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kate andean

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  • Intellectual Property

about

Kate is an expert in trade mark law with over 18 years’ experience in Australia and England across all areas of branding practice and protection. This includes branding advice, clearance searching, prosecution, opposition and infringement matters, and portfolio management. She is adept at running matters at the Australian and New Zealand Trade Marks Offices, as well as UK and EU Offices.

She also advises clients in relation to designs, and domain name strategy and disputes. Kate was recognised as a leading trade mark professional by the World Trade Mark Review 1000 in 2021, 2022, 2023 and 2024.

EXPERIENCE

  • Managed the trade mark portfolios of local clients and multi-national companies, advising in relation to everything from global rebrands, clearance searching, international filing programs, and the use or non-use of older brands.
  • Prosecuted the Australian application for the name of a much-loved children's television show, and obtained registration in numerous classes after overcoming a large number of prior marks and following an ex parte hearing at the trade marks office. Oversaw the registration of word and logo marks in Australia and New Zealand for the Birmingham commonwealth games in 2022, including overcoming objections with the consent of the New Zealand Olympic committee.
  • Acted for both opponents/non-use applicant and trade mark owners in opposition and non-use removal proceedings before the Australian and New Zealand trade marks offices.
  • Advised clients in respect of trade mark enforcement, customs notices, counterfeit products and cease and desist letters. This includes advising a local confectionery manufacturer in respect of allegations of trade mark infringement made by a competitor and a successful negotiated settlement on favourable terms for the client. Implemented successful enforcement programs, which includes preparing template letters of demand and advising on and taking action in respect of repeated misuse of trade marks.
  • Advised a major publisher on a highly confidential project related to a proposed update to a much-loved character and brand. The advice included consideration of whether the use of the updated images would constitute use of existing registrations and how both registered and reputation rights (established over many years of substantial use) might be impacted or diminished.
  • Advised a local confectionary manufacturer in respect of allegations of trade mark infringement made by a competitor in which a successful negotiated settlement on favourable terms was achieved.

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