Carmen Champion Barrister-at-Law Tel: 0413 489 537 Email: clausius1950@bigpond.com Called to the bar in 1999 Spheres of expertise Intellectual Property Law Carmen Champion has been identified as one of the world's leading trade mark lawyers in "Guide to the World's Leading Experts in Trade Mark Law". Her name also appeared in the first issue of "Guide to the World's Leading Experts in Patent Law". She also has extensive experience in copyright and design law, as well as passing off and contravention of the consumer protection provisions of the Australian Consumer Law. As a solicitor she was involved in advising generally on a wide range of intellectual property issues, and the drafting of agreements for the exploitation of intellectual property, and the IP due diligence process involved in the purchase of a business and the float of a company. A cross section of proceedings in which she has acted either as instructing solicitor or counsel include: litigation to protect the brand names "Bacardi", "Gucci", "The Phantom", "The Simpsons", "Spuds McKenzie" and Microsoft, acting for Minnesota Mining and Manufacturing Co in proceedings against Beiersdorf before the High Court of Australia, which is one of the leading cases in patent law, acting for Keith Harris & Co Ltd in proceedings against Bryant where an Australian Court for the first time
considered the admissibility of evidence collected during a test purchase, conducting the first case on the interpretation of s.24 of the Circuit Layouts Act 1989; acting for R & C Products Pty Ltd against Abundant Earth Pty Ltd which focused on the likely effect of a disclaimer on consumers, conducting two cases that determined whether video games fall within the definition of "cinematograph film" in the Copyright Act 1968, appearing for the ABC in AOC v Australian Broadcasting Commission concerning the ownership of copyright in a film of the Melbourne Olympics, appeared in a dispute concerning the ownership of the Waltzing Matilda trade mark for particular services; and appearing for the respondents in the proceedings (both at trial and appeal) concerning the issue of whether the applicant has a reputation in the name THREDBO which allows it to prevent the use thereof by third parties as other than a pure descriptor. Carmen Champion has an extensive practice in the area of trade mark oppositions, and trade mark advice generally. In respect of oppositions she has appeared, inter alia, successfully in Winton Shire Council and The Waltzing Matilda Centre Limited v Brenda Mauriceen Lomas (dispute over the Waltzing Matilda trade mark); Wiley Publishing Inc v Moondance Pictures Pty Ltd (dispute over an alleged look-a-like to the Books for Dummy character); Cranbrook School v Donald Herbert Wylie Joy Rosalind Wylie (dispute over the Cranbrook School shield); Virgin Enterprises Limited v Virgin International Pty Limited (dispute over the Virgin mark); Accentuation Pty Limited v Accenture Global Services GmbH (dispute re the marks Accentuation/Accenture), and many others. Consumer Protection She has since 1979 been involved in enumerable matters arising under the consumer protection provisions under the Trade Practices Act and now the Australian Consumer Law. These cases have been primarily concerned with misrepresentations made during negotiations, in advertisements or by way of the use of a similar name or get-up. Commercial Disputes She has been briefed in numerous matters arising out of commercial arrangements, including agreements relating to the development of websites or computer software generally. She was briefed to appear for one of the large accounting firms in respect of a multimillion dollar claim arising out of a contract for the development and provision of certain software. She has been involved in numerous cases concerning restraint of trade provisions, both in the context of the protection of confidential information and otherwise.
Franchising She had an active franchising practice as a solicitor, and has been briefed in numerous cases concerning disputes between franchisors and franchisees, many of which raised allegations of breach of the duty of good faith and unconscionable conduct. She is the preferred counsel in NSW for one of the leading law firms in Victoria specializing in franchising law. Equity She has been briefed in numerous matters relating to property disputes resulting from the breakup of various types of relationships, such as partnerships and joint-ventures. Many of these disputes involved the enforcement of restraint of trade provisions. Professional Negligence She has been briefed in a number of matters relating to the alleged negligence of solicitors by two of the major law firms who handle such matters for Law Cover in NSW. Career Highlights Employed by Allen Allen & Hemsley, specializing in intellectual property law and commercial litigation. Also advised extensively on trade practices and franchising matters. Joined Westgarth Baldick (later Corrs Chambers Westgarth) as a Senior Associate in 1986. Appointed a Partner in 1988. Partner in charge of the Technology and Intellectual Property Group in Sydney until July 1997. Specializing in intellectual property litigation, franchising, the commercial exploitation of intellectual property, and the consumer provisions of the Trade Practices Act 1974. Employed by Spruson & Ferguson, Patent & Trade Mark Attorneys, to conduct that firm s trade mark opposition work, and to advise generally on intellectual property matters. Mediation Training Former Associate Member of The Institute of Arbitrators & Mediators. ACDC Certificate of Business & Commercial Mediation Other Professional Activities
Member of a number of professional and industry organizations including the Copyright Society and the Intellectual and Industrial Property Society (Sydney). Past committee member of the Intellectual Property Sections of the Law Council of Australia and the Law Society of New South Wales, and the Intellectual and Industrial Property Society (Sydney). Lectured on franchising at the University of New South Wales, and was a co-author of "International Franchising" published by the Centre for International Legal Studies. She was a speaker at a franchising conference held in Washington in May 1996. Has recently lectured on trade mark law at UTS, and Intellectual Property Law at the University of Notre Dame. Written several articles and given numerous presentations including: When Silence is not Golden (overview of the latest section 52 cases) Interaction of the Trade Practices Act and Intellectual Property "Protection of Computer Software World Wide" "Licensing of Technology" "Franchising in Australia" "Protection of Intellectual Property" "Confidential Information - Recent Developments" "Franchising and Licensing" "Copyright Litigation" "Intellectual Property Due Diligence" "Recognition of International Reputation" "Protection of Confidential Information" "Successful IT Contracts - Key Issues & Legal Requirements" Legal Pitfalls Common to Sponsorship Contracts" "Intellectual Protection Available to New Products" "Copyright in Architects' Plans" "Problems in Cyberspace" "Using Intellectual Property as Security" Conduct of Intellectual Property Litigation Trade Mark Opposition Proceedings: A Practical Guide. Copyright in Architect s Plans/ Guide to the Conduct of Copyright Litigation
Sale of business agreements/the transfer of confidentiality obligations Enforcement of Restraint of Trade Provisions Protection of Descriptive Names. She is the author of a monthly intellectual property/franchising law newsletter titled LOCUTUS. As part of this project she also provides seminars. She has spoken on the following topics: (a) Restraint of trade provisions in employment and consultancy contracts. (b) (c) (d) (e) The use of Notices to Produce in Trade Mark Opposition Proceedings. The place of the Gestalt theory in passing off proceedings. Conducting Intellectual Property Litigation. Assignability of a confidentiality obligation.