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Peter Chalk - Blake Dawson

Peter Chalk practises in all fields of contentious and non-contentious intellectual property law. He is an experienced intellectual property litigator, particularly for patents and copyright, and has acted in intellectual property litigation in Victoria, New South Wales and England. Throughout his career, Peter Chalk has represented many international intellectual property owners in litigation in a number of jurisdictions.

On the non-contentious side, Peter Chalk regularly advises on matters such as freedom to operate opinions, patent extension of term, intellectual property licensing issues, research and development agreements, brand enforcement and anti-counterfeiting and intellectual property audits and due diligences. As one of the leaders of the firm’s trade marks practice, Peter Chalk also oversees the Australian and worldwide trade mark portfolios of a number of Australian and international clients.

From 1999 to 2001, Peter Chalk was seconded to the leading London intellectual property firm, Bristows. Peter Chalk’s experience also includes working as in-house intellectual property counsel for a major multinational FMCG sector company, advising on a wide range of matters including international intellectual property litigation, international trade mark portfolio management issues, domain name disputes, advertising and promotional matters, international cable and satellite television broadcasting arrangements, advertising media production, IT contracting arrangements and anti-counterfeiting measures. Peter’s combination of inhouse experience and work in the court system offers clients a unique combination of practical legal and commercial insight. This background means he is able to “get things done”.

Peter Chalk is regarded as “One of the most highly-acclaimed legal experts in the area of Intellectual Property in the Asia-Pacific region” – AsiaLaw Leading Lawyers Survey, 2006. Peter Chalk is consistently named as a leading individual for intellectual property, most recently in AsiaLaw Profiles, 2007, International Who’s Who of Trademarks Lawyers 2007, Euromoney’s Guide to the World’s Leading Trademarks Lawyers, 2007 and Best Lawyers International 2008: Australia. Peter Chalk was also recently named as a “Best Lawyer” for intellectual property in Australia.


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Blake Dawson IP

Blake Dawson’s Intellectual Property team comprises the foremost legal experts in this field in Australia. Blake Dawson’s award winning team provides a complete range of contentious and non-contentious specialist intellectual property services. Blake Dawson is one of the few Australian law firms which provide a completely integrated full service intellectual property offering. Their team is able to register, commercialise and enforce any intellectual property (IP) right. Blake Dawson’s technical skills in IP to provide the best strategic advice to local and international companies operating in the pharmaceutical, manufacturing, publishing, food, media, financial services, airline, life sciences, chemistry, electronics, computer engineering, mining and engineering sectors.

Chambers Global, 2007 stated that Blake Dawson’s “team has a strong practice across the board”, while Chambers Global, 2006 commented that “Clients get a lot of attention, no stone is left unturned”. Asia Pacific Legal 500, 2006/2007 also noted Blake Dawson’s strong client base: “The firm acts for a long list of companies, including many globally famous brands, as well as government bodies, life sciences organisations and research institutes”. In the Managing Intellectual Property World IP Survey, 2006 the Blake Dawson IP practice received recognition in all categories: patent prosecution, patent contentious, trade mark/copyright contentious, and trade mark prosecution. They have a first-tier ranking in IP, IT and Communications and Media from Asia Pacific Legal 500, 2006/2007 and in PLC Which Lawyer? Yearbook, 2006. Blake Dawson’s life sciences practice has received particular accolades. They are judged to be a leader in Life Sciences (all categories) in PLC Cross-border Handbooks, 2006/2007. Interviewees for Chambers Global, 2007 singled out the life sciences sector as an area of “overwhelming strength” for our practice.

Blake Dawson is one of only three Australian firms listed in the top 20 IP practices in the Global Intellectual Property Super League Tables, 2006. Three of the firm’s IP partners were named in the Legal Media Group Guide to the World’s Leading Trade Mark Law Practitioners, 2007.
Our perspective

Blake Dawson’s Intellectual Property practice offers Australian and international clients a full range of intellectual property services, including:
* Advising on identification, protection and management of patents, trade marks, designs and plant breeders’ rights, and related services such as drafting, filing, prosecution, opposition and strategic portfolio management
* Negotiating and drafting a full range of IP agreements, including agreements regarding commercialisation, research and development, licensing, distribution, franchising, sponsorship, joint venture and international technology transfer
* Advising on copyright, confidential information, passing off and unfair competition
* Enforcing all IP rights, including conducting IP litigation and alternative dispute resolution and developing anti-counterfeiting strategies.
* Advising on marketing, advertising and promotions and on sponsorship and merchandising agreements
* Advising on food, pharmaceutical, therapeutic goods and agricultural and veterinary chemicals regulation.

Blake Dawson’s recent Intellectual Property experience includes:

* World’s first vaccine against cervical cancer - Blake Dawson acted for CSL Limited in the Federal Court of Australia in a dispute concerning the world’s first vaccine against cervical cancer. The dispute was satisfactorily resolved. CSL subsequently successfully applied to the PBAC and federal government to annually vaccinate all Australian females aged 12 and to conduct catch up vaccinations over a two year period.
* Gambro v Fresenius - Blake Dawson acted for Gambro in its long running patent litigation against Fresenius Medical Care relating to haemodialysis systems and disposables in Australia. We represented Gambro in victories on infringement and validity in the Federal Court at first instance and before the Full Court on appeal. We also successfully defended Fresenius’s application for special leave to appeal to the High Court of Australia. Blake Dawson is currently acting for Gambro in the damages phase of the case.
* Conor Med Systems Inc v Angiotech & UBC - Blake Dawson acted for Conor who sought revocation of patents held by Angiotech Pharmaceuticals, Inc and the University of British Columbia over taxol-coated stents in the Federal Court. This was the first case to consider whether the inclusion of an additional patentee, who has no entitlement to the claimed invention, renders the patent liable to be revoked under section 138(3)(a) of the Patents Act 1990.

IP Partners at Blake Dawson

Peter Chalk
David Clark
Belinda Findlay
Grant Fisher
Ben Miller
Mary Padbury
Lisa Ritson

Senior Associates at Blake Dawson

Annika Barrett
Anita Cade
Karen Gettens
Natalie Hazel
Joanna Lawrence
Nik Ramchand
Kellech Smith
Melinda Upton


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Application to register four-letter word as a trade mark causes scandal

Peter Chalk and Eliza Blandford of Blake Dawson provide a reminder that a trade mark will be deemed scandalous if it is found to cause a significant degree of disgrace, shame or outrage. In the decision of Application to Register KUNT (2007) ATMO 34, a Delegate of the Registrar of Trade Marks rejected an application to register the trade mark KUNT in class 25 for clothing in Australia on the ground that the word consists of scandalous matter under section 42(a) of the Trade Marks Act 1995 (Cth) (the Act):

  • Despite the Applicants attempts to establish a new meaning for KUNT, the Hearing Officer found that the Australian public are likely to view the trade mark as a crude copy of the c word. KUNT did not appear on the electoral roll and without the umlauts, no meaning in a foreign language was apparent. KUNT went further than FCUK and CNUT, as rather than being merely suggestive of an obscene word, it was the obvious aural equivalent of one.

Link to Application to register four-letter word as a trade mark causes scandal


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LOVEDALE - THE HEART OF THE HUNTER trade mark hearing

Sarah Hickey and Peter Chalk of Blake Dawson report on the Trade Marks Office decision of McWilliams Wines Pty Ltd v Lovedale Chamber of Commerce [2007] ATMO 8 (7 February 2007) in which the Trade Marks Office allowed the composite mark LOVEDALE� THE HEART OF THE HUNTER (the Mark) to be registered by the Lovedale Chamber of Commerce (LCC) for services in classes 35 (commercial, promotional and advertising services) and 41 (event management services). This decision of the Australian trade marks office highlights that putting forward a multitude of grounds for opposition does not necessarily guarantee success.

  • Reasons why registration of the mark would (rather than could) result in the particular outcome (ie deception or confusion, or contravention of law) should be clear and cogently argued in order to enhance an opposing party�s prospects of success.

Link to LOVEDALE � THE HEART OF THE HUNTER trade mark hearing


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No guarantee of relief after proving threats of patent infringement proceedings unjustified

Eliza Blandford and Peter Chalk of Blake Dawson report on the ruling of a single judge of the Federal Court of Australia that the remedies available for unjustified threats of patent infringement under section 128 of the Patents Act 1990 (Cth) are discretionary.

Link to No guarantee of relief after proving threats of patent infringement proceedings unjustified


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No guarantee of relief after proving threats of patent infringement proceedings unjustified

Eliza Blandford and Peter Chalk of Blake Dawson report on the ruling of a single judge of the Federal Court of Australia that the remedies available for unjustified threats of patent infringement under section 128 of the Patents Act 1990 (Cth) are discretionary.

Link to No guarantee of relief after proving threats of patent infringement proceedings unjustified


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