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Comparative Trade Mark Law - LAWS8144
UNSW in bloom

 
Faculty: Faculty of Law
 
 
School:  Faculty of Law
 
 
Course Outline: See below
 
 
Campus: Kensington Campus
 
 
Career: Postgraduate
 
 
Units of Credit: 6
 
 
EFTSL: 0.12500 (more info)
 
 
Indicative Contact Hours per Week: 2
 
 
Enrolment Requirements:
 
 
Prerequisite: Academic Program must be either 9200, 9210, 9230, 5740 or 5265
 
 
CSS Contribution Charge:Band 3 (more info)
 
 
Tuition Fee:See Tuition Fee Schedule
 
 
Further Information: See Class Timetable
 
 

Description

This course will examine the laws governing trade marks and related rights from a comparative perspective. Topics such as the justifications for trade mark protection; the definition and registration of trade marks; licensing and assignment; infringement, defences and remedies; and the protection of unregistered marks will be explored under both Australian law and the law of various other jurisdictions, including the EU and the US. Other topics such as the international harmonisation of trade mark law, the global protection of well known brands and the implementation of the Madrid international system in Australia will also be considered, as will emerging trends, policy debates and political arguments over the scope of trade mark protection.


LLM Specialisation

Recommended Prior Knowledge

This course assumes a working knowledge of intellectual property based on study at undergraduate level or through completion of the postgraduate course LAWS8017 Intellectual Property Law. You will be expected to have an overview of intellectual property law and/or to have read a recent IP textbook (such as Davison et al, Australian Intellectual Property Law (Cambridge University Press, 2008) or Stewart et al, Intellectual Property in Australia (4th ed) (LexisNexis, 2010) and IP casebook (such as Bowrey et al, Australian Intellectual Property: Commentary, Law and Practice (Oxford University Press, 2010).

Graduate Diploma of Applied Intellectual Property students are expected to have a working knowledge of intellectual property based on study of the postgraduate course LAWS8046 Intellectual Property Law and Innovation.

Course Objectives

A candidate who has successfully completed this course should:
  • be able to identify the major elements of the laws of registered and unregistered trade marks in a number of key jurisdictions
  • be able to identify and understand the significance of the key substantive and procedural differences between the trade mark laws of those various jurisdictions
  • have an understanding of international policy trends in trade mark law

Main Topics

  • History of and justifications for trade mark protection
  • Examination and opposition proceedings
  • Definitions, representation and ownership
  • Distinctiveness
  • Other grounds of refusal not involving conflicts with other marks
  • Grounds of refusal not involving conflicts with other marks
  • Amendment and cancellation
  • Non-use
  • Infringement and defences
  • Remedies
  • Assignment and licensing
  • Protection of unregistered marks
  • Special forms of protection
  • Survey of key differences and emerging trends

Assessment

Class Participation (maximisable) 20%
Research Essay (6,000 words) 80%
 

Course Texts

Prescribed
R. Burrell and M. Handler, Australian Trade Mark Law (Melbourne: Oxford University Press, forthcoming 2010)


Recommended
L. Bently et al, Trade Marks and Brands: An Interdisciplinary Critique (Cambridge: Cambridge University Press, 2008)
M. Davison et al, Shanahan’s Australian Law of Trade Marks and Passing Off (4th ed) (Sydney: Law Book Co, 2008 and online)
G. Dinwoodie and M. Janis (eds), Trademark Law and Theory: A Handbook of Contemporary Research (Cheltenham UK and Northampton, MA, USA: Edward Elgar, 2008)
J. Phillips, Trade Mark Law: A Practical Anatomy (Oxford: Oxford University Press, 2003)
D. Kitchin et al, Kerly’s Law of Trade Marks & Trade Names (14th ed) (London: Sweet & Maxwell, 2005)
J. Lahore and A. Duffy, Intellectual Property in Australia: Patents, Designs and Trade Mark Law (Butterworths looseleaf service)
J. McCarthy, McCarthy on Trade Marks and Unfair Competition (4th ed (online Westlaw edition)
C. Oberin and B. Fitzpatrick, Practical Guide to Australian Trade Mark Law (Sydney: Law Book Co, 2004)

Resources

Refer to Course Outline provided by lecturer at the beginning of session.

URL for this page:

© The University of New South Wales (CRICOS Provider No.: 00098G), 2004-2011. The information contained in this Handbook is indicative only. While every effort is made to keep this information up-to-date, the University reserves the right to discontinue or vary arrangements, programs and courses at any time without notice and at its discretion. While the University will try to avoid or minimise any inconvenience, changes may also be made to programs, courses and staff after enrolment. The University may also set limits on the number of students in a course.