Inherent Distinctiveness and Foreign Language Trade Marks: Cantarella Bros v Modena Trading – 3 Years On

DATE: Monday, 28 August 2017
TIME: 12:30 pm for a 12:45 pm start  (A light lunch will be served)
1245 pm Presentation
2:00 pm        Concludes
VENUE: Offices of Clayton Utz
Level 15,
1 Bligh Street
Sydney
PANEL DISCUSSION: Inherent Distinctiveness and Foreign Language Trade Marks: Cantarella Bros v Modena Trading – 3 Years On
Nearly 3 years have now passed since the High Court’s decision in Cantarella Bros Pty Limited v. Modena Trading Pty Limited. While the High Court may have set out to settle the law that applies to inherent distinctiveness and foreign language trade marks, there has been much debate as to the merits of the majority decision. In an increasingly globalised world, applicants for registration are interested in registering trade marks in foreign languages that may or may not be well understood in Australia. How has the Trade Marks Office dealt with issues concerning the registrability of foreign language trade marks? Has the approach to inherent distinctiveness changed? Are there cases where the decision will not arguably apply? Is there still scope for a further dispute when it comes to inherent distinctiveness and/or foreign language trade marks that are not recorded in readily understood characters?
PANEL SPEAKERS: Michael Handler, Associate Professor in the Faculty of Law at the University of New South Wales.Michael Handler is an Associate Professor in the Faculty of Law at the University of New South Wales. Michael’s main field of research is trade mark law, and his work also covers copyright and the laws regulating geographical indications of origin. Michael is the co-author (with Robert Burrell) of Australian Trade Mark Law (Oxford University Press, 2nd ed, 2016), and he has written numerous journal articles and book chapters on various aspects of trade mark law, theory and practice over the past decade, which have been published in Australia, Europe and the US. He is also the co-author (with Kathy Bowrey, Dianne Nicol and Kimberlee Weatherall) of the leading IP casebook Australian Intellectual Property: Commentary, Law and Practice (Oxford University Press, 2nd ed, 2015). Michael’s current research focuses on reputational harm in trade mark law, on the accommodation of rights in unregistered marks within registration systems, and on the relationship between functionality, distinctiveness and trade mark use.Michael Hall SC, Nigel Bowen Chambers Michael was admitted to the Bar in 1999, and appointed Senior Counsel in 2014. Michael practices in commercial law, particularly in intellectual property, equity and real property disputes. He appears most frequently in the Federal Court, Supreme Court and Land & Environment Court, and before the Patents and Trade Marks Office. He has also worked as a solicitor, as in-house counsel for the BBC World Service and as a university law lecturer.  He is the co-author of Trade Mark Law in Australia and of the Annotated Trade Marks Act, and between 2001 and 2007 he lectured in intellectual property law, land law and the law of trusts at Oxford University.Brett Doyle, Clayton UtzBrett Doyle is a Special Counsel in charge of the Clayton Utz Trade Mark and Brand Protection Group. He is both a lawyer and a registered trade mark attorney with over 25 years’ experience in intellectual property.He was previously a partner in a major international law firm; has worked at specialist patent and trade mark attorney firms as well as holding the position of the General / IP Counsel for an Australian advertising agency. Brett has acted in all manner of IP issues including contentious disputes, administrative proceedings and non-contentious contractual and licensing matters.Chair:               Dean Gerakiteys, Clayton Utz

Dean Gerakiteys is a Senior Associate with a broad range of litigation experience in disputes involving intellectual property. He has acted for clients on matters across the IP spectrum including trade marks, copyright, patents, confidential information, trade secrets and domain names. Together with Mary Still and Brett Doyle, he acted on behalf of Cantarella Bros in the Cantarella Bros v Modena proceedings from first instance through to the High Court.

COST: $60.00 Members (incl. $5.45 GST)
$75.00 Non-Members (incl. $6.82 GST)
RSVP: Tuesday, 22 August 2017 (by facsimile, email or on-line)

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SAVE THE DATE    Wednesday, 6 December 2017  New South Wales End of Year Party