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Stephen Stern

Partner

STERN-stephen-highres_LARGE

Languages

  • French
  • and English

Contact

Stephen is a leading authority in the intellectual property field and acts for a wide range of clients including pharmaceutical companies, luxury goods manufacturers, clothing, footwear and textile producers, telecommunication and electronic companies.

His practice includes significant patent litigation and he has been involved in some of the longest-running patent litigation globally. Stephen also regularly acts for many of the world’s most prestigious brands, including Hermès, Cartier, Gucci, Christian Dior, Louis Vuitton and Prada in trade mark disputes.

Stephen is well-known for his anti-counterfeiting work for dozens of global companies such as Ferrari, Caterpillar, the various brands listed above, Lacoste, Tommy Hilfiger, Nike, Hugo Boss, Kate Spade, Christian Louboutin and BlackBerry amongst many others.

He is also well-known for his significant geographical indication and wine law practice, and in 2006 was appointed a Chevalier in the Ordre du Mérite Agricole by the French government in recognition of his services to the French wine industry. He is also entrusted by various French Government organisations with the management of their litigation in the Asia-Pacific region. His work involves, amongst other things, the protection of wine and spirit geographical indications (such as Champagne and Cognac), registering Australian wine region names (such as Coonawarra and Mornington Peninsula) and acting to register and protect geographical indications in a range of other agricultural sectors such as those relating to cheeses, rice, tea, meats and poultry.

Listed as a ‘leading lawyer’ in virtually every notable legal guide and directory, Stephen is recognised as one of Australia’s foremost trade mark lawyers by his clients and the industry.

Stephen is an IP Sub-Committee Member of the Business Law Section for the Law Council of Australia, and a Committee Member of the Federal Court Users Committee for the Federal Litigation Section of the Federal Court Liaison Reference. He is a member of multiple international organisations including the International Trademarks Association, American Bar Association - IP Section, L'Association Française des Practiciens du Droit de Marques and des Modèles (APRAM) and the Intellectual Property Enforcement Consultative Group. He is an Annual Lecturer at the University Reims and the University Bordeaux IV – Montesquieu. He is also an Honorary Solicitor for the Mornington Peninsula Vignerons Association.

Key deals

Lundbeck

Acts for Denmark-based Lundbeck in litigation that has run for over 14 years in relation to the challenged application to extend the term of the patent for the antidepressant Lexapro, and in the infringement action against four leading generic drug manufacturers.

Cadbury

Represented Cadbury in obtaining, after a heavily fought opposition and Federal Court litigation, several trade mark registrations for its purple colour trade mark.

Comité Interprofessionnel du Vin de Champagne (CIVC)

Has run many actions on behalf of the CIVC in respect of a range of misuses of the geographical indication Champagne and the protected term Méthode Champenoise.

Caterpillar

Has acted for Caterpillar since the early 1990s, managing on instructions from the USA, its Australasian trade mark portfolio as well as defending that portfolio from encroachments.

British American Tobacco Australia

Acted as part of an international team to protect BAT’s IP rights against Australia’s Tobacco Plain Packaging Act, including representing BAT in the High Court constitutional law challenge relating to the removal of graphical trade marks, designs and other intellectual property from packaging.

Lacoste

Acted for leading France-based clothing brand, Lacoste since the early 1980s in a wide range of intellectual property matters, including acting on a major trade mark dispute against Crocodile International that commenced in 2005.

Woodside Energy Limited

Acting for Woodside Energy in two patent oppositions before the Australian Patents Office. The oppositions concern subsea cooling devices for use in offshore hydrocarbon fluid (oil and gas) processing applications.

Non-traditional trade marks

Stephen’s practice has seen him amongst the first to obtaining protection in Australia for non-traditional trade marks (for example colours and shapes) including:

  • Veuve Clicquot’s iconic colour orange;
  • Cadbury’s colour purple;
  • Weber’s kettle shape trade mark; and
  • advising a major Australian bank in relation to protection for its colour.