Dean Gerakiteys
Clayton Utz
Partner
Sydney
His advice was clearly and thoroughly presented, and he managed all aspects of the defence in an outstanding manner.
– World Trade Mark Review 1000
Overview
With a background both in litigation and advisory work, Dean has developed a strong reputation for helping clients resolve disputes. Dean has a particular focus on disputes involving intellectual property, having successfully acted for clients on matters across the IP spectrum, including trade marks, copyright, patents, confidential information, trade secrets and domain names. Complementing Dean's litigation experience is his general commercial advice on non-contentious matters for clients across a wide range of industries.
Notable Work
- PharmaCare: advising, one of Australia's largest suppliers of over the counter health & beauty products, on a wide variety of matters involving infringement of trade mark and copyright as well as contraventions of the Australian Consumer Law. This included acting in a successful High Court appeal involving complex questions associated with Australia's obligations under international treaties.
- Cantarella: acting in its highly publicised trademark dispute against Lavazza. Dean also acted in each of the proceedings in the lead-up to, and the successful appeal in, the High Court which upheld two foreign language trade marks, giving significant guidance to foreign brand owners seeking to protect their rights (Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337).
- PDP Fine Foods: acted for the manufacturer and seller of WICKED SISTER desserts in the Federal Court of Australia over alleged trade mark infringement, alleged contravention s of the Australian Consumer law and passing off.
- Pastificio Rana: acted in its defence of trade mark infringement proceedings commenced by Goodman Fielder relating to filled pasta products.
- Seven: advises on a range of broadcasting and intellectual property issues relating to the network, particularly matters relating to trade marks and copyright.
- Mattel: advised on a broad range of legal issues including sponsorship agreements with sportspersons and celebrities, the conduct of trade promotions and advertising clearance. Also advises on a broad range of intellectual property issues relating to its products, particularly matters relating to trade marks and copyright.
- Multinational pharmaceutical: advised on issues pertaining to the advertising of registered therapeutic goods to healthcare professionals.
- Rockwell Collins: acted in complex and long-standing Victorian Supreme Court proceedings involving an alleged aircraft incident. The proceedings ran for a number of years and were resolved on a confidential basis.
- Optus: advised in respect of a range of commercial disputes and issues pertaining to its network infrastructure and internal IT systems.
Insights
I Guess It's Never Really Over: Full Court overturns Katy Perry trade mark infringement finding
18 Dec 2024 | Article
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Waller v Barrett: Another step towards a right of action for serious invasions of privacy
11 Dec 2024 | Article
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Privacy reforms: a closer look at the proposed statutory tort of invasion of privacy
10 Oct 2024 | Article
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Australian privacy law reform: a statutory tort for serious invasions of privacy soon?
2 Jul 2024 | Article
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Internet intermediary liability for defamatory third-party content in Australia: the next chapter
28 Sep 2023 | Article
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Is that you? Deep dive into deepfakes part 3: Recent examples, tips and tricks
12 May 2023 | Article
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Is that you? Deep dive into deepfakes part 2: Legal issues and regulatory landscape
24 Mar 2023 | Article
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Reputation and consumer confusion in trade mark infringement proceedings: the High Court weighs in
16 Mar 2023 | Article
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Is that you? Deep dive into deepfakes part 1: What is a deepfake?
2 Mar 2023 | Article
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Miramax and Tarantino settle Pulp Fiction NFT dispute leaving NFT intellectual property issues in the valley of darkness
21 Oct 2022 | Article
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Finished! Somat successful in dishwashing tablet trade mark washup
28 Sep 2022 | Article
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As the ACCC announces a crackdown on influencers, some dos and don'ts of influencer advertising
18 Aug 2022 | Article
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Advertisers beware! TGA advertising guidance updated ahead of transition period ending
9 Jun 2022 | Article
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Déjà brew: the registrability of non-English trade marks post-Cantarella
9 Jun 2022 | Article
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Can't bags that! Full Federal Court finds no copyright in fashionable neoprene tote bag
28 Apr 2022 | Article
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Advertisers beware! New changes set to shake up Australian therapeutic goods advertising
3 Feb 2022 | Article
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Two Henleys too many as construction firm loses name to competitor in trade mark dispute
23 Dec 2021 | Article
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Media Release: Clayton Utz promotes 7 to the partnership on 1 January 2022
9 Dec 2021 | Media Release
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First steps taken to Finish Somat dishwashing tablet launch in Australia
11 Nov 2021 | Article
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Banksy fight may paint a different picture under Australian trade mark law 05: Distinctiveness
2 Sep 2021 | Article
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Banksy fight may paint a different picture under Australian trade mark law 04: Establishing ownership
19 Aug 2021 | Article
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Banksy fight may paint a different picture under Australian trade mark law 03: When is intention to use relevant?
5 Aug 2021 | Article
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One-two punch: ACCC issues Lorna Jane with $5m penalty after TGA issues $40K in infringement
5 Aug 2021 | Article
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Banksy fight may paint a different picture under Australian trade mark law 02: Making out bad faith in Australia
22 Jul 2021 | Article
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Banksy fight may paint a different picture under Australian trade mark law 01: it's not just a question of faith
7 Jul 2021 | Article
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Bendigo can't bank a monopoly with descriptive "community bank" trade marks
1 Apr 2021 | Article
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Parlez-vous français? The challenge of construing Australian statutes enacting multilingual international treaties
18 Mar 2021 | Article
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Some complementary medicines might now attract duty, as classification of vitamins and food supplements changes
18 Mar 2021 | Article
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Down-N-Out on their luck: Burger appeal underlines difference between trade mark inspiration and misappropriation
4 Feb 2021 | Article
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Consultation open on further reforms to Australian made claims on complementary healthcare products
3 Sep 2020 | Article
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Burger beef: In-N-Out beats Down-N-Out in their recent branding stoush
5 Mar 2020 | Article
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Clayton Utz's IP/Life Sciences team wins in the High Court (Again!): Vitamins and weight-loss gummies classified as duty-free medicaments
7 Feb 2020 | Article
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Uncertainty surrounding Australian made claims on complementary healthcare products finally resolved
6 Feb 2020 | Article
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$10m penalty for prescription-only advertisements by supplements retailer: TGA gets tough on suppliers
8 Aug 2019 | Article
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Sweating it out – the Federal Court provides guidance on the use of "clinical" to describe product ranges
21 Mar 2019 | Article
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No fishy business: first case on substantially transformed complementary medicine tests meaning of "Australian Made"
20 Dec 2018 | Article
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A "pragmatic" approach in the changeover to the Advertising Code 2018
15 Nov 2018 | Article
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Low, medium, high or critical: the TGA reveals its approach to advertising complaints handling
11 Oct 2018 | Article
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You can't register that as a trade mark! A win from the discount bin for Aldi
30 Aug 2018 | Article
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ACCC sets its sights on country of origin labelling for complementary medicines
19 Jul 2018 | Article
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Sugar and spice and all things nice(ly labelled): sugar labelling reform open for discussion
19 Jul 2018 | Article
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Major changes to Australia's Therapeutic Goods Regime commence soon
19 Feb 2018 | Article
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TGA's future business processes on complementary medicines open for discussion
12 Oct 2017 | Article
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A new frontier for therapeutic goods advertising: consultation paper released
28 Sep 2017 | Article
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An offer not to be refused: the cost(s) of unreasonable rejection of an offer of compromise
11 May 2017 | Article
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Just what the doctor ordered: proposed reforms to Therapeutic Goods Regime
11 May 2017 | Article
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Coders beware: it's a question of quality not quantity when assessing copyright infringement
30 Mar 2017 | Article
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More than just semantics - Full Court clarifies when damages can be recovered for unjustified threats
30 Mar 2017 | Article
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Clayton Utz wins on same test for foreign and English words as trade marks in High Court
3 Dec 2014 | Article
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Foreign word trade marks: Cantarella granted application for special leave to appeal to High Court
14 Mar 2014 | Article
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Lost in translation: When is a foreign word mark inherently adapted to distinguish?
28 Mar 2013 | Article
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