Examine protecting global brands across class boundaries post The High Court’s decision in Taylor v Killer Queen. Examine the resulting protection gaps for globally recognised brands entering new Australian classes, including when s 120(3) infringement may still apply. Consider when passing off and misleading or deceptive conduct under the ACL can protect brands with overseas reputation and compares the evidentiary burden across all three pathways. Gain practical insight into evidence strategy to establish class specific reputation in Australia.
Tuesday, 26 May 2026
Description
Attend and earn 1 CPE Hour in Trade Marks
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 determined that trade mark reputation under s60 is strictly goods/services-specific 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 globally famous mark with no Australian use in a particular class has no s60 protection in that class, creating critical vulnerabilities for brands entering new markets or expanding product lines. Map where those gaps fall and when s120(3) can fill them
- Passing off and the ACL: Where registration-based protection fails, passing off and s18 ACL may protect marks with spillover overseas reputation. Compare the evidentiary burden across all three pathways and identifies when each is available.
- Evidence strategy: Industry-custom evidence cannot substitute for class-specific Australian use. Identify precisely what evidence you must build to establish reputation in a target class
Presented by Gabriella Rubagotti, Barrister, Nigel Bowen Chambers; Recommended Technology, Media, Telecommunications NSW Junior Counsel, Doyle’s Guide 2025
Presenters
Kellie Stonier, Principal Lawyer, Stonier IPKellie has extensive experience in contentious and commercial intellectual property matters and in IP portfolio management. Kellie’s advice covers the full range of IP matters, including patents, designs, trade marks, copyright, competition & consumer law matters and confidential information. Qualified as both a lawyer and trade marks attorney, Kellie has particular experience in IP portfolio management and trade mark registrations, opposition and revocation proceedings, international brand protection, clearance and enforcement matters. Kellie has been involved in various Federal Court proceedings including in relation to patent infringement, trade mark infringement, trade mark registration cancellation, appeals from the Trade Marks Office, misleading and deceptive conduct and breaches of confidential information. Kellie's strong reputation for maintaining and enforcing her client’s IP rights extends beyond Australia, with many Australian and multi-national clients entrusting her to advise on their IP protection issues. Her track record working for major brands and on high stakes matters speaks for itself and earned her recognition as a leading intellectual property lawyer in Doyles’ Guide (2017 – 2021), as a leading Enforcement and Litigation IP professional in the World Trademark Review (2018 - 2021) and as a leading lawyer in Legal 500 Asia Pacific (2019, 2021).
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.
