Jonathan Gerard

On the court record

Jonathan Gerard appears in the corpus across intellectual property, the discipline of the legal profession and the law of restitution, argued from the High Court (Mahkamah Tinggi) to the Federal Court (Mahkamah Persekutuan). One High Court matter, appearing for the defendant, was a trademark dispute engaging several distinct heads of claim: the invalidation of a registered trademark and whether the defendants were aggrieved persons and whether registration was conclusive under sections 47 and 53 of the Trademarks Act 2019; infringement and whether the marks were similar and likely to cause confusion under section 38 of the Trade Marks Act 1976 and section 54 of the Trademarks Act 2019; groundless threats of infringement proceedings under section 61; and passing off, and whether goodwill and misrepresentation were established. A Court of Appeal matter, appearing for the respondent, arose under section 103E of the Legal Profession Act and asked whether it was professional misconduct for an advocate and solicitor to describe an opposing litigant, who was himself an advocate and solicitor, as a frivolous and vexatious litigant, and whether the Disciplinary Board should have accorded a right to be heard before deciding, with the Bar Council among the parties. A third matter, in the Federal Court and appearing for the respondent, was a contract and restitution appeal touching illegality, repudiation, partial and total failure of consideration, restitution, unconscionability and the potential for prospective overruling — questions going to legal certainty and the development of the law by the apex court. The three matters span the full range of the courts, from a first-instance trademark trial through an intermediate appeal on professional conduct to an apex-court appeal on contract and restitution, and each in its own way concerns the limits of a right — the exclusivity conferred by a registered mark, the latitude an advocate has in describing an opponent, and the extent to which a party may recover money paid under a contract that has partly or wholly failed. Across the appearances the practice combines the protection and challenge of trademarks and goodwill, the regulation of professional conduct, and appellate argument on the foundational principles of contract and restitution.