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Chris Round

Partner
+61.3.9640.4364
Fax +61.3.9205.2055
Mr. Round is a global practice group coordinator for the intellectual property (IP) procurement & portfolio management group. He is an IP lawyer with extensive experience in the registration of intellectual property rights and associated litigation. He represents clients in copyright, trade mark, designs and associated trade practices litigation in all Australian Courts.

Mr. Round prosecutes trade mark applications and oppositions before IP Australia, the Intellectual Property Office of New Zealand (IPONZ) and across the world. He manages the trade mark portfolio of many Australian and international companies and provides strategic advice on the registrability of a diverse range of trade marks in Australia and overseas. In addition, Mr. Round regularly prepares intellectual property due diligence reports.

Achievements

  • Leading Lawyer for Victorian Contentious IP Lawyers, Recommended for Victorian Non-Contentious IP Lawyers and Recommended in the Australia-wide list of IP Lawyers, Doyle's Guide (2019)
  • Finalist, Partner of the Year Awards – Intellectual Property, 2017, Lawyers Weekly
  • Leading Intellectual Property Lawyers Australia, Doyle's Guide (2018)
  • Leading Contentious Intellectual Property Lawyers, Victoria Doyle's Guide (2018)
  • Leading Non-Contentious Intellectual Property Lawyers, Victoria Doyle's Guide (2015, 2018)
  • Leading Copyright & Soft IP Lawyer, Victoria, Doyle's Guide (2015, 2016, 2017)
  • Leading Trademark Lawyer, Victoria, Doyle's Guide (2015, 2016, 2017)
  • Leading Trademark Lawyer, Australia, Doyle's Guide (2017)

Professional/Civic Activities

  • International Trademark Association Parallel Importation Committee, Asia Pacific and Africa Co-ordinator
  • International Trademark Association member
  • Intellectual Property Society of Australia and New Zealand member
  • Australia and New Zealand Sports Law Association member
Publications
Mr. Round is a leader of the global IP blog 'IP Law Watch' and regularly writes posts to be published on the blog. In addition, he has published the following articles:
  • "Protection for original designs in Australia," Intellectual Property Magazine, November 2015
  • "Changes in Trade Mark Opposition Procedures in Australia Make it a More Attractive Place to Protect Intellectual Property", Caijing.com.cn legal column, with Xianjin Tian, August 2014
  • "Review of Changes in Opposition Procedures After Raising the Bar", Australian Intellectual Property Law Bulletin, Vol.27, No.9 p238, 2014

Speaking Engagements

  • “Shades of Gray: Current Issues in Parallel Importation Law - A Global Perspective”, International Trademark Association Annual Meeting, Boston, United States, 19 May 2019
  • Copyright and Social Media: Lessons, Traps and Pitfalls, Legalwise Copyright Practical Applications and Commercialisation Seminar 27 November 2018
  • "Protecting your Brand", Dental Practice Owners Conference, Melbourne, 15 June 2017
  • "Raising the Bar - The new Australian experience of trademark oppositions" INTA Table Topic in San Diego, United States, 3 May 2015
  • "Trade Mark Examination and Hearings Practice Tips", Hosted an event for INTA, 30 July 2014 
  • "Intellectual Property Issues in an Online World", Learn With Us, 10 July 2014 
  • "Review of Changes in Opposition Procedures and Trade Mark Disputes", Legalwise Patents and Trademarks Conference, 19 June 2014 
  • "Issues That Arise When Building a Brand for a New Sports Team or League", INTA Table Topic in Dallas, United States, 4 May 2013
  • "Building a Brilliant Brand", IP Australia and Australian Industry Group seminar, 30 May 2012
  • "Introduction to Intellectual Property" to a number of accountants and other business advisors, 14 May 2010
  • "Protecting IP in the New Media Age", Australia and New Zealand Sports Law Annual Conference, 17 October 2008
IP portfolio management
  • Managing the intellectual property portfolio of the Australian Football League (AFL). This involves protecting the intellectual property of the league and its 18 clubs and advising generally on branding issues for the AFL. In managing this portfolio, Mr. Round has also handled Federal Court of Australia litigation against a national retailer that continued to sell unauthorised product. He was also involved in the selection of the team names for the 17th and 18th AFL teams and has advised regarding numerous domain names and online issues. In 2017 he assisted the AFL with the launch 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 were accepted for registration.
  • Assisting Cricket Australia with the selection of the names for the eight teams constituting the Big Bash League. The work involved trade mark clearance and searching, filing 19 trade mark applications and prosecuting the marks to registration including the negotiation of numerous trade mark co-existence agreements.
Trademarks and TM portfolio management
  • Trade mark portfolio management, prosecution, opposition and litigation work for Origin Energy, FIFA, Landmark Operations Limited, Cricket Australia, Tennis Australia, National Basketball League, Australian Grand Prix, Asian Restaurant Concepts, A2B Australia, McDonald Jones Homes, Pinnacle Investment Management, Porter Davis Homes, Macnaught, Implus LLC, Traffic Technologies, Costa Group, Aurecon, Rathbone Wine Group, Parnell, Open Universities, Valve Corporation, Zippo, West Australian Football Commission and Deks Industries.
Copyright
  • Acting for Porter Davis Homes in copyright infringement proceedings relating to infringements of its successful project home designs featuring an alfresco room. The three proceedings resulted in a special leave application to the High Court of Australia, two appeals to the Full Federal Court of Australia and have provided important judgments relating to the issue of substantial reproduction of copyright works. Since these cases Mr. Round has been involved in other house plan cases for other builders acting as both applicants and respondents.
  • Acting for McDonald Jones Homes in a number of copyright infringement proceedings of its award winning house plan designs.
  • Numerous copyright infringement proceedings regarding Serbian, Bosnian and Turkish television channels including interlocutory applications and contested proceedings.
Design protection
  • Represented GM Holden Ltd in enforcing 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).
Consumer law
  • Trade mark and trade practices infringement proceedings brought against our client Digital Post Australia by Australia Post regarding the selection of its name. The proceeding involved defending an urgent interlocutory injunction application, a contested trial and an appeal to the Full Court of the Federal Court of Australia. Our client was successful at all stages.
  • Acting for an online retailer against another online retailer relating to the registration of domain names and the filing of trade mark applications for brands using our client's name. Received an interlocutory injunction against further conduct with the case continuing.
  • Acted for a leading supplier of acai berries against its former Australian distributor in a proceeding concerning Australian consumer law issues.
Anti-counterfeiting
  • Anti-counterfeiting proceedings for leading Australian automotive supplier GM Holden concerning the importation, distribution and sale of counterfeit HSV wheel rims. The Federal Court of Australia proceedings involved 25 respondents and involved an appeal to the Full Court of Australia on the question of director's liability.
  • Managing an anti-counterfeiting campaign on eBay for GM Holden including the setting up of a VeRO program and monthly removal and reporting on infringing entries. The program removes many different types of automotive parts from eBay.