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Simon Casinader

Senior Associate
+44.(0)20.7360.8256
Fax +61.3.9205.2055
Mr. Casinader is a senior associate in the firm's London office and had previously worked in the Melbourne office for over seven years. Mr. Casinader is an intellectual property lawyer with extensive experience in protecting and enforcing intellectual property rights across multiple jurisdictions.

His experience includes developing and enforcing brand protection strategies on matters for trade mark, copyright and design owners, and providing contentious and non-contentious advice in relation to all aspects of intellectual property law.

Mr. Casinader works with his clients to prosecute, manage and enforce international trade mark and design portfolios and regularly advises on related clearance issues. His broad range of experience includes prosecuting Australian, New Zealand, UK, EU and international trade mark and design applications as well as acting and appearing in contentious trade mark and patent opposition proceedings before IP Australia, IPONZ, the UKIPO and the EUIPO.

Mr. Casinader has represented clients in legal proceedings concerning patent, trade mark, design and copyright infringement, as well as the misuse of confidential information and trade practices cases before the Federal Court of Australia, Supreme Court of Victoria, Intellectual Property Enterprise Court and High Court of Justice in the UK.

Mr. Casinader also assists client with a wide range of online conduct matters including the recovery of domain names registered in bad faith, eCommerce disputes and social media issues and he has specific experience in developing, managing and enforcing anti-counterfeiting campaigns and customs programs for clients.

Achievements

  • Recognised as a Rising Star – Australia by Managing Intellectual Property IP Stars, 2018

Professional/Civic Activities

  • Law Institute of Victoria member
  • Intellectual Property Society of Australia and New Zealand member
  • The Chartered Institute of Trade Mark Attorneys member
  • K&L Gates INspire member (National LGBTI+ Network)

Speaking Engagements

  • Mr. Casinader was the runner up in the 2014 LIV Golden Gavel competition as well as a participant in the IPSANZ Victorian Christmas Moot 2014 and the 2015 Legal Comedy Debate (as part of the Melbourne International Comedy Festival).
IP portfolio management
  • Prosecuting, managing and enforcing international intellectual property portfolios for a range of clients including advising Thomas Pink, Seafolly, R. M. Williams, Smash Enterprises, Landmark Operations Limited, Costa Group, Rathbone Wine Group, and Sullivans Cove Distillery.
IP litigation
  • Advising Seafolly in copyright infringement proceedings which have been issued in Australia and internationally regarding third parties that it alleges infringe its fabric prints.
  • Acting for Caesarstone in appealing two decisions of the Australian Trade Marks Office to the Federal Court of Australia and in defending a trade mark cancellation action commenced by Ceramiche Caesar SpA.
Trade marks
  • Advising Factory X in relation to a trade mark infringement claim in the Federal Court of Australia brought against CupoNation GmbH. Factory X is the owner of Australian (word) trade mark no. 1168011 BLACK FRIDAY in classes 25 and 35 and also owns other brands such as Lisa Gorman and Black Friday. The Federal Court made orders restraining CupoNation from using the BLACK FRIDAY trade mark. The matter was closely followed by the retail sector in light of the annual BLACK FRIDAY sales event held in the U.S.
  • Advising a prominent Australian artist about the use of one if his paintings which was reproduced on a paint tin.
  • Acting for a prominent Australian health and media personality in trade mark infringement proceedings including defending an urgent interlocutory application before the matter settled at mediation.
Misleading and deceptive conduct
  • Advising on major intellectual property litigation regarding alleged misleading and deceptive conduct, passing off and trade mark, design and patent infringement.
Patents
  • Acting for SNF Australia in relation to Patent Oppositions in the Australian Patents Office, and patent invalidity and patent infringement proceedings in the Federal and High Court.
Anti-counterfeiting
  • Establishing customs programs for clients with the Customs and enforcing notices of objection by sending letters of demand to importers to ensure that imported counterfeit goods are forfeited by the importer and destroyed and, if necessary, issuing proceedings.
Domain names
  • Acting for clients in various online conduct matters, including recovering domain names registered in bad faith and filing complaints with Google to cease the unauthorised use of registered trade marks as Google AdWords.