Marcus

Fleming

Marcus practises in commercial litigation, with a particular focus on intellectual property law. He has experience in intellectual property litigation in relation to patent revocation and infringement proceedings, patent oppositions, copyright infringement proceedings, trade mark infringement proceedings (including related consumer protection law claims and passing off), trade mark non-use applications and oppositions, and proceedings concerning allegations of misuse of confidential information and related breaches of employment duties. Marcus also has extensive experience in proceedings concerning claims for compensation on undertakings as to damages in the Federal Court of Australia in the context of pharmaceutical patent revocation proceedings.

Landline Phone
03 9225 8174
Fax Number
03 9225 8668
Address
Level 18 Room 12, Emmerson Chambers
200 Queen Street
Melbourne VIC 3000
Email
marcus.fleming@vicbar.com.au

Marcus was admitted to the Victorian Bar in 2014, and has established a strong practice in commercial litigation with a particular focus on intellectual property law.

Marcus holds a Bachelor of Laws (Hons) and Bachelor of Arts (Chinese language major) from Monash University.

Marcus has substantial experience in intellectual property litigation, including in relation to patent revocation and infringement proceedings, patent oppositions, copyright infringement proceedings, trade mark infringement proceedings (including related consumer protection law claims and passing off), trade mark non-use applications and oppositions, and proceedings concerning allegations of misuse of confidential information and related breaches of employment duties. Marcus also has extensive experience in proceedings concerning claims for compensation on undertakings as to damages in the Federal Court of Australia in the context of pharmaceutical patent revocation proceedings.

Prior to joining the Bar, Marcus was a Senior Associate at Ashurst Australia where he gained extensive experience in large-scale patent litigation, including acting for Samsung in proceedings against Apple Inc concerning patents for smartphone devices.

Marcus is listed in Doyle’s Guide to Leading Victorian Intellectual Property Junior Counsel (2014-2021) and in Doyle’s Guide to Leading Victorian Technology, Media & Telecommunications Junior Counsel (2017-2021). He was recently recognised in the 2022 Edition of The Best Lawyers in Australia in the field of Intellectual Property Law.

Selected cases include:

Patents

  • Sanofi-Aventis Deutschland v Alphapharm Pty Ltd [2018] FCA 2060 and on appeal in [2019] FCAFC 28 – patent invalidity and infringement (led by Tom Cordiner QC and Julian Cooke)
  • Apotex Pty Ltd v Warner-Lambert Company LLC [2016] FCA 1238, and on appeal in Warner-Lambert Company LLC v Apotex Pty Ltd [2018] FCAFC 26 – patent invalidity and infringement (led by David Catterns QC and Neil Murray)
  • Apotex Pty Ltd v ICOS Corporation [2018] FCA 1204 – patent amendment application and subsequently patent infringement and validity (led by David Catterns QC and Neil Murray)
  • Apotex Pty Ltd v Cipla Limited [2017] FCA 1627 – patent invalidity and infringement (led by Neil Murray)
  • Apotex Pty Ltd v AstraZeneca AB – inquiry for compensation on the usual undertaking as to damages (led by Shereef Habib SC and Justine Beaumont)
  • Apotex Pty Ltd v Sanofi-Aventis – inquiry for compensation on the usual undertaking as to damages (led by Shereef Habib SC and Justine Beaumont)
  • Oakmoore Pty Ltd v ARB Corporation Limited [2019] APO 29 – patent opposition (unled)
  • Claymont Bond Pty Ltd v Sedic [2018] APO 88 – patent opposition, and subsequent appeal to Federal Court of Australia (unled)
  • Brooke & Mackenzie v El-Gra Engineering Pty Ltd [2015] FCA 1495 – patent infringement and invalidity (with Luke Merrick)

Trade marks, passing off and consumer protection

  • Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCA 82, and on appeal in [2020] FCAFC 186 – trade mark infringement, contravention of the ACL and passing off (led by Ed Heerey QC)
  • State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd [2021] FCA 137 – contravention of the ACL, trade mark infringement, passing off, copyright infringement and contractual interference (led by David Studdy SC)
  • 3Floorsup Pty Ltd v Fiix Inc [2019] ATMO 177 and [2020] ATMO 37 – trade mark oppositions (unled)
  • Elmwood Design Limited v Dig and Fish Pty Ltd [2018] ATMO 114 – trade mark opposition (unled)
  • Samuel Smith & Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd [2016] FCA 1515 – trade mark infringement (led by Bruce Caine QC)
  • Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd [2016] FCA 820 – contravention of s18 ACL, passing-off and trade mark infringement (led by Philip Crutchfield QC and Luke Merrick)
  • Shophouse LLC v David Loh [2016] ATMO 93 – trade mark opposition (unled)
  • Carsales.com Ltd v One Way Traffic Ltd [2015] VSC 367 – contravention of s18 ACL (led by Adrian Ryan SC)

Copyright and designs

  • State of Escape Accessories Pty Ltd v Schwartz [2020] FCA 1606 – copyright infringement (work of artistic craftsmanship) and contravention of the ACL (with Luke Merrick)
  • Henley Arch Pty Ltd v Del Monaco [2019] FCCA 3848 – copyright infringement in house plans (led by Tom Cordiner QC)
  • The Pokémon Company International Inc, v Redbubble Ltd [2017] FCA 1541 – copyright infringement and contravention of ACL (led by Richard Cobden SC)
  • Home Owners Associations Pty Ltd t/as Cameron Construction v Raymond Kwan-Ming Wong & Anor – infringement of copyright in house plans (unled)
  • Re Aristocrat Technologies Australia Pty Ltd [2020] ADO 4 – examination of design under s 63 of Designs Act (unled)
  • Globe International Nominees Pty Ltd v Bolt Premium Workwear Pty Ltd – infringement of registered design (unled)

Confidential information and employment duties

  • Directed Electronics OE Pty Ltd v OE Solutions Pty Ltd – breach of contract, breach of directors’ duties, misuse of confidential information and copyright infringement (led by Adrian Ryan SC and with Ryan Maguire)
  • Mastec Australia Pty Ltd v Trident Plastics (SA) Pty Ltd [2017] FCA 1581 – breach of contract, misuse of confidential information, contravention of ACL, passing-off and trade mark infringement (led by Philip Crutchfield QC and Luke Merrick)
  • Cookers Bulk Oil System Pty Ltd v Dale – misuse of confidential information and related duties (with Luke Merrick)

*Liability limited by a scheme approved under Professional Standards legislation

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