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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

  • 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

  • "Raising the Bar - The new Australian experience of trademark oppositions" INTA Table Topic in San Diego, United States May 3 2015
  • "Trade Mark Examination and Hearings Practice Tips", Hosted an event for INTA, July 30, 2014 
  • "Intellectual Property Issues in an Online World", Learn With Us, July 10, 2014 
  • "Review of Changes in Opposition Procedures and Trade Mark Disputes", Legalwise Patents and Trademarks Conference, June 19, 2014 
  • "Issues That Arise When Building a Brand for a New Sports Team or League", INTA Table Topic in Dallas, United States, May 4, 2013
  • "Building a Brilliant Brand", IP Australia and Australian Industry Group seminar, May 30, 2012
  • "Introduction to Intellectual Property" to a number of accountants and other business advisors, May 14, 2010
  • "Protecting IP in the New Media Age", Australia and New Zealand Sports Law Annual Conference, October 17, 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, The Boeing Company, Patties, Landmark Operations Limited, Cricket Australia, Tennis Australia, Intellectual Property Development Corporation/Thunder Road Brewery, Godfreys, NutrientWater, Noodle Box, Places Victoria, Ted’s Camera Stores, Open Universities and Deks Industries.
  • Trade mark and trade practices infringement proceedings brought by Australia Post 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 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.
  • 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.
  • 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 an Australian inventor of commercial machinery obtain judgment against its former manufacturer regarding breach of copyright, breach of agreement and breach of the Trade Practices Act.
  • 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.