Trade Marks Law and Practice

From initial trademark registration to intricate portfolio management, through to the complex domains of litigation, dispute resolution, and settlement – we've got it all covered in this practical intensive. Examine the latest case law developments impacting your practice now, receive a thorough assessment of those threats predicted to impact on the future, and gain critical knowledge that traverses the entire trademark landscape, all in just one day.

Thursday, 19 October 2023
3.00pm to 4.00pm Trademark Litigation: Analysis of Recent Cases and Key Relief Principles

A review of recent cases and a refresher on fundamental principles regarding common forms of relief in trade mark litigation including:

  • Damages for trade mark infringement and unjustified threats
  • Injunctions
  • Account of profits
  • Declarations

Presented by Samuel J. Hallahan, Barrister, 5 Wentworth Chambers, Recommended Intellectual Property Junior Counsel, Doyle’s Guide 2023

2.00pm to 3.00pm Trade Marks: Non-use and Cancellations Actions

Trade Marks: Non-use and Cancellations Actions

  • Grounds for removing a trade mark for non-use
  • Defending a non-use application
  • Grounds for amendment or cancellation of a trade mark
  • Recent decision on non-use and cancellation of trade marks

Presented by Donna Short, Partner, Addissons, Recommended Non-Contentious Intellectual Property Lawyers, Doyle’s Guide 2023

12.15pm to 1.15pm Navigating the Future: Cyber Related Issues and Trademarks
  • Protecting and managing your brand and IP rights in new media channels
  • Influencer marketing and your IP strategy
  • Challenges and opportunities for brand owners
  • Enforceability of restraints of trade clauses
  • Hot topics: Unfair competition, new unfair contract terms laws and privacy watch outs

Presented by: Alison Jones, Special Counsel, Corrs Chambers Westgarth

4.15pm to 5.15pm Considering the Framework for Settlement of Trademark Disputes
  • Account of profits v damages
  • Split elections – how do they work?
  • Apportionment of damages/account
  • Arguing the toss over deductions – what is allowable?
  • Damages calculations vs settlement outcomes

Presented by Jane Owen, Partner, Bird & Bird, Preeminent Contentious Intellectual Property Lawyers, Doyle’s Guide 2023

9.00am to 10.00am Trade Mark in Practice
  • How to choose trade marks for registration and handle non-registered marks
  • The art of creating sub-brands
  • Tools to overcome examiner rejection
  • Strategies for portfolio development and risk mitigation
  • How to handle requests for consent
  • Group assignments for collaborative learning
  • Insights into licenses and the sale of registered trade marks

Presented by Melissa McGrath, Barrister, Nigel Bowen Chambers; Recommended Contentious Intellectual Property Lawyer, Doyle’s Guide 2021

10.00am to 11.00am Filing Considerations: What do Applicant’s Need to Know?
  • Types of trade marks
  • Why register a trade mark?
  • The need to get it right from the outset

Presented by Lara Gun, Senior Associate Trade Mark Lawyer, Trade Mark Attorney, FB Rice Australia; Recommended WTR Trademark Prosecution and Strategy 2022, 2023

11:15am to 12:15pm Unveiling the Current Trade Marks Landscape and Developments through 2023 Cases
  • Latest case law developments
  • Assessing deceptive similarity of trade marks - relevance of reputation and consumer confusion, use of signs as trade marks
  • Good faith descriptive and own name use defences – when does it apply?
  • Brand selection, clearance and use - greenwashing risk
  • New judicial approaches to evidence

Presented by: Odette Gourley, Partner, Corrs Chambers Westgarth, Leading Contentious Intellectual Property Lawyer, Doyle’s Guide 2023, Recommended Non-Contentious Intellectual Property Lawyers, Doyle’s Guide 2023, Biotechnology Law, Intellectual Property Law, Litigation, Privacy and Data Security, Best Lawyers 2022

Session 1: Navigating Trade Marks: The Legal Issues and Practice, the 2023 Cases and Cyber Concerns

Chair: Lynne Lewis, Partner, Bird & Bird, Recommended Non-Contentious Intellectual Property Lawyers, Doyle’s Guide 2023

11.00am to 11.15am Morning Tea
Session 2: Trade Marks Disputes: Non-use, Cancellations, Infringement and Settling Matters

Chair: Brett Doyle, Director Brands & Trade Marks, Clayton Utz

4.00pm to 4.15pm Afternoon Tea
Description

Attend and earn 7 CPD units in Substantive Law
This program is applicable to practitioners from all States & Territories

Presenters


Ms. Lara Gun, Senior Associate Trade Mark Lawyer, Trade Mark Attorney, FB Rice Australia
Lara Gun is a Senior Associate at FB Rice Patent & Trade Mark Attorneys, an award winning independent practice. A lawyer and registered trade mark attorney, Lara previously worked for two top tier international law firms. She works with a variety of clients ranging from small and medium enterprises to large multinational entities across a broad range of industries including consumer electronics, IT, pharmaceutical, travel, food and beverage, and hospitality. Lara has a keen interest in the craft food and beverage sectors as well as clean green products such as industrial hemp and is an active member of a number of key organisations in these fields. Lara specialises in trade mark prosecution, complex oppositions, infringement opinions and clearance searches. She also works with clients to develop trade mark protection strategies and programs.


Ms. Odette Gourley, Partner, Corrs Chambers Westgarth
Odette Gourley is a leading intellectual property and regulatory lawyer in Australia, specialising in the pharmaceutical and life sciences sectors. She has extensive expertise in patents, trade marks, and regulatory compliance, and has been involved in landmark legal cases that have shaped Australian law. Odette provides insights into IP and advertising law, helping clients navigate complex regulatory environments. Her achievements reflect a deep commitment to advancing the legal landscape in her field.


Ms. Alison Jones, Special Counsel, Corrs Chambers Westgarth
Alison Jones Alison is a Special Counsel at Corrs Chambers Westgarth, Australia’s leading independent law firm and practises in IP, competition and consumer law, entertainment law and related areas. Alison has expertise across a broad range of areas, including IP protection and enforcement, commercialisation (including licensing, distribution and sponsorship), advertising collateral, complaints and disputes, industry ethics, competition and consumer law, anti-bribery, anti-counterfeiting, confidential information, cross-border transactions, contract drafting and due diligence. She advises various leading companies on a range of regulatory issues including food law, cosmetics, life sciences and therapeutic goods regulation, trade, customs, administrative action, investigations, product liability and recalls, privacy and data protection. Alison has undertaken various client secondments in global companies at General Counsel level including a US headquartered pharmaceutical and life sciences company, a leading multinational FMCG company and a major global interactive marketing services company. She is a committee member of the IP Society of Australia and New Zealand (NSW), a member of the International Association for the Protection of Intellectual Property (AIPPI) and the Australian and New Zealand College of Notaries, and is listed on the Register of Lawyers of the Ad Standards Industry Jury. Alison has also completed the Leadership Development Program through the NUS Business School Executive Education in Singapore.


Mr. Samuel J. 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.


Mr. Rohit Dighe, Associate, Bird & Bird
Rohit Dighe is an IP lawyer at Bird & Bird. He is developing a practice that offers both contentious and non-contentious IP services, with a focus on supporting clients with business concerns such as brand protection and the commercialisation of IP. Rohit’s interest in advising clients in this area traverses the spectrum of IP, including trade marks, patents, designs, and copyright. Rohit also has experience in advising clients in related areas, such as consumer protection and the regulation of therapeutic goods.


Ms. Melissa McGrath, Barrister, Nigel Bowen Chambers
Melissa McGrath is a specialist intellectual property lawyer with degrees in both law and science who advises domestic and multinational clients on commercial issues and dispute resolution strategy. She has worked with clients such as Universal Music Australia, Sony Music Australia, Westpac, Vodafone, Warner Chapel Music Australia, Louis Vuitton Malletier, Cadbury, Samsung, H Lundbeck and Mylan.


Donna Short, Partner, Addisons
Donna Short is a partner in the intellectual property group at Addisons. Donna’s work with clients involves the entire intellectual property life cycle from the initial innovation stage, IP protection, commercialisation and enforcement of IP rights. Donna's practice covers both contentious and non-contentious intellectual property matters. Donna’s areas of expertise includes trade marks, copyright, designs, privacy and data protection and technology issues. Donna is ranked in the Chambers Global Guide and Chambers Asia Pacific Guide 2023 for Intellectual Property, Trade Mark and Copyright. Donna is also ranked as a leading trade mark professional for prosecution and strategy, trade mark enforcement and litigation and trade mark transactions in The World’s Leading Trademark Practitioners 2023.


Ms. Jane Owen, Partner, Bird & Bird
Jane Owen is a partner and head of the Intellectual Property Group in Sydney where she uses her deep-level experience of complex IP strategy and disputes to advise clients from a range of IP-rich industries. This advice traverses complex patent litigation through to research and commercialisation structures. Jane’s specific focus is in the life sciences and higher education fields, in which she has over two decades of experience in all aspects of IP, including portfolio establishment, IP strategy, commercialisation and enforcement. Given her 25 years in the IP business, Jane’s IP disputes experience covers the field: complex patent infringement and revocation, trade mark and passing off, design infringement, disputes on ownership of IP, trademark and patent oppositions, re-examination requests and appeals from decisions of the Commissioner of Patents and the Registrar of Trade Marks. In IP disputes, Jane has substantial experience litigating in the life sciences patent arena, which has honed her commercial and strategic nous in this field. Using her industry and IP knowledge, she assists clients in structuring IP driven transactions, delivering practical, future proof strategic advice and commercial documentation. Before joining Bird & Bird in 2015, Jane was a partner at various law firms in Sydney. Today, she often present on IP issues at continuing legal education and industry events.

2310N09

Trade Marks Law and Practice

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DELIVERY MODE BELOW

All Sessions
Thursday, 19 October 2023
9.00am to 5.15pm Australia/Sydney
CPD Points 7
$795.00
Face to Face 20241122 20231019

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On Demand 20241122 20231019

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Morning Session
Thursday, 19 October 2023
9.00am to 1.15pm Australia/Sydney
CPD Points 4
$505.00
Face to Face 20241122 20231019

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On Demand 20241122 20231019

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Afternoon Session
Thursday, 19 October 2023
2.00pm to 5.15pm Australia/Sydney
CPD Points 3
$420.00
Face to Face 20241122 20231019

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On Demand 20241122 20231019

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Venue
Legalwise Seminars

Level 11, 70 Pitt Street, Sydney 2000

Directions

These are nearby public transport options.

By Train: Wynyard Station and Martin Place Station are only a 5 minute walk away

By Light Rail: Wynyard Light Rail Station is only a 4 minute walk away

Bus: The Clarence Street Bus Interchange is only 450m and there are many buses that stop nearby

Ferry: Circular Quay is the closest Ferry

Parking Information

Parking is not included in your registration. Here are some nearby parking options.

Secure Park, 20 Bond Street - Click here for rates
Wilson Park, 1 O'Connell Street - Click here for rates
Wilson Park, 31 Bond Street - Click here for rates