Trade Marks and Unfair Competition

This subject has the following teaching availabilities in 2016:

This subject has a quota of 30 students. Please refer to the Melbourne Law Masters website for further information about the management of subject quotas and waitlists.

136-150 hours

The pre-teaching period commences four weeks before the subject commencement date. From this time, students are expected to access and review the Reading Guide that will be available from the LMS subject page and the subject materials provided by the subject coordinator, which will be available from Melbourne Law School. Refer to the Reading Guide for confirmation of which resources need to be read and what other preparation is required before the teaching period commences.

Melbourne Law Masters Students: None

JD Students: Successful completion of all the below subjects:

Applicants without legal qualifications should note that subjects are offered in the discipline of law at an advanced graduate level. While every effort will be made to meet the needs of students trained in other fields, concessions will not be made in the general level of instruction or assessment. Most subjects assume the knowledge usually acquired in a degree in law (LLB, JD or equivalent). Applicants should note that admission to some subjects in the Melbourne Law Masters will be dependent upon the individual applicant’s educational background and professional experience.

The Melbourne Law Masters welcomes applications from students with disabilities. The inherent academic requirements for study in the Melbourne Law Masters are:

• The ability to attend a minimum of 75% of classes and actively engage in the analysis and critique of complex materials and debate;
• The ability to read, analyse and comprehend complex written legal materials and complex interdisciplinary materials;
• The ability to clearly and independently communicate in writing a knowledge and application of legal principles and interdisciplinary materials and to critically evaluate these;
• The ability to clearly and independently communicate orally a knowledge and application of legal principles and interdisciplinary materials and critically evaluate these;
• The ability to work independently and as a part of a group;
• The ability to present orally and in writing legal analysis to a professional standard.

Students who feel their disability will inhibit them from meeting these inherent academic requirements are encouraged to contact Student Equity and Disability Support.

This subject is concerned with the laws in Australia that protect trade marks. Trade marks play a pivotal role in the marketing of goods and services, and generally are one of a trader‘s most valuable assets. The protection of trade marks is thus of critical importance to all traders but is also important to consumers, who rely on the information conveyed by trade marks. This subject concentrates on the trade mark protection regime provided by the Trade Marks Act 1995 (Cth) and involves a detailed study of the provisions of this Act and related case law. The action for passing-off and actions for contravention of the Australian Consumer Law provisions in the Competition and Consumer Act 2010 (Cth) proscribing misleading and deceptive conduct are also covered.

This subject meets the PSB requirements for ‘Topic Group C’.

The lecturer is an experienced intellectual property academic and former barrister who practised in the areas of trade marks and unfair competition.

Principal topics include:

• The function of trade marks
• Registration of trade marks under the Trade Marks Act 1995 (Cth)
• Infringement, defences and remedies
• Licensing and assignment, and other exploitation of trade marks
• Removal and cancellation of registration
• Management and maintenance of trade marks
• The action for passing-off and actions for contravention of the Australian Consumer Law provisions in the Competition and Consumer Act 2010 (Cth) proscribing misleading and deceptive conduct.

A student who has successfully completed this subject will:

• Have an advanced and integrated understanding of the legal principles
  • for obtaining, maintaining, protecting and exploiting a registered trade mark under the Trade Marks Act 1995 (Cth); and
  • for protecting a trade mark otherwise than by registration under the Trade Marks Act 1995 (Cth)
• Be able to critically examine, analyse, interpret and assess the effectiveness of these legal principles
• Have the skills and ability to apply their knowledge to new situations encountered in their practice as a trade marks professional
• Be an engaged participant in debate regarding emerging and contemporary issues in the field such as regulating the parallel importation of trade marked goods, the granting of anti-dilution protection to well known trade marks and the introduction of laws prohibiting unfair copying or unfair competition

• Have a sound appreciation of the factors and processes driving parliamentary revision of the legal framework
• Have a detailed understanding of situations which give rise to difficulties in obtaining, maintaining and protecting registered trade marks.
• Have a detailed understanding of the limitations of the regime for protecting unregistered trade marks
• Have an advanced understanding of the application of the legal principles in the context of advising and assisting clients with the preparation of their trade mark applications, initiating or defending any opposition or non-use removal applications, and the maintenance and exploitation of their clients’ rights, once granted
• Have the cognitive and technical skills to generate critical and creative ideas relating to substantive law issues in the field, and to critically and independently evaluate existing legal theories and principles
• Have the cognitive and technical skills independently to examine, research and analyse existing and emerging issues relating to trade mark law
• Have the communication skills to clearly articulate and convey complex information regarding legal issues in trade marks law to relevant specialist and non-specialist audiences, including clients
• Be able to demonstrate autonomy, sound judgment and responsibility as a practitioner and learner in the field of trade marks law.

Take-home examination (5,000-6,000 words as specified in the subject reading guide) (100%)

• Semester 1: 25 - 30 May
• Semester 2: 12 - 17 October

A minimum of 75% attendance is a hurdle requirement.

Specialist printed materials will be made available free of charge from the Melbourne Law School prior to the pre-teaching period.

This subject is not available as a breadth subject.