VIDEO: 8th Annual Trade Marks Conference: Practice, Procedure and Commercialisation (7 CPD/CPE Hours)

Session ID: OND186NZ07
Date: Thursday, 21 June 2018
Venue: This seminar was recorded in

Recorded seminars

7

State:  CPD:7
Standard $715.00
Early Bird Rate $615.00

Also available as

WEB186NZ07 Live Web Seminar

Overview

Session Content

Date: June 2018
Seminar Recording

Attend the full day and earn 7 CPD/CPE Hours

Between recent and upcoming legislative changes, an always evolving trade marks sector, and ever increasing globalisation, there's never a dull moment for trade mark specialists who want to ensure they're at the top of their game. Get up to date on the latest developments in the area, refine your practice and procedure skills in trade mark disputes and gain valuable insights into commercialisation issues that will be at the top of your client's mind.

Session 1: Trade Mark Dispute Practice and Procedure

Chair: Michelle Dowdle, Special Counsel, Sladen

Professional Skills
Trade Mark Dispute Drafting Tips

  • Best practices in drafting pleadings
  • Federal Court and Federal Circuit Court Rules
  • Observations on the solicitor's letter of a general nature including examples

Presented by Peter Booth, Barrister, Aickin Chambers

Professional Skills
Practice and Procedure in Oppositions: Evidentiary Difficulties in Establishing Trade Mark Ownership, Use and Intention to Use

  • Minimising the impact of human fallibility and the passage of time
  • Offsetting credibility concerns
  • Avoiding the dangers of Jones v Dunkel inferences
  • Recent examples, including: Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2017]

Presented by Ryan Maguire, Barrister, Castan Chambers

Professional Skills
Practice and Procedure in the Federal Circuit Court
It has been five years since the Federal Circuit Court was conferred jurisdiction on matters arising under the Trade Marks Act 1995. Explore the impact thus far, how these matters have been going, and gain insights from the frontline by examining recent case studies.

Presented by Siobhan Ryan, Barrister, List G Barristers, Recommended Intellectual Property Junior Counsel, Doyle's Guide 2017

Trade Mark Legislation and Case Update

  • Potential procedural implications of the Productivity Commission's report and the IP Laws Amendment Bill and Regulations, including grace period for non- use
  • Amendments to Statement of Grounds and Particulars

Presented by Carly Mansell, Senior Associate, Davies Collison Cave

Session 2: Commercialisation of Trade Marks

Chair: Joanna Lawrence, Counsel, Ashurst

Infringement and the Internet

  • Infringing domain names
  • Use of deceptive signs on websites
  • Offshore targeting
  • Keywords and metatags

Presented by Warwick Rothnie, Barrister, List A Barristers, Recommended Intellectual Property Junior Counsel, Doyle's Guide, 2017

Globalisation of Trade Marks

  • Impact on trade mark owners' rights in Australia eg. parallel imports
  • Division of trade mark ownership rights around the globe
  • The impact of globalisation on trade mark rights
  • Tips and traps for trade mark owners looking to expand overseas

Presented by Melissa Marcus, Barrister, Aickin Chambers and Kerryn Underwood, Special Counsel, KWM

Commercialisation and Branding Strategies with Consideration of Recent Court Decisions

  • Commercialisation and the effect of conflict with other marks
  • Decision points throughout the life of a trade mark
  • Anchorage Capital Partners v ACPA, realestate.com, F1

Presented by Martin Earley, Director, Baxter Patent and Trade Mark Attorneys

Presenters

Chair: Michelle Dowdle

Michelle is a Special Counsel and Head of the IP Group at Sladen Legal. The highly skilled IP team at Sladen Legal understands the significant value intellectual property can generate for a business or organisation. Working closely with clients in a broad range of industries, Michelle assists clients to identify, protect, register, commercialise and enforce their intellectual property rights, both in Australia and internationally. A focus of Michelle's practice is to develop her client's intellectual property assets and create revenue streams from commercialising the assets. She combines her commercial and technical skills to provide commercial advice, negotiate commercial contracts and draft commercial agreements that involve intellectual property. These IP agreements include research and development agreements for technology driven and university clients, manufacturing agreements, supply agreements, distribution agreements, software development agreements, software implementation agreements, OEM agreements, end user licence agreements, IP licence agreements, confidentiality agreements, sponsorship agreements, IP project agreements, IP service agreements, IP assignments and other IP transfer agreements. From the registration of intellectual property to initiating or defending infringement proceedings, Michelle's extensive knowledge of intellectual property law enables her to provide comprehensive intellectual property advice to her clients.

Peter Booth

Peter Booth was admitted to practice in 1985 working at firms Mallesons Stephen Jacques, Weigall & Crowther and Baker & McKenzie, signing the Bar Roll in 1991 reading with J.E. Middleton (now Middleton J). Peter was Associate to Woodward J in the Federal Court from 1986 to 1988. Peter practices in commercial law in all jurisdictions with an emphasis on matters involving contract, equity, company law and trusts. Peter also has experience in class actions in both the Federal Court and Supreme Court of Victoria. Peter appears predominantly in the Supreme Court of Victoria and Federal Court of Australia.

Ryan Maguire

Ryan Maguire practises in intellectual property and commercial law, particularly in matters involving trade marks, consumer protection, passing off, confidential information and copyright. He accepts briefs to advise, prepare evidence and court documents and to appear at interlocutory and final hearings. Ryan is undertaking the Master of Intellectual Property Law at the University of Melbourne. He has presented on topics of intellectual property at the Greens List CPD Breakfast and Law Institute of Victoria Business Law Group. Ryan is also experienced in confiscation and proceeds of crime litigation governed by the Confiscation Act 1997 (Vic) and Proceeds of Crime Act 2002(Cth). Prior to joining the Bar, Ryan practised as a solicitor in criminal law in both prosecution and defence roles, particularly in matters involving federal offences. Ryan's mentor is Tom Cordiner QC and his senior mentor is Dr Kristine Hanscombe QC.

Siobhan Ryan

Siobhan Ryan (Victorian Bar) is an experienced intellectual property lawyer, specialising in trade marks. She also advises and appears in trade practices, passing-off, copyright and designs matters in all Federal and State Courts. Siobhan is also a registered trade mark attorney and regularly appears before the Registrar of Trade Marks in oppositions, removal applications and registrability cases. Prior to coming to the Bar, Siobhan was an associate at Davies Collison Cave. She is an Assistant Editor of the Intellectual Property Reports and contributes to Lahore on Patents, Trade Marks and Related Rights. Siobhan is a regular conference speaker on trade mark matters at has previously been a speaker at this event on topics including Trade Mark Oppositions: Best Practice, A Closer Look at Practice Changing Cases and The Federal Circuit Court: The New Frontier? And La Dolce Vida or La Vida Loca? When foreign marks become trade marks

Carly Mansell

Carly Mansell specialises in all aspects of trade mark law, and is experienced in managing both small and large, global trade mark portfolios for local and overseas clients. Carly advises in relation to trade mark selection, clearance, filing, prosecution, opposition, removal, due diligence and enforcement matters, including domain name disputes, infringements, passing off and breaches of the consumer protection provisions of trade practices legislation. Carly has a strong commercial and business focussed approach to her practice, and has particular experience in the pharmaceutical industry, having managed a global trade mark portfolio as Senior In-house Trade Mark Counsel based in the UK at one of the world's largest pharmaceutical companies for 5 years. During that time, Carly managed complex trade mark matters in most countries of the world and developed global trade mark strategies for an emerging business unit. Prior to that, Carly practised in corporate law (advising on M&A transactions, commercial agreements and due diligence), and was a Senior Associate practising in trade mark law, at a large Australian national law firm for 6 years. Carly also has particular expertise in the system for International Registration of Trade Marks and is a co-author of the International Registration section of a leading publication on the subject, "Lahore: Patent, Trade Mark and Related Rights". She also has particular expertise in the system for International Registration of Trade Marks and is a co- author of the International Registration section of Lahore: Patent, Trade Mark and Related Rights

Joanna Lawrence

Warwick Rothnie

Warwick Rothnie is a barrister practising in all aspects of intellectual property law and, generally, commercial law; appearing mainly in the federal courts and before IP Australia. Prior to coming to the Bar, he was a partner in the intellectual property and telecommunications group at (then) Mallesons Stephen Jaques. He is a contributing author to Lahore, Lindgren and Rothnie, Copyright and Designs and, since 2013, the specialist contributor to Lahore's Patents, Trade Marks and Related Rights on patent validity. Warwick is a Senior Fellow at the University of Melbourne teaching Patents Law and will be teach the Australian Design Law subject in the postgraduate program at Monash University in 2018He is one of WIPO's UDRP panelists and blogs at ipwars.com. His memberships include the Law Council of Australia's Intellectual Property Committee, IPSANZ, AIPPI Australia and the Copyright Society of Australia.

Melissa Marcus

Martin Earley

Kerryn Underwood

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