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Our Commitment to Diversity

REPRESENTATIVE EXPERIENCE

Chris Round

IP Portfolio Management

Trade mark portfolio management, prosecution, opposition and litigation work for Australian Football League, Cricket Australia, National Basketball League, Australian Grand Prix, FIFA, Australia Professional Leagues, Banjo's Bakery, Nutrien Ag Solutions, Concept Eight Restaurants, Aurecon, A2B Australia, Costa Group, McDonald Jones Homes, Origin Energy Limited, Good Water Energy, Pinnacle Investment Management, Snooze, Traffic Technologies, Rathbone Wine Group, Parnell, Open Universities, Valve Corporation, Zippo and the West Australian Football Commission.
Managing the intellectual property portfolio of the Australian Football League (AFL). This involves protecting the intellectual property of the league and its 18 clubs and advising generally on branding issues for the AFL. In managing this portfolio, we also handled Federal Court of Australia litigation against a national retailer that continued to sell unauthorised product. We were also involved in the selection of the team names for the 17th and 18th AFL teams and has advised regarding numerous domain names and online issues. In 2017 we assisted the AFL with the launch of the highly successful AFLW (AFL Womens) competition which led to an array of new trade mark filings relating to the women's football competition. All of the applications that we cleared were accepted for registration.
Assisting Cricket Australia with the selection of the names for the eight teams constituting the Big Bash League. The work involved trade mark clearance and searching, filing 19 trade mark applications and prosecuting the marks to registration including the negotiation of numerous trade mark co-existence agreements.
Filing a range of heritage trade mark applications for an Australian sports league relating to a merchandising campaign for defunct teams. This has also involved numerous demands to US and Australian websites promoting merchandise for those defunct teams.
Advising a global asset management business on the global rebrand of its direct infrastructure business and commenced an international trade mark filing campaign to protect the new brand.
Chris has advised a national tennis organisation in relation to its rebrand of its signature tournament initially unveiled for the 2017 event. This has included filing and prosecution of trade mark applications in Australia, China, European Union, Hong Kong, Japan, New Zealand, South Africa, South Korea, Turkey, United Arab Emirates and the US. The trade mark filing program significantly expanded in 2018 to reflect use of AO branding by its sponsors and partners on new product categories, including food and non-alcoholic and alcoholic beverages.
Advising a leading vitamin company in Australia on its worldwide intellectual property portfolio including trade mark prosecution and enforcement of its brands.
Advising an Australian based diamond company on the worldwide launch of its coloured stone diamond business.

Federal Court Trademark Matters

Acting for Asian Restaurant Concepts (Noodle Box) in proceedings involving claims of trade mark infringement in the Supreme Court of Victoria.
Appearing in the Federal Court of Australia defending an appeal from a successful trade marks office decision concerning the name of a famous Indian food brand.

Copyright

Acting for a construction company in copyright infringement proceedings relating to infringements of its successful project home designs featuring an alfresco room. The three proceedings resulted in a special leave application to the High Court of Australia, two appeals to the Full Federal Court of Australia, and have provided important judgments relating to the issue of substantial reproduction of copyright works. Since these cases, Chris has been involved in other house plan cases for other builders acting as both applicants and respondents.
Acting for McDonald Jones Homes in a number of copyright infringement proceedings including in the Federal Court of Australia regarding its award winning house plan designs.
Numerous copyright infringement proceedings regarding Serbian, Bosnian and Turkish television channels including interlocutory applications and contested proceedings.
Acting for an aerospace manufacturer in breach of contract and breach of copyright proceedings in the Federal Court of Australia. The case involves detailed questions relating to the interpretation of a contract and whether copyright in a specification has been infringed.

Design Protection

Represented GM Holden Ltd in relation to seeking to enforce its design rights against Australia's largest spare parts manufacturer SSS Auto, which was the first case in Australia to consider the spare parts defence to the Designs Act 2003 (Cth).

Consumer Law

Trade mark and trade practices infringement proceedings brought against our client Digital Post Australia regarding the selection of its name. The proceeding involved defending an urgent interlocutory injunction application, a contested trial and an appeal to the Full Court of the Federal Court of Australia. Our client was successful at all stages.
Acted for a leading supplier of acai berries against its former Australian distributor in a proceeding concerning Australian consumer law issues.

Anti-Counterfeiting

Anti-counterfeiting proceedings for leading Australian automotive supplier GM Holden concerning the importation, distribution and sale of counterfeit HSV wheel rims. The Federal Court of Australia proceedings involved 25 respondents and involved an appeal to the Full Court of Australia on the question of director's liability.
Managing an anti-counterfeiting campaign on eBay for GM Holden including the setting up of a VeRO program and monthly removal and reporting on infringing entries. The program removes many different types of automotive parts from eBay.
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