Examine how to protect well-known brands across class boundaries following the High Court's decision in Taylor v Killer Queen LLC. Killer Queen confirms that trade mark reputation under s 60 is goods and services specific and cannot be extended by industry custom, so even globally recognised brands can face real gaps when entering new product categories or markets in Australia, and it changes what an opponent must prove. The session maps where those gaps fall, and when passing off and misleading or deceptive conduct under the ACL can protect brands with an overseas reputation, with practical guidance on the evidence needed to establish goods and services specific reputation in Australia. For additional insights, it also draws on the High Court’s very recent decision in Zip Co Ltd v Firstmac Ltd and considers the Court's approach to infringement and the honest concurrent use defence. The thread connecting the two decisions is the limits of protection and the evidence that fills the gaps: Killer Queen on the reputation and opposition side, and Zip Co on the infringement and defence side.
Tuesday, 26 May 2026
Description
Attend and earn 1 CPD unit in Substantive Law
This program is applicable to practitioners from all States & Territories
Chair:
Kellie Stonier, Principal Lawyer, Stonier IP; Best Lawyers 2026, Intellectual Property Law
12.00pm to 1.00pm When Reputation Is Not Enough: Protecting Global Brands Across Class Boundaries After Taylor v Killer Queen
- The legal framework: The High Court confirmed that trade mark reputation under s 60 is goods- and services-specific: it is assessed by reference to the particular goods or services for which the mark is recognised, not by registration class, and cannot be extended by industry custom. This session takes those principles as its starting point and asks what they mean for brand owners.
- The protection gap: A mark that is globally famous but has no Australian reputation in respect of particular goods or services cannot rely on s 60 for those goods or services, however well known it is elsewhere, creating critical vulnerabilities for brands entering new markets or expanding product lines. Map where those gaps fall and what they mean in practice.
- Passing off and the ACL: Where registration-based protection falls short, passing off and s 18 of the ACL may protect marks with a spillover overseas reputation. Compare the evidentiary burden across each pathway and identify when each is available.
- Evidence strategy: Industry-custom and general-fame evidence cannot substitute for goods- and services-specific Australian reputation, used as a trade mark. Identify precisely what evidence you must build to establish reputation in respect of the goods or services you actually need to protect.
- Fresh High Court insight: Hear about Zip Co v Firstmac and what it means for honest concurrent use, infringement risk, and the evidentiary burden an alleged infringer must discharge.
Presented by Gabriella Rubagotti, Barrister, Nigel Bowen Chambers; Recommended Technology, Media, Telecommunications NSW Junior Counsel, Doyle’s Guide 2025
Presenters
Gabriella Rubagotti, Barrister, Nigel Bowen Chambers
Gabriella was called to the Bar in 2010 and admitted to legal practice in 2003. Gabriella’s primary areas of practice are intellectual property, media, consumer protection, breach of confidence, and commercial law. Gabriella holds a Bachelor of Laws and a Bachelor of Arts (Hons) degree from the University of New South Wales. Gabriella has advised and appeared in a number of significant cases in her areas of expertise. She is regularly briefed in proceedings before IP Australia and appears at trial and appellate level in all Australian jurisdictions, including the High Court. Gabriella speaks Italian fluently.
Kellie Stonier, Principal Lawyer, Stonier IP
Kellie Stonier is a highly regarded intellectual property lawyer and registered trade marks attorney with more than two decades of experience advising Australian and international clients on trade mark strategy, IP enforcement and commercialisation. She is the founder of Stonier IP and is recognised for combining technical excellence with practical commercial insight to help clients protect and maximise the value of their intellectual property assets. Kellie has been consistently recognised by Best Lawyers, Doyle’s Guide, Chambers & Partners and World Trademark Review for her expertise in intellectual property law and litigation. She also contributes actively to the profession through her role on the Intellectual Property Committee of the Law Council of Australia.
