VIDEO: Session 1: Trade Marks Update (3 CPD Hours)

Session ID: OND185NZ01A
Date: Wednesday, 30 May 2018
Venue: This seminar was recorded in

Recorded seminars


State:  CPD:3
Standard $405.00


Session Content

Date: May 2018
Seminar Recording

Attend and earn 3 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.

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


Chair: 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.

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