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.

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 is one of Australia’s foremost intellectual property and regulatory lawyers with special knowledge and experience in the pharmaceutical and life sciences industries. Odette is an expert across the full range of IP including patents, trade marks, copyright, registered designs and trade secrets. In regulatory and advertising and marketing law her expertise include the Competition and Consumer Act, regulation for TGA, PBS, NHA, APVMA, AICIS, FSANZ, Gene Technology, Biosecurity, cosmetics, FOI including industry ethical and advertising codes for a wide range of products. Odette has acted in notable cases that have changed the law. In patents, Odette acted for AstraZeneca (Hassle) in successfully defending the validity of a drug formulation patent and that case is now a leading authority on the standard for obviousness under Australian law. In administrative law, the decision in the Roche case on scheduling of over the counter medicines resulted in revision of the statutory provisions. In trademarks, Odette acted for Gallo in the High Court, now the leading authority on the nature of trade mark use, and for Winnebago in the Federal Court recovering the brand for the American owner after 30 years of unauthorised use. The Winnebago case established the principle of user pays damages for IP infringement under Australian law which are recoverable even where damages on a lost sales basis are not available nor an account of profits. In the Johnson & Johnson v Unilever case in the Federal Court, Odette successfully defended the methodology adopted for consumer in use testing to support comparative advertising claims. With her deep experience in all aspects of IP, regulatory and advertising and marketing law, Odette is able to provide illuminating insights in relation to recent developments and future trends.


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.