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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, Veuve Clicquot and Krug 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 Acushnet 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 sector. By a Decree signed by the French Minister of Agriculture on 31 January 2024, he was made an Officer of the Order of Merit - Agriculture (Officier de l'Ordre du Mérite agricole). He is entrusted by various French Government organisations with the management of their litigation in the Asia-Pacific region, which work commonly involves the protection of wine and spirit geographical indications (such as Champagne and Cognac)."

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. By way of example, he is also recognised as one of only thirty four Global Elite Thought Leaders for IP Trademarks by Who’s Who Legal.

Stephen is a member of the IP Committee of the Business Law Section of the Law Council of Australia, and chairs its Geographical Indication sub-committee. He is a member of multiple international organisations including the International Trademarks Association (and is the Deputy Chair of its Brand Restrictions Committee) and is the former International President and a current Vice-President of the Association Internationale des Juristes du Droit de la Vigne et du Vin (the AIDV). He is an Annual Lecturer at Reims University and at Bordeaux University.

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.