VIDEO: 9th Annual Trade Marks and Patents Conference (7 CPD Hours)

Session ID: OND185NZ01
Date: Wednesday, 30 May 2018
Venue: This seminar was recorded in

Recorded seminars


State:  CPD:7
Standard $715.00


Session Content

Date: May 2018
Seminar Recording

Attend the full day and earn 7 CPD/CPE Hours

For the 9th year running this conference brings together eminent legal minds, including our keynote speaker straight from Hong Kong plus the renowned Edward Heerey QC. Our presenters will offer an in-depth trade mark update and an analysis of trade mark use online, remedies and trade mark practice and procedure. After lunch you will gain insights from the Assistant Commissioner of Patents from IPONZ and a review of best method, opposition evidence, and patent globalization. Plus you can earn your mandatory ethics unit whilst hearing about the NEW Code of Conduct. This program is designed just for you to give you the need-to-know updates for your practice and your CPE points all at a convenient time and all in one day.

Session 1: Trade Marks Update

Chair: Sean McManis, Principal, Shelston IP

INTERNATIONAL GUEST KEYNOTE SPEAKER: Protection of Intellectual Property in People's Republic of China: Commercial Relationships

  • Background on registration and protection of IP necessary for doing business in China
  • Recent developments Impacting manufacturing and distribution relationships
  • Practical suggestions for addressing OEM manufacturing risks in trade mark piracy contexts
  • 'Must haves' in commercial agreements

Presented by Dan Plane, Director, SIPS
Dan Plane is an attorney admitted in both Hong Kong and Australia, currently living and working in Hong Kong and serving on the International Trademark Association's Anti-Counterfeiting Committee. He has recently been recognized as a China 'IP Star' by Managing IP.

Trade Mark Update and Developments
Analysis of the latest cases, legislative developments and trends, including an analysis into:

  • Substantial identity: A lower threshold?
  • Ownership problems at and after the application date
  • Deceptive similarity: Divergent results?

Presented by Edward Heerey QC, Nigel Bowen Chambers; Recommended Intellectual Property Senior Counsel, Doyle's Guide 2017

'Hidden' Online Use of Trade Marks in Metadata and Google Adwords

  • Discussion of Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd
  • Insights when dealing with online infringements
  • Advising clients regarding online use of competitors' marks

Presented by Miriam Zanker, Principal, Davies Collison Cave Law

Remedies and Trade Mark Procedural Update

  • Recap on the Winnebago decision and damages based on the user principle
  • Scope of application of the principle
  • Recent decisions referencing Winnebago
  • Latest assessment of the implications of the Raising the Bar reforms in practice
  • What is happening in oppositions and court proceedings procedures

Presented by Odette Gourley, Partner, Corrs Chambers Westgarth; Preeminent Trademark Lawyer and Recommended Patent Litigation Lawyer, Doyle's Guide 2017; Best Lawyers 2018, Intellectual Property Law, Biotechnology Law, Life Sciences Practice, and Litigation; Leading Intellectual Property Lawyer, Asia Pacific Legal 500 2017

Session 2: Ethics for Patent and Trade Mark Attorneys

Chair: Simon Kneebone, Partner, Banki Haddock Fiora

Mandatory Ethics or Professional Conduct CPE
ETHICS PANEL DISCUSSION: "NEW" CODE OF CONDUCT: The New Code of Conduct for Trans-Tasman Patent and Trade Mark Attorneys 2018 (Code of Conduct 2018): Applying the Code in Practice

  • Understanding the New Code of Conduct 2018
  • Applying it to some common areas of complaint
    • Conflict of interest
    • Cost estimation and variations of costs: managing client expectations
    • Being 'open and frank'
    • Competency for the work done
  • Hypothetical examples

Moderator: Simon Kneebone, Partner, Banki Haddock Fiora

Katrina Howard SC
, 9 Selborne Chambers; Trans-Tasman IP Attorneys Disciplinary Tribunal; Leading Intellectual Property Senior Counsel, Doyle's Guide 2017
Anthony Alder, Founder, Alder IP; Board Member, Trans-Tasman IP Attorneys Board
Carl Harrap, Principal, FPA Patent Attorneys; Board Member, Trans-Tasman IP Attorneys Board

Session 3: Patents Update

Chair: Dr Malcolm Engel, Special Counsel, Patent and Trademark Attorney, Adams Pluck

INSIGHTS FROM IPONZ: An Overview of Support Requirements, Amendments and Recent Hearing Office Decisions under the NZ Patents Act 2013

Presented by Mark Pritchard, Senior Advisor, Patent Practice, Assistant Commissioner Patents, Intellectual Property Office of New Zealand

Best Method: Omission or Insufficient
This session will examine the latest on 'Best Method' requirement in Australia and in other jurisdictions, recent case law in Australia, plus provide useful drafting tips to avoid problems after grant.

Presented by Joe Seisdedos, Principal and Head of Electrical/ICT Group, IP Solved

Wulff's Annual Globalisation and International Developments in Patents

  • Current developments in the US, China and Europe
  • Brief 'highlights' from other major jurisdictions
  • Drafting an 'omnibus' International Patent Application
  • Productivity Commission ramifications: Is Australia now out of kilter globally?

Presented by Robert Wulff, Principal, Patent Attorney, Griffith Hack

Opposition Evidence and Procedural Update Since 'Raising the Bar'

  • Oppositions versus court proceedings: pros and cons
  • Opposition evidence: factual vs advocating drafting traps
  • Importance of securing a good expert
  • Resurfacing evidence on appeal
  • Latest procedural developments in the courts including preliminary discovery and injunctions

Presented by Odette Gourley, Partner, Corrs Chambers Westgarth; Best Lawyers 2018, Intellectual Property Law, Biotechnology Law, Life Sciences Practice and Litigation; Preeminent Trademark Lawyer and Recommended Patent Litigation Lawyer, Doyle's Guide 2017; Leading Intellectual Property Lawyer, Asia Pacific Legal 500 2017


Sean McManis

Shelston IP is one of Australia's leading intellectual property practices and Sean McManis heads Shelston IP's trade marks team. He is a solicitor and registered trade mark attorney, with qualifications both in science and law. Sean has more than 25 years' experience as a trade marks attorney. He has worked principally in Australia, but has also worked in the United Kingdom. His practice extends to all aspects of trade mark related work, and a large part of his work involves brand clearance, the resolution of trade mark disputes and the enforcement of intellectual property rights. Sean is represents a significant number of large multi-national companies in relation to the management and protection of their trade mark portfolios in Australia, and is well recognised as a leading professional in the field of trade marks.

Dan Plane

Edward Heerey QC

Ed Heerey practises in intellectual property, trade practices, administrative and general commercial law. Ed's practice covers all Federal and State Courts as well as opposition proceedings in the Trade Marks Office and Patents Office, and he has particular experience in interlocutory injunctions, Anton Piller Orders and Mareva Injunctions. Ed is also a Senior Fellow of the University of Melbourne Law School, where he teaches intellectual property law at post-graduate level, and is a former member of the Victorian Committee of the Intellectual Property Society of Australia and New Zealand. Prior to coming to Bar, Ed was a Senior Associate at Allens Arthur Robinson, where he practised for five years in intellectual property and trade practices litigation.

Miriam Zanker

Odette Gourley

Odette Gourley is a partner of premium national independent law firm Corrs Chambers Westgarth. Odette is a leading lawyers in intellectual property and regulatory law including all aspects of food law.

Simon Kneebone

Simon Keenbone joined Banki Haddock Fiora in 2000 after working as a partner at a large patent attorney firm in New Zealand. He advises a wide range of clients on trade mark, registered design and patent law, and develops and applies clearance, protection and enforcement strategies for the clothing, engineering, entertainment, fast-moving consumer goods, electronics and information technology industries.

Katrina Howard SC

Katrina Howard specialises in the field of intellectual property, especially patents. After graduating with first class honours in pharmacology and an honours degree in law, Katrina worked with Davies Collison Cave before becoming a barrister. Katrina was appointed as Senior Counsel in NSW in 2006 and currently practices at 9 Selborne Chambers, Sydney. She was unconditionally admitted to practice in the UK in 2008 and is a door tenant at 3 New Square, London. Most of Katrina's work over the last 20 years has been in the biological sciences including pharmaceuticals, medical devices and biotechnology, but she works in all areas of technology, including acting for Samsung in its war with Apple. Katrina has given many presentations locally and internationally and published several papers on patent law and practice. She has been recognized in various international guides to patent lawyers such as the International Who's Who of Patent Lawyers. She was appointed as the Patent and Trade Marks Attorneys Disciplinary Tribunal in 2012.

Anthony Alder

Carl Harrap

Malcolm Engel

Dr Malcolm Engel is Special Counsel at Adams Pluck Patent and Trademark Attorneys of Sydney, Newcastle and Canberra. Between 2007 and 2016 he was the Head of Intellectual Property for The Weir Group PLC, a UK-based global engineering conglomerate. At Weir, Malcolm was responsible for coordinating the patent, trademark and design portfolio of the Group, providing IP advice, and undertaking IP enforcement litigation in many countries including China, UK and the US. Between 1998 and 2007, Malcolm worked for Griffith Hack Patent Attorneys in Sydney as a Senior Associate in that firm. Prior to that, he worked for BHP Minerals in a variety of research and development roles around that company's operations.

Mark Pritchard

Joe Seisdedos

He has over 15 years' experience in intellectual property, with a particular focus on the Australian, US and European markets. Joe specialises in IT, business methods and medical technologies, with a background in nuclear physics, detector development, and complex system simulation. He has also taken a key role in a number of patent litigation and opposition cases, and has provided patent infringement and litigation advice to a number of IT, electrical and medical device clients. Joe lectures at two Australian universities on intellectual property and the drafting of patent specifications.

Robert Wulff

Robert Wulff is a Sydney-based principal of national IP firm Griffith Hack IP Attorneys & Lawyers, having joined the firm in 1989. Robert's patent practice is focused on Australia's resources & building products industries and energy technologies. He works with a range of organisations to develop offensive and defensive IP strategies, working closely with his firm's litigators and IP management consultants. Robert is a registered patent attorney with degrees in Chemistry and Chemical Engineering from the University of Sydney. He holds an equivalent Masters of Science in Chemical Engineering from the Royal Institute of Technology, Stockholm.

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