Katrina Rathie

Katrina Rathie

Katrina Rathie is the Partner in Charge, Sydney at King & Wood Mallesons. Katrina is a member of the firm’s senior leadership team and leads our Sydney office. She was named the Winner of the Board & Management category in the recent AFR’s prestigious 100 Women of Influence List.

Katrina is a member of Chief Executive Women.  She was 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 named in the Top 250 Women in IP by Managing Intellectual Property Magazine in 2019. KWM’s IP team was named IP Team of the Year at the 2019 Australian Law Awards and Katrina was Intellectual Property Partner of the Year at the Lawyers Weekly Partner of the Year Awards 2018.  She is a pre-eminent intellectual property lawyer and Australian Consumer Law litigator – she focuses on the advertising, marketing, brands, luxury and fast moving consumer goods, retail, digital, on-line, sports 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 2020 and Bests Lawyers 2020 in seven areas (ADR, Commercial Law, Entertainment Law, Intellectual Property Law, Litigation, Product Liability and Regulatory Practice). 

Katrina has been named IP Star 2020 (Trademark & Copyright) and has an individual 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 member of the UNSW Sydney Law Advisory Council, an Alumni Leader of the UNSW Business School and the New York Bar.  She is a member of the Diversity & Inclusion Committee of the Law Society of NSW, serves on the Advisory Board of Media Diversity Australia and the Managing Partners Diversity & Inclusion Committee.

Katrina is a non-executive director of a number of KWM related entities including Dabserv Pty Ltd.  She is a non executive director of The Starlight Children's Foundation Australia, NSW Rugby Union/NSW Waratahs, Osteoporosis Australia.  She is a Vice President of Cranbrook School and is Chair of the Cranbrook Foundation. 

She holds a Commerce Law Degree from UNSW Sydney and is a graduate of the Australian Institute of Company Directors.

Representative 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:

  • Reckitt Benckiser v Procter & Gamble Australia [2018] FCA 378: successful defence of an interlocutory injunction against Procter & Gamble's comparative advertising case for Fairy Platinum.
  • Energizer Australia v Procter & Gamble Australia: successful defence of an attempt to restrain an integrated Christmas advertising campaign for Duracell's Star Wars promotion.
  • LG Electronics v Samsung Australia case before the Ad Jury involving advertising claims about OLED & OLED TVs.
  • Energizer Australia v Procter & Gamble Australia [2016] FCA 347: defence of contempt of court litigation relating to inadvertent breaches of Court orders.
  • Samsung Electronics v LG Electronics Australia [2015] FCA 227: successful 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.
  • 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 and appeal: 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 $300,000 towards the respondent’s costs.
  • 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.
  • Energizer Australia v Procter & Gamble Australia: acting for Duracell in a dispute about “our longest lasting AA battery” claim.
  • Acting for Event Hospitality & Entertainment, Flexigroup, Goodman, Luxottica, QBE and Woolworths in the management of their trade mark portfolios, brand protection and IP.
  • 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.

Qualifications

  • 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: Partner, King & Wood Mallesons, Sydney
  • 2014 - present: Partner in Charge, King & Wood Mallesons, Sydney

Professional memberships

  • Australian Institute of Company Directors
  • International Trademark Association
  • Intellectual Property Society of Australia and New Zealand
  • Women’s Lawyers Association

Location

Legal insights

The Australian Government has recently published its response to the Australian Competition and Consumer Commission (ACCC)’s Digital Platforms Inquiry Report.

07 February 2020

This article was written by Cate Nagy. Last Thursday 30 January 2020 the Council of the European Union ratified the “Brexit” Withdrawal Agreement, paving the way for the UK to leave the...

06 February 2020

Australian businesses in the food, alcohol and agricultural sectors will be impacted by a free trade agreement proposal by the European Union (EU) relating to European Geographical Indications if...

20 September 2019

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

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