Services

Griffith Hack's specialist litigation team has expertise in conducting the following types of litigation:

• Infringement and enforcement of patents.
• Appeals from decisions of the Trade Marks Office.
• Infringement and enforcement of designs.
• Appeals from decisions of the Designs Office.
• Appeals from decisions of the Patents Office, including patent opposition proceedings.
• Infringement of trade marks and expungement of Trade Marks/rectification of the Trade Marks Register.
• Copyright infringement, including infringement of copyright in software and infringement of rights in Circuit Layouts.
• Allegations of passing off, get up cases and contraventions of the Trade Practices Act (allegations of misleading and deceptive conduct).
• Anti-competitive or restrictive trade practices.
• Actions for breach of confidence and misuse of trade secrets.
• Actions concerning restraint of trade clauses in employment contracts and sale of business agreements.

View Individual Profiles

Our lawyers conduct cases principally in the Federal Court of Australia and the Supreme Courts of Victoria and New South Wales, and where necessary, appeals to the High Court of Australia. Most Australian intellectual property disputes are litigated in the Federal Court of Australia, as the principal jurisdiction for federally based statutes such as the Patents Act 1990, the Designs Act 1906 as well as the new Designs Act 2003 (commenced on 17 June 2004), and the Trade Marks Act 1995.

Our team of lawyers is experienced in acting upon instructions to issue urgent interlocutory applications in relation to infringement and where necessary defending such actions on behalf of clients. We are experienced in using various procedural options in litigation, including seeking urgent orders for delivery up of infringing goods (Anton Pillar orders) and discovery of documents before action.

Griffith Hack's philosophy in litigation is to pursue the best tactical approach to achieve the desired commercial outcome for our clients. Griffith Hack's litigation capabilities are enhanced by the conduct of litigation in technical fields by using a team incorporating patent attorneys with expertise in the relevant technology. This team approach allows Griffith Hack to provide clients with a comprehensive one-stop shop approach to the conduct of complex intellectual property litigation.

Given our wide network of overseas colleagues, we also coordinate representation for clients in overseas intellectual property disputes.

Alternative Dispute Resolution

As commercial disputes are a significant part of our practice, our preferred approach in commercial disputes is, where appropriate, to initially attempt to resolve the issues by means of negotiation rather than litigation as it is usually in the interests of the parties concerned for the business relationship to continue. To negotiate effectively requires understanding of both the strict legal obligations as well as the commercial intent of the parties to the agreement. The industry expertise of our professionals is often invaluable in enabling us to deliver practical outcomes to such disputes.

Even in the course of Court proceedings, it is becoming a regular demand of judges that the parties attempt alternative dispute resolution.

Griffith Hack has a good track record in resolving matters through mediation and some of our lawyers are mediators themselves, including mediators listed with the World Intellectual Property Organisation Panel of Mediators.

A new mediation forum that has become popular for resolving domain name disputes is the ICANN procedure implemented by the World Intellectual Property Organisation. Pursuant to this procedure, parties in dispute over the ownership of a top level domain name file a complaint and have the issue determined by an expert who delivers a binding ruling on ownership of the domain name. Griffith Hack has used this procedure on behalf of clients and successfully obtained domain names from cybersquatters. One of our lawyers is on the panel of ICANN experts.

Expertise

Some of our recent litigation work includes:

Prosecuting and defending urgent injunction applications

• Gillette Co & Anor v Pharma-Goods Australia Pty Ltd - we successfully resisted Federal Court injunction application in the Federal Court based on trade mark infringement, passing off and misleading and deceptive conduct.
• SAP AG & Anor v Frontier Tech - we acted for SAP AG in an Anton Pillar application brought in the Federal Court based on copyright infringement of software.

IP Infringement, passing off/misleading and deceptive conduct proceedings

• Lacey v Foggin – Successfully acted in Federal Court proceedings on behalf of owner of registered design in ‘Orgasmatron’ device, and successfully defended appeal to Full Federal Court.
• SAP AG & Anor v Sapient Australia Pty Ltd - acted for SAP AG in a Federal Court and Full Federal Court action for trade mark infringement, passing off and misleading and deceptive conduct.
• Burger King Corporation & Anor v Burger King Pty Ltd - we conducted a Federal Court cybersquatting/trade mark infringement action on behalf of Burger King Corporation.
• Metcash Trading Limited Ors ats Marleef Pty Limited - we successfully defended on behalf of Metcash Trading Limited allegations of passing off and misleading and deceptive conduct relating to the use of the mark "Chefs Pantry".
• Ingenico International (Pacific) Australia Pty Ltd v Dynamic Data Systems - we acted for Dynamic Data Systems in a Federal Court action for infringement of a patent for mobile EFTPOS system.
• Sydneywide Distributors Pty Limited & Anor ats Red Bull - we acted for Sydneywide in this landmark getup case, defending allegations of passing off and misleading and deceptive conduct.
• Wilkins v Dovuro Pty Ltd & Anor - defence of a class action claiming misleading and deceptive conduct. We were successful in an appeal of this matter to the High Court of Australia.
• Lexmark International Inc and Lexmark International (Australia) Pty Ltd v Boomerang Imaging Supplies Pty Ltd & Ors – We defended a Federal Court action for trade mark infringement and alleged breaches of section 52 of Trade Practices Act in relation to packaging, get up and promotional material.
• Sydney Markets Limited v Sydney Flower Market Pty Ltd - we acted for Sydney Markets Limited in Federal Court proceedings for passing off and misleading and deceptive conduct in respect of alleged theft and infringement of the mark "Sydney Flower Market".
• Learmont Land Company Pty Ltd v Tetra Pak Ltd - we conducted and successfully settled a Supreme Court action for breach of confidence.
• Dart Industries, Inc. v JAR Engineering - we successfully settled a breach of confidence and infringement of copyright action on behalf of JAR Engineering in the Federal Court.
• AW Tas v Herlest Nominees - we successfully defended a patent infringement action in the Federal Court concerning fruit grading machines.
• Buchanan Group Pty Ltd v Sorgetti & Anor – we were successful in obtaining an interlocutory injunction for Buchanan Group Pty Ltd in relation to the unauthorised use of of the BRAND POWER trade mark on the respondents’ website and domain name and the matter was subsequently settled.

Appeals to Federal Court from Trade Marks and Patent Office Decisions, for example:

• Kellogg Company v PB Foods Pty Ltd - we successfully defended an appeal upholding our client's trade mark registration. Acted for PB Foods (WA based dairy, ice cream and beverage company).
• Matsushita Electric Industrial Co Limited - defending an appeal brought by Bose Corporation challenging the registration of Matsushita's SHOCKWAVE trade mark relying on the Bose WAVE and ACOUSTIC WAVE trade marks.
• Federal Court appeal under the Administrative Decisions Judicial Review Act from a Patent Office decision on behalf of Dynamic Data Systems and for National Starch & Chemical Co.
• Federal Court appeals from patent oppositions on behalf of National Starch & Chemical Co against Goodman Fielder.
• Federal Court appeal from patent opposition on behalf of Tioxide Group Services against Kerr McGee Corporation and Millennium Inorganic Chemicals, Inc.
• Federal Court appeal from patent opposition on behalf of Allelix Biopharmaceuticals, Inc. against Chugai Pharmaceuticals, Inc. and the Commissioner of Patents.
• Federal Court appeal from Patent Office decision on behalf of Sonus Pharmaceuticals, Inc. against Schering Aktiengesellschaft and Alliance Pharmaceutical Corp.
• Federal Court Appeal from Patent Office decision on behalf of Austal Ships against Stena Rederi
• Federal Court appeal from trade mark opposition on behalf of Luxury Skin Care Brands Pty Ltd against Clinique Laboratories Inc.

Customs seizure Management and Issue of Proceedings

• Management of Shimano Australia and Sanrio Co Limited's Customs Seizures and related contentious matters, including issuing proceedings in the Federal Court.
• Management of Dolce & Gabbana customs seizure and related contentious matters.
• Management of Seiko Corporation customs seizure and related contentious matters.
• Management of Pelle Pelle, Inc customs seizure and related contentious matters.

Anti-competitive or restrictive trade practices

• Federal Court case involving alleged price fixing of retail petrol brought by the ACCC against retailers in Ballarat including the Shell branded retailers operated by a Shell Multisite Franchisee represented by the firm
• Federal Court case involving alleged price fixing of retail petrol brought by the ACCC against retailers in Geelong including the Shell branded retailers operated by a Shell Multisite Franchisee represented by the firm

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