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Chris Round

Partner
+61.3.9640.4364
Fax +61.3.9205.2055

Mr. Round is an intellectual property lawyer with extensive experience in the registration of intellectual property rights and associated litigation. He represents clients in copyright, trade mark, patent, designs and associated trade practices litigation in all Australian Courts.

Mr. Round prosecutes trade mark applications and oppositions before IP Australia and the Intellectual Property Office of New Zealand (IPONZ) and appears at Australian trade mark hearings. He manages the trade mark portfolio of many Australian and international companies and provides strategic advice on the registrability of a diverse range of trade marks in Australia and overseas. In addition, Mr. Round regularly prepares intellectual property due diligence reports.

Achievements

  • Finalist, Partner of the Year Awards – Intellectual Property, Lawyers Weekly (2017)
  • Leading Victorian Copyright & Soft IP Lawyer, Doyle's Guide (2015, 2016, 2017)
  • Leading Victorian Trademark Lawyer, Doyle's Guide (2015, 2016, 2017)
  • Leading Victorian Non-Contentious IP Lawyer, Doyle's Guide, 2015

Professional/Civic Activities

  • International Trademark Association member
  • Intellectual Property Society of Australia and New Zealand member
  • Australia and New Zealand Sports Law Association member

Publications
Mr. Round is a leader of the global IP blog 'IP Law Watch' and regularly writes posts to be published on the blog. In addition, he has published the following article: 

  • "Changes in Trade Mark Opposition Procedures in Australia Make it a More Attractive Place to Protect Intellectual Property", Caijing.com.cn legal column, August, with Xianjin Tian, 2014

Speaking Engagements

  • "Protecting your Brand", Dental Practice Owners Conference, Melbourne, 15 June 2017
  • "Raising the Bar - The new Australian experience of trademark oppositions" INTA Table Topic in San Diego, United States, 3 May 2015
  • "Trade Mark Examination and Hearings Practice Tips", Hosted an event for INTA, 30 July 2014 
  • "Intellectual Property Issues in an Online World", Learn With Us, 10 July 2014 
  • "Review of Changes in Opposition Procedures and Trade Mark Disputes", Legalwise Patents and Trademarks Conference, 19 June 2014 
  • "Issues That Arise When Building a Brand for a New Sports Team or League", INTA Table Topic in Dallas, United States, 4 May 2013
  • "Building a Brilliant Brand", IP Australia and Australian Industry Group seminar, 30 May 2012
  • "Introduction to Intellectual Property" to a number of accountants and other business advisors, 14 May 2010
  • "Protecting IP in the New Media Age", Australia and New Zealand Sports Law Annual Conference, 17 October 2008
  • 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, Mr. Round has also handled Federal Court of Australia litigation against a national retailer that continued to sell unauthorised product.
  • Trade mark portfolio management, prosecution, opposition and litigation work for GM Holden, FIFA, Landmark Operations Limited, Cricket Australia, Tennis Australia, Asian Restaurant Concepts, Cabcharge, McDonald Jones Homes, Valeant Pharmaceuticals, Pinnacle Investment Management, Porter Davis Homes, Ted’s Camera Stores, Open Universities and Deks Industries.
  • 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.
  • 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.
  • 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.
  • Current litigation regarding the first case in Australia to consider the spare parts defence to the Designs Act, a case relevant to all in the automotive industry.
  • Numerous copyright infringement proceedings regarding Serbian, Bosnian and Turkish television channels including interlocutory applications and contested proceedings.
  • 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.
  • 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.
  • Acting for Porter Davis Homes 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 Mr. Round has been involved in other house plan cases for other builders acting as both applicants and respondents.
  •  Assisting AAMI regarding an innovative television campaign featuring the Mr Goggomobil character created by Telstra. Issues involved included copyright in a television script and the character, misleading and deceptive conduct by the use of the similar character and passing off.