Gain an expert-led and focused update on trade mark litigation essentials, from recent cases and FCAFC decisions through to an extensive examination of unjustified threats of trade mark infringement, defences, non-traditional trade marks & strategic use of evidence in trade mark litigation. Take a deep dive into landmark recent cases including Katie Perry, Cantarella Bros Pty Ltd v Lavazza Australia and FanFirm Pty Ltd v Fanatics. Gain expert insight and clarity on the risks, damages and liabilities of unjustified and improper threat of trade mark litigation. Examine key defences in trade mark litigation. Discover best practices for litigation of non-traditional marks, distinctiveness claims and shape marks plus the essentials of strategic use of evidence in trade mark litigation.

Presenters

Sam Hallahan, Barrister, 5 Wentworth Chambers
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.

Anthony Franklin SC, 153 Phillip Barristers
Anthony Franklin SC is an intellectual property barrister with extensive international experience. He was called to the bar in South Africa in 1982 where he practised until 1998, taking silk in 1996. Since 1998 he has been a member of the NSW Bar, taking silk in 2003. He is also a member of the London Bar. Principal practice areas include Intellectual Property advice and litigation -- Patents, trade marks, copyright and registered designs, trade secrets and confidential information and Trade Practices. In South Africa Anthony has appeared in a large number of leading copyright, trade mark and patent cases. From the early 90s he appeared in more than two thirds of the reported patent cases. He came to Australia in 1998 as one of South Africa's leading IP silks. In Australia he has established a substantial intellectual property practice, with a particular emphasis on patent litigation, but including copyright, trade marks and designs. He was granted silk by the NSW Bar Association in 2003. In 2004 to 2005 he practised in London as a member of Hogarth Chambers in Lincoln's Inn, one of the UK's leading intellectual property sets. He returned to Sydney at the end of 2005, although he continues to take briefs in South Africa and the UK. Throughout Anthony's practice his main specialism has been patent litigation. He has appeared in a large number of reported patent cases in diverse fields including pharmaceutical (biotechnology and organic chemistry), engineering (mechanical, mining, chemical and electrical), gaming technology and consumer goods. Anthony also takes briefs in other fields and he has appeared in a variety of general commercial cases often involving contractual disputes in areas of complicated technology. He also advises on aspects of the law in relation to Information Technology. Anthony has experience in professional negligence claims including a Federal Court claim by a major construction company against one of the big accounting firms and by a client against its former patent litigation solicitors.

Odette Gourley, Partner, Corrs Chambers Westgarthx
Odette Gourley is a senior partner and market leading lawyer in intellectual property law and related areas. In the course of her substantial career, Odette has been in leading trade mark and patent cases including in the High Court: Gallo Barefoot (trade marks), Hassle v Alphapharm (patents) and Peters Ice Cream (restraint of trade); in the Federal Court: AstraZeneca (doctor advertising of drugs); Winnebago (user principle damages for IP infringement), Johnsons Holiday Skin (substantiation of advertising claims by consumer research), Roche (scheduling scheme for therapeutic products), Novo v Cipla and Otsuka v Sun Pharma (patent term extensions). Odette has extensive industry knowledge including in relation to life sciences and pharma, food and beverages, consumer products and a range of other regulated industries. With her knowledge and experience, Odette advises and litigates across the full range of intellectual property law and associated areas including regulatory law (including privacy), administrative law, and competition and consumer law.

Wen Wu, Barrister, Level 22 Chambersx
Wen is a barrister, practising primarily in intellectual property (including copyright, patents and trade marks) and related areas. He also has a developing practice in defamation law. Before coming to the Bar, Wen practised as a solicitor for over 7 years in the IP groups of two leading national firms and a specialist IP firm. He has had substantial experience as a solicitor in patents and trade mark disputes, including in the Federal Court and IP Australia. Wen holds a Master of Intellectual Property Law from the University of Melbourne, where he received the Davies Collison Cave award for copyright law. He graduated with Honours in law from the University of New South Wales.

Shauna Ross, Barrister, Nigel Bowen Chambers
Shauna was admitted to the Bar in April 2012 and has since enhanced her specialist knowledge and expertise in intellectual property matters, including trade marks, copyright, designs, patents and domain name disputes. Her considerable experience in these areas complements her broader commercial practice. Prior to joining the Bar, Shauna Ross’ previous experience as a solicitor at a multinational law firm in Sydney and at British American Tobacco in London, provides her with a deep understanding as to the needs, expectations and preferences of solicitors and their clients. Shauna is regularly briefed to provide complex advice and appear in matters at first instance, on appeal and those in which interlocutory relief is sought. Often appearing unled or led by highly regarded Senior Counsel in large-scale litigation, Shauna has appeared in the High Court of Australia, New South Wales Court of Appeal, Federal Court of Australia (including the Full Court), Federal Circuit Court, Land and Environment Court of New South Wales and the Australian Trade Marks Office.

Dean Gerakiteys, Partner, Clayton Utz
With a background both in litigation and advisory work, Dean has developed a strong reputation for helping clients resolve disputes. Dean's particular focus is on disputes involving intellectual property, having successfully acted for clients on matters across the IP spectrum, including trade marks, copyright, patents, confidential information, trade secrets and domain names. This work has seen Dean work on matters at every stage of the litigation process, including winning a landmark decision in the High Court of Australia on foreign language trade marks. Complementing Dean's litigation experience is his general commercial advice on non-contentious matters for clients across a wide range of industries. From his work for pharma clients, Dean has also developed a practice in regulatory work, particularly the highly technical area of listing and advertising therapeutic goods and dealing with the Australian regulator, the Therapeutic Goods Administration.