Trade Marks

The a2 Milk Company Limited: Acting for The a2 Milk Company Limited (dairy company dual listed on the NZX and ASX) in various IP matters including four Federal Court appeals from decisions of the Trade Marks Office (each successful) and two Federal Court proceedings concerning trade mark infringement and rectification issues (judgment reserved).

Sportsbet: Acting for Sportsbet in a range of very significant matters including the management of Sportsbet's global trade mark portfolio. We successfully acted for Sportsbet in defence of a trade mark opposition concerning Sportsbet’s BET WITH MATES product. We are also currently acting for Sportsbet in more than 20 trade mark oppositions against one of Sportsbet's main competitors.

Accent Group Limited: Accent Group is Australia's largest footwear retailer. It has over 900 retail stores across more than 34 brands, and more than 35 online platforms. Those brands include The Athlete's Foot, Platypus, Hype DC, Nude Lucy and Stylerunner. We have managed Accent Group's very extensive global trade mark portfolio since 2018. We are also currently acting for Accent Group's in Federal Court trade mark proceedings against an alleged infringement of the HYPE trade mark.

Toyota Australia and Toyota Japan: Acting for Toyota against over 150 parties which have been misusing Toyota's trade marks (and often also copyright works). This is undoubtedly one of Australia's most significant trade mark enforcement campaigns and has delivered outstanding outcomes for Toyota. Where an acceptable out-of-court settlement cannot be achieved, we represent Toyota in Federal Court proceedings against such parties. We have secured significant settlements for Toyota in eight such proceedings, and are currently acting for Toyota in three ongoing proceedings.

Clayton Utz is also assisting Toyota as part of its productive relationship with Border Force (the Australian Government customs agency). As a result of those notices, Border Force has intercepted a range of infringing products bound for the Australian market. We also mange Toyota Motor Corporation Australia's trade mark portfolio, which includes disputes and oppositions from time to time.

PDP: Acting for PDP, the leading Australian manufacturer of chilled desserts in Australia and owner of the market leading WICKED SISTER brand. WICKED SISTER is PDP's most valuable intellectual property. We have previously assisted in high profile infringement proceedings on behalf of the company. More recently Clayton Utz has been assisting in prosecution and general IP advice including in relation to a number of high profile collaborations.

Kokopod: We defended the operators of the Kokopod business in Federal Court proceedings commenced by Koko Black. In the proceeding, Koko Black alleged that our clients had infringed their registered trade mark rights, engaged in passing off and contravened the Australian Consumer Law. The matter settled on confidential terms.

Pokemon: We defended Pokemon Pty Ltd (and its sole director) in Federal Court proceedings commenced by The Pokemon Company International Inc. This case was (to our knowledge) the first of its kind in Australia to deal with IP issues in the context of NFTs (non-fungible tokens).

Monash University: Australia’s largest university, operates globally with campuses, centres, and programs across Asia, Europe, and beyond. Clayton Utz supports Monash’s international growth by securing trade mark protection for its core brands, including MONASH, THE ENDANGERED GENERATION, and CLIMATEWORKS CENTRE, as well as initiatives like the World Mosquito Program and the Low FODMAP Diet. We also assist with trade mark disputes and oppositions worldwide, ensuring Monash’s intellectual property is safeguarded.

Cantarella Bros Pty Ltd (Vittoria Food & Beverage): Acting for Cantarella in the Federal Court of Australia in trade mark infringement proceedings against Lavazza Australia Pty Ltd. Cantarella alleges that Lavazza's use of ORO infringes Cantarella registered rights. Lavazza has cross claimed against Cantarella seeking expungement of the ORO marks in issue. Clayton Utz acted in the appeal of Justice Yates' first instance decision in these trade mark infringement proceedings, which was heard before the Full Federal Court in May 2024 and determined in February 2025. Clayton Utz also acted for the company in its bid for special leave to appeal to the highest court in Australia.

Clayton Utz previously acted for Cantarella in each of the proceedings in the lead-up to, and the successful appeal in, the High Court which upheld that ORO was inherently registrable. This remains the most recent trade mark matter to be heard by the High Court and remains a key authority in trade mark proceedings in Australia.

The present proceedings involve a number of novel and complex legal issues relating to not only the High Court's findings, issues surrounding ownership and abandonment of trade marks, substantial identity, and important policy issues relating to how prominent use of a sign must be before it borders an infringement. The current proceedings are likely the longest running and highest profile trade mark infringement proceedings presently being litigated in the Federal Court of Australia.

Clayton Utz is also acting for Cantarella in a related Opposition in the Intellectual Property Office of New Zealand against Luigi Lavazza S.p.A. in which Cantarella is opposing Lavazza's attempt to register a trade mark device that prominently features the sign ORO. Those proceedings were recently heard before the Assistant Commissioner and a decision delivered. The Assistant Commissioner found that the trade mark device Lavazza had sought to register was likely to deceive or confuse, refusing registration as a result. Lavazza have filed an appeal in this matter which was heard in June 2024.

Tourism and Events Queensland (TEQ): Advised TEQ on opposition proceedings commenced by Augusta National Inc (operator of the well-known Masters golf tournament) against TEQ's trade mark application for "Outback Queensland Masters".

The Corner Hotel: acted for Swancom (operator of The Corner Hotel) in Federal Court proceedings against McDonald's alleging trade mark infringement in relation to the use of the "CORNER" trade mark.

Spotless Group: acted for Spotless in Federal Court proceedings alleging trade mark infringement, passing off and misleading conduct against Qantas.