Stephen Stern

Partner. Melbourne.

+61 3 9672 3148 |   |  vCard

Stephen is an experienced senior commerical litigator best known for his extensive patent, copyright and trade mark litigation practice, including his anti-counterfeiting work for many of the world’s most prestigious brands. He is also well known for his significant wine law practice and in 2006 was appointed a Chevalier in the Ordre du Mérite Agricole by the French government in recognition of his services to the French wine industry.

Listed as a “leading lawyer” in virtually every notable legal guide and directory, Stephen is recognised as one of Australia’s foremost trade mark lawyer by his clients and the industry.

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Stephen is an experienced senior commerical litigator best known for his extensive patent, copyright and trade mark litigation practice, including his anti-counterfeiting work for many of the world’s most prestigious brands. He is also well known for his significant wine law practice and in 2006 was appointed a Chevalier in the Ordre du Mérite Agricole by the French government in recognition of his services to the French wine industry.

Listed as a “leading lawyer” in virtually every notable legal guide and directory, Stephen is recognised as one of Australia’s foremost trade mark lawyer by his clients and the industry.

Stephen’s client list is like a stroll though a luxury department store.

He is a leading authority in intellectual property field, acting for a wide range of clients including luxury goods manufacturers, clothing, footwear and textile producers, pharmaceutical companies, telecommunication and electronic companies.

“One of the top 25 Trade Mark experts in the world” Expert Guides
Stephen Stern

Stephen's Expertise

  • Pfizer & Viagra Stephen led the Australian team acting on behalf of Pfizer Inc. in major Federal Court of Australia and High Court of New Zealand patent infringement actions against Eli Lilly & Company, Bayer AG and GlaxoSmithKline plc defending Pfizer’s rights in relation to its Viagra® product (relating to patents for the use of phosphodiesterase type 5 inhibitors for the treatment of erectile dysfunction).
  • Coonawarra Acted for Foster’s wine group in extending the boundaries of the Coonawarra wine region to include the Robertson’s Well vineyards. The matter involved an appeal from a decision of the Geographical Indications Committee to the Administrative Appeals Tribunal and two further appeals to the Full Federal Court. Stephen played a leading role in co-ordinating with a small group of lawyers the claims made by 45 vignerons.
  • Caterpillar & John Deere Stephen acted on behalf of Caterpillar Inc. in significant Federal Court of Australia patent infringement action against John Deere relating to the undercarriage for a friction-drive agricultural tractor.
  • Assisted in strengthening Australia’s anti-counterfeiting laws Led making of submissions by IACC to the Australian Federal Government Advisory Council on IP in relation to strengthening Australia’s anti-counterfeiting laws.
  • Advises globally recognised brands Clients include Louis Vuitton, Hermès, Cartier, Ferrari, Hugo Boss, Lacoste, Gucci, Christian Dior, Versace, Moët & Chandon, Caterpillar, Ermenegildo Zegna, Fendi, Foster’s, Liz Claiborne, Prada, Quiksilver, Tommy Hilfiger, Vans, Brother, and BlackBerry.
  • Protection of BlackBerry brand Acted to defend and protect BlackBerry's leading and valuable brand in a large contested passing off/trade mark infringement case against Samsung.
  • Trade mark application for Cadbury’s “purple colour” Acted for Cadbury in this case that involved leading edge trade mark law issues. An opposition proceeding was appealed in the Federal Court with Australian retailer, Darrell Lea. The matter was completed with Cadbury gaining five interlocking registrations for the colour purple.
  • Protection of British American Tobacco’s IP rights Acting for British American Tobacco in a Constitutional law challenge to Australia's Tobacco Plain Packaging Act as part of an international team to protect its IP rights against the encroachments that were threatened by the legislation. The legislation is the first of its kind internationally and has enormous potential ramifications across a broad range of industries.
  • Acts for the French Government INAO and Interprofessional Organisations Stephen Acts for the INAO and numerous interprofessional organisations, such as the CIVC of Champagne, the BNIC of Cognac, the CIVB of Bordeaux and the BIVB of Burgundy for almost 25 years in protecting French wine (and other agricultural) controlled appellations of origin against misuse. Stephen coordinates for several of these organisations protection across the Asia-Pacific region.
  • Geographical IP protection of “Rothbury” brand for Foster’s Group Ltd Advised in the protection of Foster’s brands against third parties that would like to adopt those brands as geographical indications. This includes the litigation over the “Rothbury” trade mark, which was the first (and so far the only) case in Australia under the relatively new legislation dealing with the overlap between geographical indications and trade marks.

Stephen's Thinking

  • Do you have the tactical and strategic edge in litigation? 9 February 2012
    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
  • Not illegal but is it right? 4 October 2011
    Australian law allows the importation of genuine but unauthorised goods, even though another company may have exclusive rights to branded items. This parallel importation has long been difficult to stop and causes real damage to businesses and brands
    More

What others say

  • “One of the 50 IP Litigators you should know about” Asia IP, September 2013
  • “One of the top 25 Trade Mark experts in the world” Expert Guides: The Legal Media Group Guides to the World’s Leading Lawyers, 2011; and Best of the Best, 2007 & 2009
  • “Leaves no stone unturned when devising the best strategies” World Trademark Review, 2014
  • “Nominated as one of the world’s top 20 Trade Mark law practitioners” Managing Intellectual Property, May 2006
  • “Peers consider Stephen Stern to be 'one of the leading practitioners' in this area” Chambers Global Guide, 2014
  • “Best Lawyer - Intellectual Property” Best Lawyers Peer Review, 2008-2014
  • “Preeminent Lawyer - Intellectual Property (VIC)” Doyle’s Guide to the Australian Legal Profession, 2011-2013
  • “Widely regarded as Australia's chief authority on anti-counterfeiting matters, Stephen Stern is a 'heavyweight opponent' and has won renown for his work on behalf of Louis Vuitton Malletier, Cartier, Gucci and other luxury brands.” World Trademark Review, 2012
  • “Stephen Stern is commended as an extremely proficient operator” Chambers Global Guide, 2011
  • “Leading Lawyer - Intellectual Property: Trade Marks & Copyright” Chambers Global Guide, 2008-2014
  • “An absolutely superb lawyer ” World Trademark Review, 2013
  • “Very good at what he does and highly regarded in the market for his patent, trade mark and anti-counterfeiting work” Chambers Global Guide, 2013
  • “Featured Expert - Patents” Who's Who Legal, 2014
  • “Featured Expert - Trade Marks and Patents” Who's Who Legal, 2012

Stephen's Leadership

  • Corrs Chambers Westgarth UK/Europe Focus Group Co-chair
  • Mornington Peninsula Vignerons Association Honorary Solicitor
  • International Wine Law Association AIDV International Board Vice-President
    Former International President
  • Law Council of Australia IP Sub-Committee Member - Business Law Section
    Committee Member - Federal Litigation Section - Federal Court Liaison Reference
  • Federal Court Users Committee Committee Member
  • International Trademarks Association Member
  • American Bar Association - IP Section Member
  • L'Association Francaise des Practiciens du Droit de Marques and des Modeles (APRAM) Member
  • University Bordeaux IV - Montesquieu Annual Lecturer
  • EU and EC Law Centre, Monash University Board Member
  • Intellectual Property Enforcement Consultative Group Member
  • Melbourne Hebrew Congregation Past President
    Honorary Solicitor
    Member of the Executive Committee