Ian practices exclusively in intellectual property law regularly appearing at the Federal Court of Australia and the Australian Patent and Trade Marks Office and giving advice in proceedings concerning patents, trade marks, passing off, trade practices, copyright, designs and confidential information.
Ian is listed in Doyle's Legal Guide to Intellectual Property Barristers as a leading counsel. He is also recommended in World Trade Mark Review (WTR) 1000 recommended barristers.
Ian accepts briefs in all areas of intellectual property law for trials, appeals, interlocutory applications and drafting of Court documents. Ian has acted for clients in a diverse range of industries including the pharmaceutical (for generic and innovator companies), chemical processing, medical, manufacturing and e-commerce industries. He is experienced in dealing with technical subject matter such as complex pharmaceuticals, chemistry, chemical processing, methods of medical treatment, engineering and computer software.
Ian has appeared in a number of cases involving patents, and trade marks and general commercial intellectual property disputes at first instance and on appeal including in a number of seminar cases on patents and trade marks such as AstraZeneca AB v Watson Pty Ltd in the High Court and RPL Central and Chemist Warehouse v Direct Chemist Outlet in the Full Federal Court.
Ian is also a Senior Fellow at Monash University’s Law School where he is the Chief Examiner and lecturer in postgraduate subjects on intellectual property and trade mark practice. Ian is also a member of the Monash University Intellectual Property Advisory Board.
Ian is a co-author of Shanahan’s, Australian Trade Marks Law and Passing Off (5th and 6th edition). He is also past Chairperson of the Victorian branch of the Intellectual Property Society (IPSANZ) and a member of its Transnational Committees of Management. He is also a member of the Institute of Patent and Trade Mark Attorneys (IPTA).
A selected list of reported cases from 2010 onwards is provided below:
Ronneby Road Pty Ltd v ESCO Corporation  FCA 711 (Patent appeal – shroud for mining equipment – prior use – inutility)
Load and Move Pty. Ltd. v Australian Mobile Mining Equipment Systems and Accessories Pty. Limited  APO 23
Commonwealth Scientific & Industrial Research Organisation and Meat & Livestock Australia Limited v Agriculture Victoria Services Pty Limited  APO 32
Thomas Laubenthal v Howmedica Osteonics Corp  APO 18
General Electric Company v Ausrail Technologies Pty Ltd  APO 67
Gordagen Pharmaceuticals Pty Ltd v Commonwealth Scientific and Industrial Research Organisation  FCA 1058
Deb Worldwide Healthcare, Inc v Gojo Industries  APO 20 (Patent - fomable composition)
Outotec Pty Ltd v Xstrata Technology Pty Ltd and Yunnan Metallurgical Group  APO 48 (Patent - metal processing)
Nufarm Australia Ltd v Monsanto Technology LLC  APO 66 (Patent - herbicidal composition)
Ipsen Pharma S.A.S v Allergan, Inc  APO 21;  APO 23 (Patent – Oppositions)
Abbott GMBH & Co. KG v Apotex Pty Ltd (No 2)  FCA 940 (Pharmaceutical patent litigation – Federal Court trial)
Trade marks, Passing off, Copyright and General Commercial
Monster Energy Company v Lo Chun-Hua 2017 ATMO 33
Australian Health Industry Co. Pty Ltd v VVS Australia Pty Ltd  FCA 322
Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd  FCA 235
Bickfords Trading Pty Ltd v Chia Limited 2016 ATMO 90
Verrocchi v Direct Chemist Outlet Pty Ltd  FCA 234
Dox-al Australia Pty Ltd v Dox-al Italia S.P.A 2015 ATMO 119
Courier Luggage Pty Ltd v Wenger SA Inc 2015 ATMO 10 (Trade mark - opposition)
Jack Gance and Mario Verrocchi v Ian Tauman 2015 ATMO 118
B & V Martin Holdings Pty Ltd v Wenger S.A 2015 ATMO 87
Arche SAS v Daniel Bartholomew Jones 2015 ATMO 75
Barossa Valley Estate Pty Ltd v Australian Vintage Limited 2015 ATMO 70
Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd 2015 ATMO 54
Bose Corporation v Heino Buse MX Import GmbH  ATMO 110 (Trade mark - Opposition)
Louis Vuitton Malletier v Sonya Valentine Pty Ltd  FCA 933
Accolade Wines Australia Ltd & ors v Delegate's Wine Estate Limited 2014 ATMO 76 (Trade mark - opposition)
Bugatti GmbH v Bugatchi Uomo Apparel, Inc 2013 ATMO 102 (Trade mark - opposition)
Bickford's Australia Pty Ltd v Tata Sons Limited 2013 ATMO 100 (Trade marks - non-use)
Seafolly Pty Ltd v Madden  FCA 1346;  FCA 316;  FCA 46 (Misleading and deceptive conduct - Copyright - Injurious Falsehood)
Citigroup Inc v Citiwide Holdings Pty Ltd 2013 ATMO 31 (Trade Marks - Opposition)
Sarah Cocker v Vincona Pty Ltd  ATMO 109 (Trade Marks - Opposition)
Chia Khim Lee Food Industries Pte Ltd v Red Bull GmbH (No 1)  FCA 1184 (Trade Mark Appeal - Federal Court)
AB SCA Finans and SCA Hygiene Products AB v Uni-Charm Kabushiki Kaisha  ATMO 63(Trade Marks - Opposition)
Prime Foods Exports Pty Ltd Natural Balance Pet Foods Australia Pty Ltd v Natural Balance Pet Food, Inc  ATMO 47 (Trade Marks - Opposition)
Nexans S.A. v Nex 1 Technologies Co. Ltd  FCA 180 (Trade marks – Appeal)
ASSA ABLOY AB v Tenyale Industry & Trade Group Co., Ltd  ATMO 21 (Trade Marks – Opposition)
Jackel International Limited v Jackel Pty Ltd  FCA 1516 (Trade Marks – Interlocutory Injunction)
Vantage Systems Pty Ltd v IVision Pty Ltd  ATMO 90 (Trade Marks - Opposition)
Zippo Manufacturing Co v Jaxlawn Pty Ltd  FCA 1125 (Trade Marks - Federal Court Infringement Action)
Brooks Sports, Inc v Paul's International Pty Ltd (No 2)  FCA 1000 (Trade Marks – Anton Pillar Order – Federal Court)
Sparco SpA v Nike International Ltd  ATMO 81 (Trade Mark Opposition)
Bacchus Distillery Pty Ltd v BDS Marketing Australia Pty Ltd  FCA 827 (Trade Marks – Interlocutory Injunction – Federal Court)
Kelly Services, Inc. v Ford Kelly Executive Connection Pty Ltd  ATMO 72 (Trade mark Opposition)
Nature’s Blend Pty Ltd v Nestle Australia Ltd  FCAFC 117 (Trade mark infringement - Full Federal Court appeal)
A full resume is available upon request.