark prosecution, complex oppositions, infringement opinions and clearance searches. She also works with clients to develop trade mark protection strategies and programs.
Jane Owen
Jane Owen is a partner and head of the Intellectual Property Group in Sydney where she uses her deep-level experience of complex IP strategy and disputes to advise clients from a range of IP-rich industries. This advice traverses complex patent litigation through to research and commercialisation structures. Jane’s specific focus is in the life sciences and higher education fields, in which she has over two decades of experience in all aspects of IP, including portfolio establishment, IP strategy, commercialisation and enforcement. Given her 25 years in the IP business, Jane’s IP disputes experience covers the field: complex patent infringement and revocation, trade mark and passing off, design infringement, disputes on ownership of IP, trademark and patent oppositions, re-examination requests and appeals from decisions of the Commissioner of Patents and the Registrar of Trade Marks. In IP disputes, Jane has substantial experience litigating in the life sciences patent arena, which has honed her commercial and strategic nous in this field. Using her industry and IP knowledge, she assists clients in structuring IP driven transactions, delivering practical, future proof strategic advice and commercial documentation. Before joining Bird & Bird in 2015, Jane was a partner at various law firms in Sydney. Today, she often present on IP issues at continuing legal education and industry events.
Samuel J. Hallahan
Sam Hallahan is experienced in commercial litigation, with particular expertise in Intellectual Property. Before coming to the Bar, Sam practised as a solicitor for 7 years in Intellectual Property and general commercial litigation, where his work included matters for large pharmaceutical and commercial clients. At the Bar, Sam has appeared in first instance and appeal proceedings in the Federal Court of Australia, and in the Federal Circuit Court, the Supreme Court of New South Wales, the Local Court of New South Wales, the New South Wales Civil and Administrative Tribunal (NCAT), and in opposition proceedings at IP Australia. Sam accepts briefs in respect of all types of commercial matters. In 2020, Sam was listed by Doyle’s Guide for Intellectual Property Junior Counsel. Sam also teaches the subject “Intellectual Property Law” to Juris Doctor and Masters students at the University of New South Wales.
Rohit Dighe
Rohit Dighe is an IP lawyer at Bird & Bird. He is developing a practice that offers both contentious and non-contentious IP services, with a focus on supporting clients with business concerns such as brand protection and the commercialisation of IP. Rohit’s interest in advising clients in this area traverses the spectrum of IP, including trade marks, patents, designs, and copyright. Rohit also has experience in advising clients in related areas, such as consumer protection and the regulation of therapeutic goods.
Venue
Legalwise Seminars - Pitt Street
Level 11 70 Pitt Street
Sydney 2000 NSW
Australia
Parking information:
Parking not included in your registration. Here are some options below.
Secure Park 20 Bond Street - click here for rates
Wilson Park 1 O'Connell Street - click here for rates
Wilson Park 31 Bond Street - click here for rates
Directions:
Nearby Public Transport:
Train Stations - Wynyard 400m OR Martin Place 500m
Bus Interchange - Clarence Street 450m
Ferry - Circular Quay 1.2km