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MinterEllison’s trade marks practice provides portfolio management and brand protection to Australian and global companies. Our clients, which include Qantas, SingTel Optus, American Express, Sonic Healthcare, Scholastic Australia, Webjet, SCA Hygiene, Nielsen, Spotless Services and Toll Holdings, reflect the significant amount of international work we do in this area.
Our commercially-focused and experienced lawyers have successfully managed large trade mark portfolios. Our team is also involved in reviewing and drafting licensing and distribution agreements, bringing and defending proceedings for opposition, revocation (including for non use) and infringement, and developing brand protection strategies. We understand the importance of managing strong brands in increasingly complex and competitive global markets.
Our technical expertise and experience are supported by leading technology that streamlines the process of searching, registering, watching and renewing trade marks. Our clients rely on us for practical commercial advice and to this end we engage them from the start and quickly develop a comprehensive understanding of their businesses and brands.
After a big year in trade marks in Australia in 2014, including a High Court decision (Cantarella Bros, regarding 'ORO' and 'CINQUE STELLE'), 2015 was a quieter year, with only a couple of decisions of the Full Federal Court raising the stakes above the usual trial judgments in the Federal Court. Nevertheless some significant trade mark issues were addressed by the Courts and the Trade Mark Office, which we discuss below.
We look at what's in store for trade mark law in 2014, and provide a snapshot of the headline cases from the previous year. Going forward, we expect to see the High Court considering the test for 'distinctiveness' in the Cantarella and Modena dispute, the practical implications of the recent amendments to the Trade Marks Act in full swing, and potential changes in search engine strategies for companies as a result of the High Court's decision in Google v ACCC.
At a hearing in April this year, several tobacco companies challenged the Constitutional validity of the Tobacco Plain Packaging Act 2011 (Cth) (Act) in the High Court of Australia.