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Gregory Pieris

Special Counsel
+61.3.9640.4412
Fax +61.3.9205.2055

Mr. Pieris is an intellectual property lawyer with particular experience in litigious and non-litigious matters involving trade marks, designs, copyright and trade practices law. Mr. Pieris works for a diverse range of Australian and international clients, including sporting bodies, automotive and aerospace manufacturers, internet service providers and manufacturers of fast moving consumer goods.

He prosecutes trade mark applications and oppositions before IP Australia. Mr. Pieris also provides strategic advice on the registrability of a diverse range of trade marks and assists clients in enhancing their trade mark portfolios, both in Australia and internationally.

He has developed particular interest in intellectual property issues involving technology and the online environment, which allows him to assist clients to address the challenges of protecting intellectual property in this constantly changing landscape.

Professional/Civic Activities

  • Law Institute of Victoria member
Brand protection
  • Advising the AFL on its global brand portfolio since 2006 including trade mark registrations which has included advising on:
    • the selection of the team names for the 17th and 18th AFL teams
    • numerous domain names and online issues.
    • on protection of trade marks and playing uniform designs associated with the newly formed national women's league, AFLW, and new short game format, AFLX.
    • the launch in 2017 of the highly successful AFLW (AFL Womens) competition which led to an array of new trade mark filings relating to the women's football competition. All of the applications that we cleared have been accepted for registration.
Trade marks
  • Advising Tennis Australia in relation to its rebrand of the Australian Open tournament to "AO", initially unveiled for the 2017 Australian Open and ongoing IP matters. This has included the filing and prosecution of trade mark applications in Australia, China, European Union, Hong Kong, Japan, New Zealand, South Africa, South Korea, Turkey, United Arab Emirates and the U.S.
  • Management of trade mark portfolios for Australian and international brands including General Motors Holden, Australian Football League (AFL) and Boeing.
  • Advising the AFL and Cricket Australia on optimisation of trade mark portfolios and the selection of names and trade mark filing strategies for new sporting teams.
  • Advising on trade mark prosecution and acting in trade mark oppositions before IP Australia for the firm’s clients including Google Inc, Cricket Australia and ispONE.
IP litigation
  • Acting as the exclusive outside counsel to Kazia Therapeutics Limited (a biotechnology company with a focus on anti-cancer drugs, previously known as Novogen Limited) in Australia on various IP and patent matters. During the course of 2017, K&L Gates acted in the Federal Court of Australia proceedings relating to an intellectual property dispute: Novogen Limited v Noxopharm Limited & Anor (VID1464/2016).
  • Acting for clients in combating online intellectual property infringement, including unauthorised live streaming of copyright broadcasts, issuing Digital Millennium Copyright Act (DMCA) takedown notices and establishing eBay monitoring and anti-counterfeiting programs for various clients.
  • Represented GM Holden Ltd in relation to seeking to enforce its design rights against Australia's largest spare parts manufacturer SSS Auto, which was the first case in Australia to consider the spare parts defence to the Designs Act 2003 (Cth).
  • Acting for General Motors Holden in Federal Court of Australia proceedings against 25 respondents for trade mark infringement, designs infringement, misleading and deceptive conduct and passing off in respect of Holden and HSV’s unique alloy wheel designs.
Trade Practices
  • Acting as the exclusive outside counsel to Kazia Therapeutics Limited (previously Novogen Limited) in Australia in which, during the course of 2017, we acted in the Federal Court of Australia proceedings relating to an intellectual property dispute: Novogen Limited v Noxopharm Limited & Anor (VID1464/2016).
  • Acting for an Australian national manufacturer and retailer in a series of related matters involving claims of misleading and deceptive conduct over the use of a colour. This involved successfully defending claims in the Federal Court of Australia, Full Federal Court of Australia and High Court of Australia, as well as acting in opposition proceedings at the Trade Mark Office.
Anti-counterfeiting & customs
  • Managing customs monitoring programs and working with the Australian Customs and Border Protection Service to tackle the importation of counterfeit products manufactured offshore.
  • Advising clients on parallel importation protection strategies.