Intellectual Property: Infringement, Enforcement and Litigation

Gain the strategies, current trends and practical solutions to intellectual property dispute concerns that are absolutely essential for your intellectual property and business law practice.  Understand the current trends in IP enforcement and infringement issues surrounding copy-cat products, trademarks and designs. Analyse strategies for success in  resolving your patent disputes and litigation plus unpack practical issues in search and seizure of evidence. Plus, gain an essential understanding of fair use and fair dealings.

Wednesday, 13 November 2024
11.25am to 11.40am Morning Tea
10.40am to 11.25am Fair Use and Fair Dealing: Understanding Exceptions to Copyright

 

  • The difference between fair use and fair dealing
  • What is fair?
  • Permitted purposes
  • Who must have this purpose?
  • Attempts at reform 

Presented by Margaret Ryan, Lawyer and Trade Marks Attorney, IP by Margaret

Description

Attend and earn 4 CPD units in Substantive Law
This program is applicable to practitioners from all States & Territories

9.00am to 9.50am Current Trends in IP Enforcement and Infringement Issues Surrounding Copy-Cat Dupe/Look- A-Like Consumer Products

 

  • What are dupes (v. counterfeits)?
  • Enforcing IP against copy-cat products:
    • IP avenues: trademarks, designs, copyright, patents
    • Non-IP avenues: passing off and consumer law
  • How are dupe/look-a-like companies navigating IP protection to avoid infringement?
    • Trends from recent cases in Australia and overseas
  • Tips and future directions

Presented by Colette Downie, Senior Associate, Baker & McKenzie

9.50am to 10.40am Trademark Infringement and Enforcement: Recent Australian Case Studies

 

  • To enforce a trade mark, what tests prove infringement?
  • How to assess whether there is substantial identity or deceptive similarity?
  • How use may indicate the origin of goods  and services?
  • How to substantiate a real and tangible danger of confusion as to source?
  • How relevant are a mark's commercial value or selling power?
  • How relevant are competition, fair trading and consumer protection laws?

Presented by Dr Steven Stern, Adjunct Professor, Victoria Law School, Victoria University and Barrister-at-Law, List S Svenson Barristers, Victorian Bar

12.35pm to 1.15pm Patent Litigation and Dispute Resolution: Strategies for Success

 

  • Preliminary injunctions
  • Preliminary discovery
  • Patent term extensions and challenges to PTE’s
  • Best method and its impact on litigation strategy
  • Court’s approach to case management in patent disputes
  • Patent settlement considerations 

Presented by Rachelle Downie, Special Counsel, Corrs Chambers Westgarth 

11.40am to 12.35pm Access to Documents and Information: Search and Seizure of Evidence

 

  • Practical elements of executing a search and seizure
  • Staying prepared for what can go wrong 

Presented by Peter Booth, Barrister, Svenson Barristers and Amelia-Rose Booth, Lawyer, K&L Gates 

Presenters


Colette Downie, Senior Associate, Baker & McKenzie
Colette is an experienced intellectual property (IP) lawyer, with over 10 years of experience in complex patent litigation, trade mark, consumer law and copyright disputes. Her expertise includes providing strategic pre-litigation advice for new market entrants, navigating regulatory requirements, enforcing IP rights and reducing infringement risks.


Dr Steven Stern, Adjunct Professor, Victoria Law School, Victoria University and Barrister-at-Law, List S Svenson Barristers, Victorian Bar
Dr Steven Stern FIPTA CTA ICC BEc LLB (Mon) LLM PhD (Melb) practises at the Victorian Bar specialising in litigation and other disputes relating to trade marks.  Dr Stern is a Registered Trade Mark Attorney and a Fellow of The Institute of Patent and Trade Mark Attorneys of Australia.  From 2017 to 2023 Dr Stern  was the Honorary Secretary of List S Svenson Barristers.  Dr Stern presently is the Honorary Secretary of the Victorian Bar Council's Library Committee.  As Corporation Secretary/Principal Legal Officer at the Australian Wool Corporation and as University Secretary/University General Counsel at Victoria University, Dr Stern oversaw the patent and trade mark activities of these two corporate bodies.  Dr Stern's Master of Laws degree at The University of Melbourne involved a major thesis on the protection of computer software which won the praise of Professor James Lahore and an abridgement of which was published as a major article in the Australian Law Journal. As University General Counsel, Dr Stern was responsible to the University Council and the Vice-Chancellor for providing overall professional direction of the University's legal affairs focusing on: the more complex issues involving legal policy, interpretation or strategy, and matters with other significant ramifications. He has a wide background in the provision of legal services in government, universities, the corporate sector and in private practice. In his role to the National Companies and Securities Commission/Australian Securities Commission, Dr Stern was responsible for all the non-enforcement legal work of the Commission. From the Commission, Dr Stern spent approximately two years as a Senior Associate of Mallesons Stephen Jaques working principally on securities issues. Whilst there he was credited with having a major role in designing the legal structure of a due diligence exercise for the prospectus of a bank's rights issu - that to a degree was said to have set a pattern for subsequent issues.


Rachelle Downie, Special Counsel, Corrs Chambers Westgarth
Rachelle Downie is an experienced IP litigator, with significant experience in high-profile, complex intellectual property disputes. Rachelle acts across a range of sectors and technologies including pharmaceuticals and biologics, consumer goods, complementary medicines, devices, mining and other technology. She regularly acts in patent and trade mark proceedings before the Federal and Full Federal Court of Australia, including acting in contested interlocutory injunctions. She has particular expertise in the pharmaceutical / life sciences sector, where her legal expertise is complemented by her knowledge and experience as a pharmacist. Rachelle has a strong reputation for her work in patent litigation and is experienced in working with clients to develop IP enforcement and defensive strategies. Rachelle currently acts for a number of globally recognised clients across a range of industries, where her practice includes advising clients in relation to trade mark and brand protection, copyright and confidential information.


Peter Booth, Barrister, Svenson Barristers
After completing his honors degree in science and Master of Laws degree, Peter Booth was admitted to practice in 1985 working at firms Mallesons Stephen Jacques, Weigall & Crowther and Baker & McKenzie, signing the Bar Roll in 1991 reading with J.E. Middleton (now Middleton J). Peter was Associate to Woodward J in the Federal Court from 1986 to 1988. Peter practices in commercial law in all jurisdictions with an emphasis on matters involving contract, equity, company law and trusts. Peter also has experience in class actions in both the Federal Court and Supreme Court of Victoria. Peter appears predominantly in the Supreme Court of Victoria and Federal Court of Australia. After five years on the AAT, peter eventually returned to the bar.


Margaret Ryan, Lawyer and Trade Marks Attorney, IP by Margaret
Margaret received the University Medal in Law from the University of Sydney and commenced her career in Intellectual Property when she worked as a Research Assistant to the late Federal Court Justice Sheppard, who specialised in IP. Margaret has practised in IP law for over 30 years. She has worked in the IP departments of two major commercial law firms and spent almost 20 years practising in a specialist IP firm, including as a Special Counsel. Margaret has undertaken both commercial and litigious work, as well as appearing in trade mark opposition hearings. Margaret established her own practice in 2018, undertaking IP commercial and dispute resolution work and trade marks advice, filings and oppositions. She provides honest, client-focussed and practical advice and representation to her clients. Margaret has lectured and tutored in IP at Victoria University and is the current contributor to the copyright section of The Law Handbook.


Amelia-Rose Booth, Lawyer, K&L Gates
Amelia-Rose is a lawyer in the intellectual property group in Melbourne. Amelia-Rose joined K&L Gates' graduate program in 2023, rotating in the corporate, intellectual property and litigation and dispute resolution groups. During the graduate program, Amelia-Rose gained exposure to capital markets, corporate governance, intellectual property procurement and portfolio management, complex disputes and medical negligence. Prior to this, Amelia-Rose worked at K&L Gates as a seasonal clerk.

2411V03

Intellectual Property: Infringement, Enforcement and Litigation

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Single Session
Wednesday, 13 November 2024
9.00am to 1.15pm Australia/Sydney
CPD Points 4
$505.00
$353.50
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Venue
InterContinental Melbourne

495 Collins Street, Melbourne 

Directions

Nearest Public Transport:

  • By train: Southern Cross Station (5-minute walk)
  • By subway: Southern Cross Station (5-minute walk)
  • By Tram: Trams on routes 12, 109, 11 and 48 all pass the hotel along Collins Street, get off at the William Street stop (3-minute walk). The hotel is located within the free tram zone which means travel within the CBD on the tram is free.
Parking Information

Valet Parking is only available for Resident Guests.

Nearby Parking: 
Wilson Parking - View locations and rates here