VIDEO: Session 1: Trade Mark Dispute Practice and Procedure (4 CPD Hours)
Date: June 2018
Attend and earn 4 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.
Chair: Michelle Dowdle, Special Counsel, Sladen
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
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 
Presented by Ryan Maguire, Barrister, Castan Chambers
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
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 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 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 (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 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
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