Brian Elkington

Brian specialises in trade marks law and has extensive experience in registration, protection and enforcement of trade mark rights in Australia and around the world. He is co-author of the book entitled Annotated Trade Marks Act 1995 (2nd Edition - published by LexisNexis/Butterworths, March 2010).

Brian acts on behalf of a wide variety of clients on trade mark prosecution, removal actions, oppositions and infringement actions. He also provides advice concerning strategic development and protection of clients' trade mark portfolios. Brian also has significant experience in negotiating and drafting intellectual property licenses and other commercial agreements. In addition, he advises clients on acquisition and protection of domain names, including in relation to cyber-squatting disputes.

Brian has been certified as a Notary Public since 1999.

Brian’s interests include music and song writing, reading (mostly US history), cooking and chess. He is also learning to speak Mandarin.
 

Recent experience

• Managing Australian trade mark portfolios and contentious matters for overseas corporations such as Apple, Burberry, Wal-Mart and Unilever

• Managing worldwide trade mark portfolios for Australian companies such as AMP, Seven Network, Pharm-a-care Laboratories and Commander Australia

• Played major role in registration and protection of worldwide trade mark portfolio for the Sydney Organising Committee for the 2000 Olympic Games

• Advising Australian companies such as an olive oil manufacturer, an international language school and an office products designer on registration and protection of their trade marks overseas

• Representing a client in an arbitration with Melbourne IT over its refusal to grant a domain name

• Advising clients on domain name disputes as well as negotiating and preparing documents to transfer domain names, both in Australia and internationally
 

Recent presentations and publications

- Annotated Trade Marks Act 1995: Elkington, Hall and Kell (LexisNexis/Butterworths - Sydney) 2010
- Trade Mark Law in Australia: Elkington, Hall and Kell (Butterworths - Sydney) 2000
- Recent Developments in Trade Mark Law; paper delivered at College of Law CLE seminar in Sydney, 28 March 2008
- Trade Marks and the SME, paper delivered at Small Business Law Conference, Gold Coast QLD, October 2007
- Star Wars, Case note in Trademark World, July/August 2007
- Trade Mark Law in Australia: Elkington, Hall and Kell (Butterworths - Sydney) 2000
- The Development, Use and Value of Trade Marks in Branding, paper delivered at College of Law CLE seminar, March 2006
- Co-Author of article Trade Marks, Passing Off and Internet Jurisdiction, Trademark World, July/August 2005
- Chairman of Key Media seminar "Intellectual Property Master Class", March 2003
 

Qualifications

- Juris Doctor (Seattle University School of Law, Seattle, Washington USA)
- Master of Science - Highest Honour, Clinical Psychology (New Mexico Highlands University, Las Vegas, Mew Mexico USA)
- Bachelor of Arts - Honors, Psychology (Hamline University, St Paul, Minnesota USA)


Affiliations

- Member, National Committee of the Intellectual Property Society of Australia and New Zealand (IPSANZ)
- International Trademark Association (INTA)
- Licensing Executives Society
 

For more information or to contact Brian Elkington in regard to trade mark applications please call (61-2) 9476 0477.