Trade Marks Law: Back to Basics
Unravel trade marks and catapult your career by attending this day packed with law, practice and procedure. Explore interesting cases and how trade marks interact with domain names and patents. Uncover overcoming IP Australia objections then dive into non-use and cancellations actions, trade marking for business including group assignments, licenses and sale of registered trade marks. Sharpen the blurred lines of oppositions practice and procedure, all delivered by leading experts. WEB2210NZA25BCZ
Description
Attend and earn 7 CPE hours
Session 1
Trade Marks Explained
Chair: Joanna Lawrence, Partner, Ashurst; Best Lawyers 2023, Intellectual Property Law, Litigation
11.00am to 12.00pm Trade Marks, Getting Back to Basics
- What can or can’t be trade marked
- Common objections raised by IP Australia and how to overcome objections
- How trade marks interact with other IP rights and domain names
- Intersection of the patents and trade marks
- How trade marks interact with domain Names and can be used to secure rights for au domain names
- Recent case law
Presented by Nicole Murdoch, Founding Director, EAGLEGATE; Trade Mark Attorney; Recommended Intellectual Property Lawyer, Doyle’s Guide 2022
12.00pm to 1.00pm The Concept of "Use as a Trade Mark" in Trade Marks Law
- Use in commerce
- Use in connection with good and/or services
- Use in Australia vs foreign use
- Use by licensees
- What does not constitute trade mark use
- Analysis of specific scenarios
Presented by Victoria Bell, Special Counsel, Baker McKenzie
1.00pm to 1.15pm Afternoon Tea
1.15pm to 2.15pm Trade Marks and Geographical Indications
- Differences between trade marks and geographical indications (GIs) and how they overlap
- How has the law relating to GIs been developed in Australia, with particular reference to Wines? This will include an examination of the litigation leading up to the EU and Australia Wine Treaty such as the Beaujolais litigation
- Cases concerning producers’ rights to use GIs in Australia, including the Coonawarra litigation; impact of the US and Australia FTA
- Examine the two main cases concerning conflicts between GIs and trade marks in Australia: the Rothbury wines case and the Great Western case
- Expected future developments in the International Treaties Australia has, and the laws which will implement them, such as the EU and Australia FTA (This is expected to widen the type of agricultural products covered by GI laws in Australia to products such as cheese)
Presented by Marianne Barker, Barrister and Nationally Accredited Mediator, Foley’s List
2.15pm to 3.15pm 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 Lawyer, Doyle’s Guide 2022
Learning Objectives:
- Explore How trade marks interact with other IP rights and domain names
- Gain practical insights of ‘Use as a Trade Mark’ in different scenarios
- Learn the ropes on non-use and cancellation of trade marks using recent decision
Session 2
Trade Marks in Practice
Chair: Glenn McGowan KC, Partner & Chief Counsel, Gadens; Recommended Contentious Intellectual Property Lawyer, Doyle’s Guide 2022
Professional Skills
4.00pm to 5.00pm Trade Marks: 'How to'
Take a really practical journey through the ‘how to’ in relation to a trade marks practice:
- Select which trade marks to register and how to deal with non-registered marks
- Sub-brands creation
- Tools to overcome rejection by the examiner
- Portfolio development and risk mitigation
- Requests for consent
- Group assignments
- Licenses and sale of registered trade marks
Presented by Melissa McGrath, Barrister, Nigel Bowen Chambers; Recommended Contentious Intellectual Property Lawyer, Doyle’s Guide 2021
Professional Skills
5.00pm to 6.00pm Trade Mark Oppositions: Getting the Practice and Procedure Right
- Opposition timeframes
- Preparing notices of opposition
- Selecting grounds of opposition
- Preparation of evidence
- Hearings
- Extensions of time
- Costs
- Appeals
Presented by Karen Mak, Barrister & Nationally Accredited Mediator, Svenson Barristers
6.00pm to 6.15pm Afternoon Tea
6.15pm to 7.15pm Fixing Problems: Case Study in Minimising the Consequences of an Inadvertently Lapsed Right
- Missed deadlines, grace period, late fees and unintended loss of rights
- Covid extensions
- Extensions under s 224
- Other circumstances under s 44(3)(b) and informal information or other circumstances under s 41(4)(b)(iii)
- Take away key practical problem-solving skills that you can immediately apply in your practice
Presented by Hayley Tarr, Principal, Tarr Law; Lawyers Weekly Women in Law Awards 2021 Finalist
Learning Objectives:
- Learn useful tips on portfolio development and risk mitigation
- Decode the practice and procedure process in trade mark opposition
- Get ahead on best practise in resolving an inadvertently lapsed right
Presenters
Joanna Lawrence
Joanna Lawrence is a Partner in the intellectual property team at Ashurst. Joanna's practice encompasses both contentious and non-contentious intellectual property law, with a particular focus on trade marks, domain names, consumer protection law, copyright, design and food law, and she is editor of Ashurst's Food Law Update. Joanna also has a strong interest in pro bono. In addition to assisting many of Ashurst's pro bono clients with trade mark and other IP matters, she is a member of the INTA Pro Bono Committee and a past board member of Youthlaw. Joanna is a regular presenter and chair at LegalWise intellectual property and food law seminars.
Nicole Murdoch
Nicole is the Principal of EAGLEGATE Lawyers and a recommended Lawyer in the 2022, 2021, 2020 and 2018 listing of Leading Queensland Intellectual Property Lawyers - Doyles Guide. As a qualified Lawyer, Electrical Engineer and Trade Marks Attorney, Nicole's qualifications and practical experience allow her to fully comprehend the nexus of the law, technology and business to provide advice to her clients - which is both commercially sensible and technically practical. Nicole's legal experience includes Intellectual Property litigation including, trade mark, patent, copyright and domain name disputes and associated misleading and deceptive conduct, confidential information and passing off disputes. She also acts in Information Theft cases to prepare clients for data breaches, assists upon a breach, gives advice in respect of mandatory data breach notifications and prosecutes insider threats.
Victoria Bell
Victoria's key expertise focuses in the Consumer Goods and Retail (CG&R) and the Technology, Media and Telecommunications (TMT) industries. Victoria advises on the ability to register trade marks, designs and domain names. She files new applications, responds to examiner's objections, obtains information on the status of current registrations, files renewals, advises on transfers and infringements and manages opposition proceedings before IP Australia. Victoria also assists in and advises on the intellectual property aspects of commercial and corporate transactions, from scope of property included in the transaction through to risk or liability issues. She is an innovation ambassador for the firm and currently she is the Chair of the Asia Pacific Senior Associates Steering Committee for IPTech.
Marianne Barker
Marianne has had extensive experience in all areas of intellectual property, trade practices, general commercial law and sports law. Prior to signing the Bar Roll, she was a Senior Associate at Corrs Chambers Westgarth in the Intellectual Property and Trade Practices section. 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, Christian Dior, Louis Vuitton, Hugo Boss, Cartier, Hermes, Nokia, Rip Curl, Mambo, Australian Rugby Union, National Foods, Crazy Johns (now part of Vodafone), Hoover, Fendi, Lacoste, Vans, Viacom, Toyota, John Sands, Playgro, Rivers, Just Jeans, Adele Palmer and Bradmill. She has also acted in copyright and design matters for clients such as Autodesk, Musidor and Spotlight Stores and has acted for various project home builders in respect of architects' plans including Hotondo Homes, Henley Arch, Stonehaven Homes and C & J Designer Homes. Marianne has also acted in mechanical and pharmaceutical patent matters for companies such as Braun, Alphapharm, Transpread International, Huhtamaki and Metallgesellschaft (now part of the GEA Group). She has also acted in allied areas such as breach of trade secrets, Crown use of IP, the IP aspects of tax appeals (R & D) and in the trade practices area she has acted in various consumer law and price fixing matters. Her sports law practice grew out of her pro-bono work for Olympic athletes and she is now the President of the Taekowondo Appeals Tribunal (recently being awarded the Ian Callinan prize at the 2019 ANZLA Annual Conference The Denis Callinan Award recognises members of the Australian New Zealand Sports Law Association (ANZSLA) who render commendable community service in the field of sports law). Finally, she also practises as a mediator being a Nationally Accredited Mediator since 2012. Marianne has written and edited problems for use at the ICC Mediation Moot Competitions held in Melbourne and Paris. Prior to her legal practice, Marianne interned in the tax section of Peat Marwick Mitchell (now KPMG). She is a graduate of the Australian Institute of Company Directors (AICD) and has had various board positions on not-for-profit boards. Marianne Barker (B.Ec. (majoring in Accounting and Economics), LLB (Monash), LLM (Melb)) was admitted in Victoria in 1985 and signed the Bar Roll in 1992. Her Masters thesis concerned the topic "Famous Trade Marks". Marianne 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.
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 was named in the IP Stars (Managing Intellectual Property) Top 250 Women in IP list for 2021 in its global rankings and a Trade Mark Star in 2022. Donna is also ranked in the Chambers Global Guide and Chambers Asia Pacific Guide 2022 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 2022.
Glenn McGowan KC
Glenn is Partner and Chief Counsel at Gadens with over 30 years experience in practice, almost exclusively in the superior and appellate courts. He spent 27 years at the independent Bar, taking silk in 2004, before joining Gadens in 2015 as its inaugural Chief Counsel. His practice is heavily dominated by large intellectual property cases (patents, trade marks, copyright, confidential information, trade practices and designs), mostly in the Federal Court, involving all areas of technology including chemistry, software, biotechnology, pharmaceuticals, engineering, polymers, etc. Glenn is a qualified mediator and arbitrator. He also appears in and advises in general commercial disputes in all courts, briefed by Gadens and other firms.
Melissa McGrath
Melissa 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.
Karen Mak
Karen is a Barrister and Nationally Accredited Mediator. Karen brings a broad range of skills and experience to the Bar and accepts briefs in commercial law (speciality is intellectual property), real property law and criminal law. She also has a keen interest in family law, children’s law and alternative dispute resolution. Prior to coming to the Bar, Karen volunteered at the Fitzroy Legal Service and the Monash-Oakleigh Legal Service where she dealt with a wide variety of legal issues. Her commercial background includes real estate development and management consulting. Karen holds a Juris Doctor from Monash University (awarded the Post Graduate Prize for Intellectual Property), a Masters of Business Administration from the Kellogg Graduate School of Business at Northwestern University, Chicago and a Bachelor of Science in Finance and Marketing from the University of Oregon. Karen is admitted to the California State Bar. Karen possesses significant international living and working experience in the United States, Australia, New Zealand, China and Hong Kong and is a dual citizen of the United States and Australia. Karen read with Susan Gatford and her senior mentor is Colin Golvan AM KC. Karen is also a competitive tennis player and a chair umpire and line umpire for Tennis Australia.
Hayley Tarr
Hayley has a Bachelor of Science majoring in genetics, a Bachelor of laws with first class honours, and a Masters of Industrial Property Law. She is admitted as a patent and trade marks attorney, a solicitor in the state of Queensland, and an attorney in the state of New York, USA. Having worked for top tier firms such as Allens and Minter Ellison, and taught at Bond University, Hayley founded Tarr Law in January 2020. Tarr Law is a boutique intellectual property law firm, able to assist clients in all intellectual property matters including: trade marks, copyright, designs, domain names, patents, and IP disputes. In addition to running Tarr Law, Hayley dedicates a great deal of time as a volunteer mediator for Bayside Community Legal Centre. Hayley is also a mentor for the Gold Coast Innovation Hub. In other community engagement initiatives, Hayley participated in the St Vinnies CEO Sleepout to raise money for the homeless in June 2022 and will be a speaker and chair at Legalwise Seminars in October and November 2022. Everything Hayley does is for the sake of her two beautiful daughters. When she is not in the office, you’ll find her seeking out new and adventurous experiences with her girls. Please do not hesitate to reach out. Hayley would love to assist you with your intellectual property needs.