Benjamin Gardiner Portrait

Benjamin Gardiner

Bar roll 2008 Admitted 2004
  • Intellectual Property
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Ben Gardiner practises primarily in intellectual property litigation

Ben specialises in intellectual property law and practises primarily in patent, trade marks, copyright, confidential information and consumer protection / trade practices matters.

Ben has appeared on behalf of, and advised, a wide range of clients across a range of industries including pharmaceuticals, medical, mining, fast moving consumer goods, fashion, gaming, information technology and primary industries.  He frequently appears in the Federal Court of Australia, the Australian Patent Office and the Australian Trade Marks Office.  

He is also a nationally accredited mediator.

Before joining the Bar, Ben was associate to the Chief Justice of the Federal Court of Australia.  Prior to that, he practised as a pharmacist for 12 years.

Ben has tertiary qualifications in pharmacy, business and law and completed post-graduate studies in law (BCL) at the University of Oxford in 2005.  The Australian Financial Review’s Best Lawyers lists Ben as a leading junior barrister in intellectual property law.  Doyle’s Guide has listed Ben as a recommended or leading junior barrister in intellectual property law since 2010.

Ben is a member of the Intellectual Property Society of Australia and New Zealand (IPSANZ) and has taught intellectual property law at post-graduate level at Melbourne University.  


Liability limited by a scheme approved under the Professional Standards Legislation

Contact

Correspondence
Chambers & Clerk

Murray Gleeson Chambers
Level 39

239 George Street 

Brisbane QLD 4000

View map

Jane King

03 9225 8558

Expertise

Intellectual Property
  • Appellate
  • Confidential Information
  • Copyright & Designs
  • Information Technology
  • Media & Entertainment
  • Patents
  • Privacy & Data Protection
  • Telecommunications
  • Trade Marks

Qualifications

Qualifications

Bachelor of Pharmacy

Bachelor of Business

Juris Doctor (JD)

Bachelor of Civil Law (BCL)

Admitted

Victoria

Queensland

Entitled to practise in

State and Territory Courts and Tribunals

Federal Court of Australia

High Court of Australia

Recent Cases

Patents

Trista Technology Pty Ltd v Idealcorp Pty Ltd (QUD67/2021, Greenwood J) – unled – patent infringement – ongoing.

The Sy-Klone Company LLC v Tracs (Qld) Pty Ltd (QUD46/2021, Greenwood J) – led by Neil Murray SC – patent infringement – ongoing.

C.M.E. Blasting & Mining Equipment Ltd v Rock Tool Refurbishment Solutions Pty Ltd (SAD43/2020, Besanko J) – led by Ed Heerey QC – patent infringement and validity – ongoing.

C.M.E. Blasting & Mining Equipment Ltd v Rock Tool Refurbishment Solutions Pty Ltd [2021] FCA 160 – unled – application for security for costs in patent infringement proceeding.

Daryl Patrick Norton v Aussie Concrete Products Pty Ltd (QUD386/2019, Greenwood J) – led by Tom Cordiner QC – patent infringement and validity – ongoing.

Advanta Seeds Pty Ltd v Commissioner of Patents (AAT 2020/8517) – led by John Hennessy SC – administrative review of refusal of extension of time to renew patent – ongoing.

Phoenix Contact GmbH & Co KG v Pivot Electronics Pty Ltd [2020] APO 35 – unled – patent opposition – novelty – inventive step.

Global Fruit Protection Pty Ltd v Mount Somerset Pty Ltd QUD462/2018 – unled – opposed to David Logan QC – patent infringement – cross-claim for invalidity – settled after mediation.

Global Fruit Protection Pty Ltd v Mount Somerset Pty Ltd [2019] FCA 1264 – unled – opposed to David Logan QC – application for leave to amend pleadings.

ESCO Australia Holdings Pty Ltd v CQMS Pty Ltd (VID63/2019) – led by Ed Heerey QC – patent infringement and validity – novelty – inventive step – best method – utility – unjustified threats – authorisation – settled shortly before trial.

Liberation Developments Pty Ltd v Lomax Group Pty Ltd (2019) 144 IPR 413 – led by Tom Cordiner QC – patent infringement & validity – trade mark infringement & validity – breach of Australian Consumer Law – unjustified threats – personal liability of respondent directors.

Liberation Developments Pty Ltd v Lomax Group Pty Ltd [2018] FCA 842 – unled – opposed to Anthony Franklin SC and David Larish – patents – leave sought to press cross-claim and to file late evidence.

Resmed Limited v Fisher and Paykel Healthcare Limited – led by Ed Heerey QC – High Court of New Zealand CIV No 216-404-1968 – patent infringement and validity – 3 patents in suit in relation to masks and headgear for use with CPAP machines – settled prior to trial.

CSR Building Products Ltd v United States Gypsum Company [2017] APO 64 – led by Ed Heerey QC – opposed to Neil Murray – patent opposition – construction – clarity – inventive step.

Sportsbet Pty Ltd v Diogenes Ltd [2017] APO 60 – unled – patent opposition – invalidity – inventive step – utility – manner of manufacture.

Aussie Concrete Products Pty Ltd v Norton QUD 196/2017 – unled – defence of application to have patent revoked pursuant to s 138 of the Patents Act 1990 (Cth) – settled prior to trial with payment of indemnity costs.

Mineral Technologies Pty Ltd v Orekinetics Investments Pty Ltd [2015] APO 23 – unled – patent opposition – novelty – inventive step – method of manufacture.

AstraZeneca AB v Alphapharm Pty Ltd VID876 of 2013 – led by Colin Golvan QC – pharmaceutical patent dispute.

Ranbaxy Laboratories Ltd v AstraZeneca AB (2013) 101 IPR 11 – led by Tony Bannon SC with Ben Fitzpatrick – pharmaceutical patent dispute – three patents – issues of infringement and invalidity.

Trade Marks

Uber Technologies Inc v Uber Geeks Pty Ltd (NSD93/2021, Yates J) – unled – removal of trade mark for non-use – appeal from Australian Trade Marks Office – ongoing.

The a2 Milk Company Ltd v Open Country Dairy Ltd (NSD1743/2019, Bromwich J) – unled – opposed to Richard Cobden SC and Laura Thomas – appeal from the Australian Trade Marks Office – ongoing.

Austin John Watson v Cosmetic Warriors Ltd (QUD72/2020, Greenwood J) – unled – removal of trade mark for non-use – appeal from the Australian Trade Marks Office – ongoing.

Re QWB Residential Precinct Operations [2021] ATMO 2 – unled – ex parte application following rejection of trade mark.

Verge Design Ltd v Romani Clothing Co [2020] ATMO 1 – unled – opposed to Ian Horak – trade mark opposition.

Star Television Productions Ltd v Star Entertainment Group Ltd [2019] ATMO 163 – unled – application for removal of a trade mark for non-use.

Calico Global Pty Ltd v Calico LLC [2018] FCA 2096 – unled – opposed to John Hennessy SC and Angus Lang – two appeals from decisions of the Registrar of Trade Marks.

JBS Australia Pty Ltd v Australian Meat Group Pty Ltd (2017) 128 IPR 398 – led by Ed Heerey QC – trade mark infringement – passing off – breach of the ACL.

Titan Enterprises (Qld) Pty Ltd v Cross [2016] FCA 1241 – led by Pat O’Shea QC – subpoenas – privilege – trade mark attorney privilege.

Home Sweet Loans Pty Ltd v Members Equity Bank Limited QUD 399 of 2016 – unled – trade mark infringement – whether use “as a trade mark” – settled after mediation.

Business Strategies International Pty Ltd v British Standards Institution [2016] ATMO 9 – unled – trade marks – application for removal of a trade mark for non-use.

Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 746 – unled – opposed to Pat O’Shea QC and Andrew Musgrave – costs – apportionment of costs where neither party wholly successful.

Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd [2015] ATMO 54 – unled – trade mark opposition – parody – whether applicant’s mark likely to mislead or deceive.

Chernae Noonan v Benefit Cosmetics LLC [2015] ATMO 17 – unled – trade marks opposition – appeal (VID100/2015) settled at mediation.

Roebuck v News Limited (2014) 105 IPR 459 – unled – trade marks opposition.

Feggari Pty Ltd v ModelCo Pty Ltd (VID 387 of 2013) – unled – trade mark infringement, passing off claim – cross-claim for invalidity – settled at mediation.

Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) (2012) 293 ALR 369 – led by Colin Golvan QC – trade mark infringement, passing off, breach of ACL.

Seek Ltd v GMO (WA) Pty Ltd [2012] ATMO 25 – unled – trade mark opposition.

Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (No 2) [2011] FCA 283– led by Ed Heerey – costs, indemnity costs following formal offer of compromise.

Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) 191 FCR 297 – led by Ed Heerey – trade mark infringement, passing off, Part V TPA.

Dimokranitis v Exotic Limo Pty Ltd [2010] ATMO 69 – unled – trade mark opposition.

Liquideng Farm Supplies Pty Ltd v Liquid Engineering 2003 Pty Ltd (2009) 79 IPR 437 – led by Ed Heerey – Full Court appeal concerning the principles to be applied when assessing an account of profits in context of trade mark infringement.

Copyright

Chhabra v McPherson as Trustee for the McPherson Practice Trust [2019] FCAFC 228 – led by Andrew Crowe QC – appeal to the Full Court – copyright – co-ownership – revocation of licence.

Chhabra v McPherson as Trustee for the McPherson Practice Trust (No 2) [2019] FCA 448 – led by Andrew Crowe QC – costs – offer of compromise – indemnity costs.

Chhabra v McPherson as Trustee for the McPherson Practice Trust (2018) 138 IPR 1 – led by Andrew Crowe QC – opposed to Michael Green SC and Rebecca White – copyright infringement – passing off – breach of Australian Consumer Law.

Whitsunday Aerial Solutions Professionals Pty Ltd v Emprja Pty Ltd BRG603/2018 – unled – copyright infringement – judgment reserved.

Naiad Design Limited v Woody Marine Pty Ltd BRG 948 of 2014 – unled – breach of copyright in boat design – trade mark infringement – passing off – breach of confidence – breach of ACL – settled at mediation.

Ron Englehart Pty Ltd v Enterprise Constructions (Australia) Pty Ltd (2012) 95 IPR 64 – led by Colin Golvan QC – Full Court appeal concerning copyright in building plans.

Confidential information

Trisco Foods Pty Ltd v Peter Skarshewski (QUD366/2020) – unled – application for discovery from prospective respondent – potential actions for breach of confidence, breach of employment contract and under s 36 of the Patents Act 1990 (Cth) – settled at mediation.

Complete Technology Integrations Pty Ltd v Green Energy Management Solutions Pty Ltd [2011] FCA 1319 – unled – summary judgment – breach of employment contract, trade mark infringement, copyright infringement, breach of confidence, joint tortfeasorship of directors.

Bostik Australia Pty Ltd v Construction Technologies Australia Pty Ltd (VID322 of 2011) – led by Ed Heerey – trade mark infringement, infringement of copyright, breach of contract, breach of contract, passing off, breach of trade practices legislation, joint tortfeasorship – settled at mediation.

Consumer Law and passing off

SPEL Environmental Pty Ltd v IES Stormwater Pty Ltd (QUD36/2021) – unled – application for discovery from prospective respondent – settled.

Alzheimer’s Association of Queensland Inc v Dementia Australia Ltd (QUD645/2018) – unled – breach of Australian Consumer Law – settled.

Sambazon, Inc v Amazonia Pty Ltd VID 464/2018 – unled – opposed to Luke Merrick – breach of ACL – settled after mediation.

Tatts Group Ltd v Lottoland Australia Pty Ltd QUD 634 of 2016 – led by Andrew Crowe QC – trade mark infringement, breach of ACL – cross-claim alleging invalidity of registered marks – settled at mediation.

Titan Enterprises (Qld) Pty Ltd v Cross [2016] FCA 890 – unled – application to issue international subpoenas to foreign corporations.

Titan Enterprises (Qld) Pty Ltd v Cross [2016] FCA 664 – unled – application for substituted service.

Fletcher v Nextra Australia Pty Ltd (2015) 229 FCR 153 – led by Colin Golvan QC – Full Court appeal - consumer law – representations made in online blog – whether in trade or commerce – whether representations of fact or opinion.

NQ Group Pty Ltd v CQ Group Australia Pty Ltd [2014] FCA 317 – unled – passing off - discovery dispute – relevance of respondent's intention.

Hillbrick Bicycles Pty Ltd v F45 Training Pty Ltd [2017] FCA 1089 – unled – security for costs.

Madden v Seafolly Pty Ltd (2014) 313 ALR 1 – led by Colin Golvan QC – Full Court appeal – trade practices – defamation.

Mondelez Australia Pty Ltd v The Natural Cordial Company Pty Ltd VID 952 of 2013 – unled – opposed to Ed Heerey  – trade mark infringement, passing off, breach of Australian Consumer Law – cross-claim for invalidity of trade mark – settled at mediation.

Seafolly Pty Ltd v Madden (2012) 98 IPR 389 – led by Colin Golvan QC – injurious falsehood, defamation, breach of TPA, copyright infringement. 

Groupon Inc v Scoopon Pty Ltd VID 655 of 2010 – led by Colin Golvan QC – breach of trade practices legislation, passing off.

Nutrientwater Pty Ltd v Baco Pty Ltd (2010) 265 ALR 140 – led by Colin Golvan QC, with Ed Heerey – passing off, breach of Part V of the TPA.

Migration (pro bono)

Xiadong Chen v Minister for Immigration and Citizenship (AAT 245 of 2011) – application for review of decision to refuse grant of Australian citizenship on character grounds – orders made by consent setting decision aside and remitting matter to original decision-maker for further consideration pursuant to s 42C of the Administrative Appeals Tribunal Act 1975 (Cth).

Minister for Immigration and Citizenship v DNCW [2011] FCA 806 – judicial review – Minster cancelled applicant’s visa pursuant to s 501 of the Migration Act 1958 (Cth) – applicant sought merits review – decision to cancel visa set aside by Administrative Appeals Tribunal– whether the Administrative Appeals Tribunal committed jurisdictional error.

DNCW v Minister for Immigration and Citizenship (2010) 117 ALD 192 – visa cancellation – substantial criminal record - fails to pass character test –– discretion to cancel - whether cancellation in the national interest – whether Applicant part of Australian community - Direction 21 – balancing of primary and other considerations.

Publications

11 May 2017

Intellectual Property Update - Screenshots from webpages held to be inadmissible hearsay by the Federal Court of Australia

28 March 2017

Intellectual Property Law Update - Challenge to admissibility of survey evidence rejected

16 March 2017

Intellectual Property Update - Trade Mark Attorney privilege is not the same as Legal Professional Privilege

10 March 2017

Intellectual Property Law Update - Name of one of Burkina Faso’s 45 provinces rejected under s 41 TMA because it is a geographic location

18 June 2016

Intellectual Property Update - Hells Angels ordered to give security for costs

21 March 2016

Intellectual Property Law Update - Abbreviations and the “own name” defence

19 October 2015

Intellectual Property Case Update - Close but no cigar

07 October 2015

Intellectual Property Law Update - MALTITOS not deceptively similar to MALTESERS

31 August 2015

Intellectual Property Law Update - Two yachts, one Anchorage

16 June 2015

Intellectual Property Law Update - Indemnity costs ordered in Goose fight

09 June 2015

Intellectual Property Law Update - Late evidence at the ATMO

01 June 2015

Intellectual Property Law Update - Wild Goose chase might go all the way

28 May 2015

Intellectual Property Law Update - Simple does not equal generic – Apple Inc

25 May 2015

Intellectual Property Law Update - What on earth is honest concurrent use?

22 May 2015

Intellectual Property Law Update - Revocation in the ATMO

07 April 2015

Intellectual Property Law Update: Are there new rules on inherent adaptation to distinguish?

31 March 2015

Intellectual Property Law Update - AUSTRALIA’S CHEAPEST CHEMIST Trade Mark invalid

03 October 2014

Intellectual Property Law Update - Evidence in the Trade Marks Office – Common Problems – Part 2

12 September 2014

Intellectual Property Law Update - Evidence in the Trade Marks Office – Common problems – Part 1

14 August 2014

Intellectual Property Law Update - Additional damages under s 126(2) TMA can be retrospective

11 August 2014

Intellectual Property Law Update - Should foreign words be registrable as trade mark?

16 June 2014

Intellectual Property Law Update - $91k additional damages for TM infringement awarded

06 May 2014

Intellectual Property Law Update - No news is not always good news

30 April 2014

Intellectual Property Law Update - “Yellow” not inherently adapted to distinguish – who knew?

03 March 2014

Intellectual Property Law Update - Bugatti GmbH v Shine Forever Men Pty Ltd

14 February 2014

Intellectual Property Law Update - Trade Mark owner restrained from use of its own mark

12 February 2014

Intellectual Property Law Update - Bob Jane Corp Pty Ltd v ACN 149 801 141 Pty Ltd

12 February 2014

Intellectual Property Law Update - A Classic Case: The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963)

Memberships

Intellectual Property Society of Australia and New Zealand (IPSANZ)

Victorian Bar - Commercial Bar Association