Alphapharm Pty Ltd v H Lundbeck A/S & Lundbeck Australia Pty Ltd
We acted for Alphapharm Pty Ltd in Federal Court of Australia pharmaceutical patent revocation and infringement proceedings. The patent purports to cover the anti-depressant medicine escitalopram (Lexapro) and is owned by a Dutch company, H Lundbeck A/S, and licensed to its Australian subsidiary, Lundbeck Australia Pty Ltd.
AMR v Alphapharm
We act for Alphapharm in proceedings brought by AMR, the owner of a patent in relation to fexofenadine, which is used in the treatment of allergies. AMR alleges that Alphapharm infringes the patent through sales of its Xergic product. Alphapharm has cross claimed alleging that the patent is invalid on numerous grounds. The matter involves complex synthetic chemistry and pharmacology.
The University of Sydney v ResMed
We act for The University of Sydney in proceedings against the high profile medical device company, ResMed. ResMed makes, among other things, devices to be used in the treatment of sleep apnoea, a form of obstructed breathing which affects sleep and causes adverse health consequences. The focus of the dispute is whether a series of face masks manufactured by ResMed, known as the "Mirage" series, is covered by a licence agreement between ResMed and The University.
Esco Inc and Bradken Resources v CQMS and Pac Mining - patent litigation
We act for Esco and Bradken who have patents relating to ground engaging tools for mining applications. These proceedings allege that CQMS and Pac Mining infringe those patents. This proceeding is part of an overall strategy of Esco to enforce its patents against competitors in an industry where replacement parts for wear members is extensive.
Inamed Development Company v Morton Surgical Pty Limited
We acted for Inamed Development Company (now part of the Allergan Group) in Federal Court infringement and revocation proceedings concerning a patent for a gastric band device. The band is placed around the upper portion of the stomach in laparoscopic surgery. Morton Surgical is the Australian distributor of a band manufactured by a French company. The Australian proceedings were of strategic significance for our client in deterring copyists in Australia and elsewhere.
Goodman Fielder Limited
We acted for Quality Bakers Australia Pty Limited, a Goodman Fielder Group company, in Federal Court proceedings bought by George Weston Foods Limited. At issue was infringement and validity of an innovation patent owned by George Weston, in relation to Low GI (glycaemic index) white bread. The proceedings were significant because they involved the leading competitors in Australia’s bread industry.
Deltapine Australia Pty Ltd - Patent litigation relating to genetically modified cotton?
We represented Deltapine Australia, the Australian subsidiary of a US company, in a patent infringement action concerning genetically modified cotton. The litigation involved highly technical material and specialised areas of law. These include patent law and the regulatory regimes governing genetically modified products (OGTR) and pesticides (APVMA). The case had multi-jurisdictional implications for the parties involved and international significance.
Novartis Vaccines and Diagnostics Inc. -v- SmithKline Beecham Biologicals SA - Federal Court - patent litigation
This was an appeal by SKB Inc from Novartis' successful opposition to SKB's patent application for a multivalent ('multishot') vaccine. SKB's patent application has been litigated in many jurisdictions by Novartis. We were retained by FB Rice (leading Australian life science patent attorneys) to act for Novartis and contest SKB's appeal to the Federal Court.
Mars Australia -v- Sweet Rewards - Federal Court - IP Litigation
Mallesons act for Sweet Rewards Pty Ltd, the Australian distributor of Petra Foods Limited, a large Singapore based cocoa and confectionary manufacturer. Mars Australia has alleged that its rights in the packaging of its iconic Maltesers product have been infringed by a "Malt Balls" chocolate ball product sold by Sweet Rewards. Sweet Rewards also supplies the same product (in different packaging) to Coles Supermarkets as part of its very successful "You'll Love Coles" home brand range.
Telstra Corporation Ltd v Premier Media Group Pty Ltd and News Digital Media Pty Ltd
This was the first copyright dispute in Australia concerning the scope of fair dealing in relation to sports footage on the Internet and over mobile phones. Intellectual property lawyers and commentators in Australia and around the world closely followed each stage of the dispute. The litigation attracted very significant media attention and featured on the front and back pages of newspapers on a daily basis for a number of weeks.
Telstra Copyright Tribunal Proceedings with APRA/AMCOS
We are acting for Telstra in the Copyright Tribunal proceedings concerning APRA/AMCOS's proposed licensing scheme for digital music downloads. APRA/AMCOS is the copyright collecting society responsible for collecting certain royalties for music publishers, composers and lyricists. It has recently sought to raise the licence fee payable on all music downloads from a standard rate of 8% per track to 12% per track - an increase of 50%. Telstra is seeking to have the licence scheme amended to reduce the licence fees payable for music downloads, as well as to address a number of other aspects of the scheme that Telstra considers unreasonable.
Microsoft Corporation
We have been Microsoft’s intellectual property advisers for over a decade. Microsoft’s value lies predominantly in its intellectual property which means that its requirements for intellectual property advice are extensive and of paramount importance. In the past year we have continued to advise Microsoft in relation to enforcement of its copyright and trade mark rights against piracy and other misuse, including a number of successful cases against infringers.
Sony Computer Entertainment and Microsoft Corporation v Gu
We acted for Sony Computer Entertainment and Microsoft in a joint action for trade mark and copyright infringement against Wen Bin Gu, a website operator offering a large selection of counterfeit PlayStation and Xbox computer games. We successfully obtained freezing orders against Gu’s assets to ensure the recoverability of any damages judgment against him.
Time Inc.
We acted for Time Inc. in its sale of Australian magazine titles WHO, Bride To Be and Practical Parenting to Pacific Magazines. Time Inc. simultaneously entered into long-term licensing agreements with Pacific Magazines, allowing Pacific to publish the InStyle title in Australia and New Zealand, and to use editorial content from Time Inc.’s famous People title in WHO.
Our team helped Time Inc. structure the transaction so as to extract the highest value for its IP assets, while ensuring that its long-term licensing arrangements with Pacific Magazines withstand the test of time.
Cadbury v Darrell Lea (Federal Court Proceedings)
First, the proceedings are crucial to Cadbury’s brand protection strategy. Secondly, there have been a number of judgments in the matter on issues including the admissibility of expert marketing evidence. Thirdly, the decision clarifies certain legal principles about the role of reputation in actions for passing off / misleading and deceptive conduct, which is again of importance to legal practitioners.
We succeeded in a difficult appeal. After being remitted back to the trial judge for further hearing, Cadbury’s application was dismissed. This is now the subject of a further appeal which is pending.
Citigroup Inc
We are acting for Citigroup Inc in a campaign to protect its famous “Citi” brand from unauthorised use in the financial services industry in Australia. According to Interbrand’s survey of the 100 Best Global brands, “Citi’ is the 11th most valuable brand in the world valued at $23.4 billion.
Adidas
We are acting for adidas in a campaign to protect its famous 3-Stripe mark against imitators, including the use of 4-Stripe marks on clothing and footwear. The campaign has been successful in removing infringing product from the market and has included the favourable resolution of 2 sets of Federal Court proceedings.
Opera House
We are acting for the Sydney Opera House Trust in relation to brand and trade mark protection for the Sydney Opera House and its famous iconic building.
This has involved securing novel trade marks for two representations of the Opera House building and devising and implementing an overall brand enforcement campaign. The brand enforcement campaign has included many letters of demand and over 30 non use actions and oppositions in the last two years.
Starbucks
We manage the Australian trade mark portfolio for Starbucks. Starbucks is one of the world’s most famous brands. In the last year we successfully opposed a trade mark application by a Taiwanese company for a look-a-like device featuring the word “E-Coffee”.
“Clients return to the practice here time and again for its ‘responsive and accommodating advisers’, who are just as at home whether dealing with contentions or non-contentious matters.”
Chambers Global Guide 2006-2007