Wednesday, 12 November 2025
Description
This program is applicable to practitioners from all States & Territories
Thinking Outside the Box: Recent Brand Protection and Enforcement Trends Beyond Trade Mark Law
- Bed Bath N' Table Pty Ltd v Global Retail Brands Australia Pty Ltd, including the development of the trade mark infringement and Australian Consumer Law (ACL) claims at first instance and on appeal to the Full Federal Court
- Key issues in Bed Bath N' Table before the High Court, including:
- The role of reputation established through longstanding use of a mark in the context of Australian Consumer Law (ACL) claims such as misleading or deceptive conduct and passing off
- Clarification on the determination of "misappropriation of goodwill" within the context of Australian Consumer Law (ACL) claims
- Recent case law and judicial guidance on passing off and misleading or deceptive claims in the context of brands and trade marks:
- Koninklijke Douwe Egberts BV v Cantarella Bros [2024] FCA 1277: FFC's comments regarding passing off re coffee jar shape get-up and brief discussion of non-traditional trade marks
- Jacksons Drawing Supplies Pty Ltd v Jackson's Art Supplies Ltd [2025] FCA 530 – findings regarding misleading or deceptive conduct, misleading representations and passing off
- Recent cases involving Aldi – brief overview of notable claims against Aldi for its well-known dupe products (e.g. Aldi and Moroccanoil Ltd in 2018), discussion of recent UK dispute between Aldi and Thatchers Cider Company Ltd and Hampden Holdings IP Pty Ltd v Aldi Foods Pty Ltd [2024] FCA 1452
- Key lessons learnt from case law and brand protection strategies to advise clients
- Ensuring traditional IP protection of trade mark registrations, expanding trade mark registrations to non-traditional marks (e.g. shape marks) and design registrations for new and distinctive packaging
- Broadening the scope of legal recourse to include Australian Consumer Law (ACL) claims, particularly in markets with cheaper alternative brands and/or dupes
Presented by Brett Doyle, Director - Brands & Trade Marks, Clayton Utz
Chair
Anthony Franklin SC, 153 Phillip Barristers
Presenters
Brett Doyle, Director, Brands & Trade Marks, Clayton Utz
Brett Doyle is a Director responsible for 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. 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 been involved in some of the most important trade mark cases decided by Australian courts over the last 20 years. He has advised on the strategic development and protection of trade mark portfolios, including removal, opposition, and on infringement actions and trade mark licensing. Brett sits on IP Australia's Trade Marks & Designs Consultation Group as the delegate for the International Trademark Association (INTA) and is on INTA's Trademark Office Practice Committee and also on the Geographical Indications Committee of Marques, the principal European professional body for trade mark owners and practitioners.
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.
