Katrina Rathie

Katrina Rathie

Katrina Rathie is the Partner in Charge, Sydney at King & Wood Mallesons named Best Law Firm by the AFR in March 2018. Katrina is a member of the firm’s senior leadership team and is responsible for the management of our Sydney office which has over 850 employees. She is a member of Chief Executive Women.

Katrina has been named Woman Lawyer of the Year, Private Practice by the Women Lawyers Association of NSW. The award recognised Katrina for having achieved excellence in her practice and for making an outstanding contribution to the advancement of women in the legal profession, including role modelling gender and cultural diversity.

Katrina was recently named Intellectual Property Partner of the Year 2018 at the Lawyers Weekly Partner of the Year Awards 2018. She is a pre-eminent intellectual property lawyer and litigator – she focuses on the advertising, marketing, brands, luxury and fast moving consumer goods, retail, digital, on-line and media sectors.

Katrina was voted Best in Intellectual Property Litigation by her peers at the Australasian Women in Business Law Awards and is known for her exceptionally high level of client service and expertise, winning ILO's “Client Choice Award, Intellectual Property” award for Australia. She is ranked as a Leading Individual by The Legal 500 Asia Pacific (Intellectual Property: ‘Katrina is unbelievable at running IP litigation’), Chambers 2018 and Best Lawyers 2018 in seven areas (ADR, Commercial Law, Entertainment Law, Intellectual Property Law, Litigation, Product Liability and Regulatory Practice).

Katrina has an individual Gold star rating for IP enforcement and litigation from WTR’s World’s Leading Trade Mark Professionals, which says: “Katrina is one of the best partners in town in this space. She is utterly brilliant, understands our business and industry and always puts clients first. She always delivers the best".

Katrina has acted as the Chair and a member of the Ad Jury (formerly Advertising Claims Board) and she represents clients in self-regulatory and Court challenges to the legality of advertising campaigns under the Australian Consumer Law. She advises on brand protection and enforcement, misleading and deceptive conduct, passing off, trade mark, designs and copyright infringement and compliance with advertising, consumer, product and media laws/codes, including in the cosmetics, therapeutic goods and healthcare areas. Katrina advises clients on the protection of corporate reputation and social media issues.

Katrina is a non-executive director of The Starlight Children's Foundation Australia, Osteoporosis Australia, Cranbrook Foundation and a number of KWM related entities.

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Recent Matters

Katrina is a strategic litigator with a winning track record in disputes - she has successfully acted on a number of landmark Australian cases including:

  • Samsung Electronics v LG Electronics Australia [2015] FCA 227: acting for LG in a largely successful defence of a challenge to an integrated advertising campaign for LG Cinema 3D televisions – issues involved the use of humour and parody in advertising, the meaning of Full HD and the admissibility of survey evidence
  • Unilever Australia v Revlon Australia [2014] FCA 573 and 875: a Federal Court case involving oxygen, ultimate, strongest and passing off claims made by leading brands of anti-perspirant deodorant products
  • Kosciusko Thredbo v ThredboNet Marketing [2014] FCAFC 87: acting for Kosciusko Thredbo in a leading Full Federal Court case involving the www.thredbo.com.au website, Facebook page and other domain names
  • AFSL v Hills [2014] HCA 14: a 7-0 win in the High Court of Australia in a leading case on the change of position defence and the law of restitution/unjust enrichment
  • ACCC v Dateline Imports [2014] FCA 791: successful defence of Keratin Complex in a test case brought by the ACCC in relation to product safety laws under the Australian Consumer Law.  The Court found that the ACCC had failed to prove the majority of representations alleged and ordered the ACCC to pay part of the respondent’s costs.  The case will be appealed in May 2015
  • Specsavers v Luxottica [2013] FCA 648: successful defence of OPSM’s “Better Glasses, Better Lenses, Better Fit” integrated advertising campaign for Accufit
  • Budget Eyewear v Specsavers [2013] FCA 507: a case which established copyright in advertising taglines misappropriated by a competitor
  • Plain packaging case, [2012] HCA 43: acting in the High Court of Australia in a challenge to Australia’s world first plain packaging laws which prevent trade marks and logos being used on products legally sold in Australia
  • Samsung Electronics v LG Electronics Australia: defence of a challenge to LG’s integrated advertising campaign for LG Cinema 3D televisions including a challenge to a 6,000 person on-line market survey
  • Energizer Australia v Procter & Gamble Australia: acting for Duracell in a dispute about “our longest lasting AA battery” claim
  • Acting for Woolworths (Australia’s leading retail brand for 2015) in brand protection, trade marks, advertising and media work including the Recipes to Riches 2 and Jamie Oliver endorsements
  • Acting for nudie in trade mark brand protection work and the sale of its intellectual property to Monde Nissan, completed in early 2015
  • Acting for Citigroup, Inc in a number of trade mark oppositions involving the third party use of CITI
  • Bodum Australia v DKSH: [2011] FCAFC 8: Australia’s leading authority on passing off and misleading and deceptive conduct of designs and product shape.  Katrina successfully acted for Bodum in establishing that the shape of the Chambord coffee plunger could be protected via establishing a common law reputation
  • Luxottica v Specsavers series of cases [2010] FCA 423 involving comparative advertising challenges between competitors and confidentiality issues
  • Machine Zone v Weezeewig: obtained Orders against an individual who had engaged in cyber trespass of a market leading App
  • The Kettle Chip case – one of Australia’s first successful trade dress cases with an $11 million account of profits award
  • The Duff Beer case – one of Australia’s most celebrated character merchandising cases
  • Thomas-the-Tank-Engine case – obtained injunctions to prevent the use of the name The Thomas Shop and the colour blue by an unauthorised re-seller of Thomas-the-Tank-Engine merchandise
  • NSW Government – acted as a consultant in relation to the world first ambush marketing laws used to protect the Sydney Olympic Games
  • Lego case – a win in Australia’s last case to be heard in the Privy Council involving the design/copyright overlap of the world’s most famous brand.

Experience

  • 1985: Bachelor of Commerce/Bachelor of Laws, University of New South Wales 
  • 1985 - 1988: Solicitor, Mallesons Stephen Jaques 
  • 1988 - 1990: Admitted to the New York Bar. Attorney of the Supreme Court of New York and practised advertising, media and entertainment law in New York
  • 1990 - 1993: Senior Associate, Mallesons Stephen Jaques
  • 1994 - present: Partner, King & Wood Mallesons, Sydney
  • 2014 - present: Partner in Charge, King & Wood Mallesons, Sydney

Memberships

  • International Trademark Association 
  • Advertising Standards Board - Legal Panellist 
  • Australian Institute of Company Directors 
  • Communications and Media Law Association 
  • Intellectual Property Society of Australia 
  • International Bar Association 
  • New York Bar Association 
  •  Women’s Lawyers Association.

Location

Legal insights

On 25 August 2017, the Government tabled its long-awaited response to the Productivity Commission’s recommendations in relation to Australia’s intellectual property arrangements.

28 August 2017

Productivity Commission released its draft report on its inquiry into Australia’s intellectual property arrangements.

29 April 2016

The assessment of inherent distinctiveness is a two-step process which first considers the ordinary signification of the mark.

04 December 2014

Department of Communications publishes 'Media Control and Ownership' as part of its deregulation work stream - comprehensive review for media law.

17 June 2014

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