Intellectual Property » Trade Marks

Managing a large portfolio of trade marks internationally – as Corrs does for Foster’s, for example – requires the right strategic approach to maximise protection whilst containing costs.

Luxury brands, like Louis Vuitton, Hermes, Gucci, Cartier and Hugo Boss rely upon us to cost-effectively contain the ever-present problem of counterfeits, even when that involves extended protection for non-traditional marks such as colours or shapes.

Others, like BlackBerry and fashion name Lacoste entrust to us complex enforcement actions against competitors.

Right across the spectrum – whether it is routine enforcement of trade marks against rogue retailers or taking a complex question of trade mark law right up to the High Court of Australia as Corrs did for Gallo, Corrs’ trade mark practice focuses on getting the right results for our clients.

Our Experts

David Smith.jpg

David Smith

Partner Location Melbourne Profile
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David Yates

Partner Location Perth Profile
Frances Wheelahan

Frances Wheelahan

Partner Location Melbourne Profile
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Odette Gourley

Partner Location Sydney Profile
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Sophie Bradshaw

Special Counsel Location Brisbane Profile
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Stephen Stern

Partner Location Melbourne Profile
Tim Allen.jpg

Tim Allen

Partner Location Melbourne Profile
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Vanessa Mellis

Special Counsel Location Brisbane Profile

Our Experience

Barefoot win for Gallo

When the Californian E&J Gallo Winery, makers of Barefoot wine, moved to stop the use of the word Barefoot on a Lion Nathan beer, it took three tiers of court challenges before the High Court made a ruling that reaffirmed Gallo’s global trademark rights.

Corrs’ international experience and expertise meant the team could correctly advised Gallo that it could win the case even when they had never directly marketed Barefoot wines in Australia.

More

BlackBerry

Businesses often have to defend their trade marks on many fronts. Having an Australian team experienced in coordinating strategy with large international litigation teams was critical for BlackBerry.

Corrs acted for BlackBerry in the Federal Court and the Trade Marks Office, to stop Samsung adopting the name BLACKJACK for a smartphone. The resulting Australian settlement led the way for successful negotiations throughout RIM’s global market.

More

Botox says no to No-Tox

When a company sought to register the name No-Tox in relation to facial cosmetics, Allergan, the owner of one of the world’s leading global cosmetic brands, Botox, engaged Corrs Chambers Westgarth to oppose the registration.

Through Corrs’ diligent and determined efforts over a prolonged period, the strength of the of the global Botox brand was protected.

Despite the Trade Mark Office initially rejecting Botox’s opposition, Corrs’ managed a successful appeal, and the registration of the trademark No-Tox was refused.

More

Cadbury

It has been very difficult for companies to register a single colour as a trade mark but a seven-year case, involving the distinctive purple of Cadbury chocolate, has set a precedent in the steps needed to register a single colour in Australia.

The winning strategy relied on garnering carefully targeted evidence of use going back almost a century and of current consumer perceptions to build the most compelling case in these unchartered waters of trade mark law.

More

BAT

Corrs is acting for British American Tobacco (BAT) as part of a global team in the protection of BAT’s IP rights against Australia’s Tobacco Plain Packaging Act.

The Act mandated the removal of graphical trade marks, designs, and other intellectual property from tobacco products with effect from December 2012.

More

Corrs gets Winnebago back on the road in Australia

Winnebago Industries Inc., famous for its motor home and recreation vehicles since the 1960s, engaged Corrs’ IP team to protect its brand in Australia.

In 1982, an Australian RV manufacturer unconnected with the US company began manufacturing and selling motor homes bearing the Winnebago brand and logo interpretation.

When the US company developed an interested in selling their motor homes in Australia, they commenced proceedings against Knott Investments and its dealers in the Australian Federal Court to recover the Winnebago brand after more than 30 years.

More

Crocodiles in court

The word ‘crocodile’ and an image of it as a logo device, are the subject of an intense global dispute.

Corrs has been acting for the famous French clothing and apparel company Lacoste for many years in respect of a number of very heavily disputed trade mark opposition, and is currently playing a central role assisting Lacoste’s dispute in Australia, New Zealand and Fiji.

More

Our Thinking

Protecting major sporting events held in Australia - Legislating against ambush marketing

A Bill that increases protection against businesses that free load off major sporting events is timely and welcome.

More

Making your mark in Australia: A guide for Chinese companies

There are opportunities for Chinese companies wishing to build their brands and business in Australia.

More

Tips for Australian brand owners - Recent case law on maintaining your trade mark registrations in Europe

Australian brand owners that have registered trade marks in Europe must heed a recent decision on the continuing requirement of trade mark use.

More

IP for free? A ‘Quirky’ idea that reinvents innovation

Companies spend billions protecting their IP, but now one of the world’s largest is bucking the trend and giving free access to some of its patents.

More

Doing Business in Australia

Australia is an exceptional place in which to do business. Find out how we can help you develop your business in Australia.

More Download

Copyright and the Digital Economy - ALRC inquiry needs broader scope

Australians need a copyright system that works. One they can respect. Our copyright laws need to provide certainty, encourage innovation, and enhance the free flow of information.

More

Do you have the tactical and strategic edge in litigation?

From time to time you will be faced with a step which is unusual and not generally taken by lawyers. But if followed in the appropriate way it can save the client considerable time and money.

More

Who’s right with internet copyright?

A recent case in the Federal Court of Australia has opened the door for copyright holders of creative content to pursue ISPs for breaching intellectual property rights in sharing their material. The battle in Australia is heating up.

More

Australia should lead in counterfeit crackdown

The new Anti-counterfeiting Trade Agreement (ACTA) is the latest international effort aimed at combating the more than US$200 billion dollar global trade in counterfeit and pirated goods.

More

Protect your brand on the internet

Who is in charge on the internet? Mostly, it seems it’s the consumer. So how do you protect your brand when it’s in the hands of the consumer and the consumer is everywhere?

More

Our Experience

Barefoot win for Gallo

When the Californian E&J Gallo Winery, makers of Barefoot wine, moved to stop the use of the word Barefoot on a Lion Nathan beer, it took three tiers of court challenges before the High Court made a ruling that reaffirmed Gallo’s global trademark rights.

Corrs’ international experience and expertise meant the team could correctly advised Gallo that it could win the case even when they had never directly marketed Barefoot wines in Australia.

BlackBerry

Businesses often have to defend their trade marks on many fronts. Having an Australian team experienced in coordinating strategy with large international litigation teams was critical for BlackBerry.

Corrs acted for BlackBerry in the Federal Court and the Trade Marks Office, to stop Samsung adopting the name BLACKJACK for a smartphone. The resulting Australian settlement led the way for successful negotiations throughout RIM’s global market.

Botox says no to No-Tox

When a company sought to register the name No-Tox in relation to facial cosmetics, Allergan, the owner of one of the world’s leading global cosmetic brands, Botox, engaged Corrs Chambers Westgarth to oppose the registration.

Through Corrs’ diligent and determined efforts over a prolonged period, the strength of the of the global Botox brand was protected.

Despite the Trade Mark Office initially rejecting Botox’s opposition, Corrs’ managed a successful appeal, and the registration of the trademark No-Tox was refused.

Cadbury

It has been very difficult for companies to register a single colour as a trade mark but a seven-year case, involving the distinctive purple of Cadbury chocolate, has set a precedent in the steps needed to register a single colour in Australia.

The winning strategy relied on garnering carefully targeted evidence of use going back almost a century and of current consumer perceptions to build the most compelling case in these unchartered waters of trade mark law.

BAT

Corrs is acting for British American Tobacco (BAT) as part of a global team in the protection of BAT’s IP rights against Australia’s Tobacco Plain Packaging Act.

The Act mandated the removal of graphical trade marks, designs, and other intellectual property from tobacco products with effect from December 2012.

Corrs gets Winnebago back on the road in Australia

Winnebago Industries Inc., famous for its motor home and recreation vehicles since the 1960s, engaged Corrs’ IP team to protect its brand in Australia.

In 1982, an Australian RV manufacturer unconnected with the US company began manufacturing and selling motor homes bearing the Winnebago brand and logo interpretation.

When the US company developed an interested in selling their motor homes in Australia, they commenced proceedings against Knott Investments and its dealers in the Australian Federal Court to recover the Winnebago brand after more than 30 years.

Crocodiles in court

The word ‘crocodile’ and an image of it as a logo device, are the subject of an intense global dispute.

Corrs has been acting for the famous French clothing and apparel company Lacoste for many years in respect of a number of very heavily disputed trade mark opposition, and is currently playing a central role assisting Lacoste’s dispute in Australia, New Zealand and Fiji.

Our Thinking

Doing Business in Australia

Australia is an exceptional place in which to do business. Find out how we can help you develop your business in Australia.

Protect your brand on the internet

Who is in charge on the internet? Mostly, it seems it’s the consumer. So how do you protect your brand when it’s in the hands of the consumer and the consumer is everywhere?

Australia should lead in counterfeit crackdown

The new Anti-counterfeiting Trade Agreement (ACTA) is the latest international effort aimed at combating the more than US$200 billion dollar global trade in counterfeit and pirated goods.

Who’s right with internet copyright?

A recent case in the Federal Court of Australia has opened the door for copyright holders of creative content to pursue ISPs for breaching intellectual property rights in sharing their material. The battle in Australia is heating up.

Making your mark in Australia: A guide for Chinese companies

There are opportunities for Chinese companies wishing to build their brands and business in Australia.

Do you have the tactical and strategic edge in litigation?

From time to time you will be faced with a step which is unusual and not generally taken by lawyers. But if followed in the appropriate way it can save the client considerable time and money.

Copyright and the Digital Economy - ALRC inquiry needs broader scope

Australians need a copyright system that works. One they can respect. Our copyright laws need to provide certainty, encourage innovation, and enhance the free flow of information.

IP for free? A ‘Quirky’ idea that reinvents innovation

Companies spend billions protecting their IP, but now one of the world’s largest is bucking the trend and giving free access to some of its patents.

Tips for Australian brand owners - Recent case law on maintaining your trade mark registrations in Europe

Australian brand owners that have registered trade marks in Europe must heed a recent decision on the continuing requirement of trade mark use.

Protecting major sporting events held in Australia - Legislating against ambush marketing

A Bill that increases protection against businesses that free load off major sporting events is timely and welcome.

Our Experts

David Smith.jpg

David Smith

Partner Melbourne +61 3 9672 3345
YATESDavidwebsitegreySIZEDTH.jpg

David Yates

Partner Perth +61 8 9460 1806
Frances Wheelahan

Frances Wheelahan

Partner Melbourne +61 3 9672 3380
Odette Gourley.jpg

Odette Gourley

Partner Sydney +61 2 9210 6066
BRADSHAWSophiewebsitegreySIZEDTHfake.jpg

Sophie Bradshaw

Special Counsel Brisbane +61 7 3228 9399
Stephen Stern.jpg

Stephen Stern

Partner Melbourne +61 3 9672 3148
Tim Allen.jpg

Tim Allen

Partner Melbourne +61 3 9672 3242
Vanessa Mellis.jpg

Vanessa Mellis

Special Counsel Brisbane +61 7 3228 9409