The Legal 500

Recognised as a leader in intellectual property matters, Allens Arthur Robinson couples the expertise of its IP litigation lawyers with that of its patent and trade marks attorneys. The firm acts for Sony Music Entertainment on copyright issues. Clients for trade mark and patent work include Tiffany, MySpace, Schweppes and Pfizer. Practice head Philip Kerr and Jim Dwyer are highly recommended.

Blake Dawson’s IP team includes the ‘exemplary’ Peter Chalk, Belinda Findlay and Melinda Upton, who deliver ‘a practical and complete answer which doesn’t require extensive research and unnecessary expense’. The team gives ‘invaluable’ advice and provides ‘a complete service’. It is acting for Smith & Nephew in defending patent infringement proceedings in the Federal Court. Another Federal Court highlight saw it representing Apotex and Spirit Pharmaceuticals in a patent dispute with sanofi-aventis.

Gilbert + Tobin has branched out from its traditional strength acting for media and entertainment clients, and now acts for clients from a much broader sector base. It is defending Energizer in its Australia Schick razor brand advertising in the Federal Court; and advising Red Bull generally on domain name recovery and enforcement activities against counterfeit goods. Samsung is another client. Michael Williams, Siabon Seet and Lisa Lennon are recommended.

The ‘excellent’ Mallesons Stephen Jaques receives resounding praise from clients as ‘one of the best, if not the best’, or ‘the pre-eminent Australian firm in IP’; it provides ‘timely, comprehensive responses and shows a willingness to be proactive’. This broad-based group is acting for Hospira in a patent validity and infringement action against Aventis Pharma and for The REA Group (owner of realestate.com.au) in Federal Court litigation against the owners of a near-identical domain name. The University of Sydney is a core client and the firm is advising Sydnovate, the university’s commercial arm, on the commercialistion of technologies. Wayne McMaster, Scott Bouvier and Robert Cooper are ‘client-focused, pragmatic and have significant respect throughout the industry’.

Baker & McKenzie has a ‘strong team with very strong skill sets’, including ‘a well-connected and highly experienced team of senior paralegals’. The practice represents clients across a number of industries, with representations including Calvin Klein, Unilever, Jack Daniels, Pfizer, Apple and The Body Shop. It was recently appointed by Lion Nathan National Foods (LNNF) as its legal counsel for all of its trade and marketing work, and has responsibility for Fox Entertainment’s trade mark portfolio. Ross McLean is recommended for his ‘good business acumen’, and Robert Arnold is well regarded for ‘his attention to detail on all aspects of litigation’.

Clayton Utz’s broad IP practice includes copyright protection, licensing, enforcement, and brand portfolio management. The group acted for Eli Lilly in a patent case involving infringement and revocation claims. John Fairbairn’s departure to Minter Ellison was a blow, but this strong team features John Collins, Chris McLeod and Mark Krenzer, each of whom is recommended.

Corrs Chambers Westgarth provides a ‘particularly excellent quality of service’. The group’s clients include Louis Vuitton, British American Tobacco, Lacoste and Cadbury. It acted for Research in Motion versus Samsung in a contested passing off and trade mark infringement case concerning the Blackberry platform. Stephen Stern, Odette Gourley and Anna Ross are ‘exceptional’.

Specialist IP firm Davies Collison Cave fields a strong, dedicated litigation group supported by trade mark attorneys. The group advised Orica Consumer Products on its world-wide rebranding to Dulux Group and also acted for VIP Plastic Packaging in Federal Court proceedings against BMW Plastics. Practice head Chris Jordan, consultant Rodney De Boos and Michael Wolnizer are recommended.

Clients ‘trust the team’ at Freehills with ‘the most important matters’. Recent highlights include acting for Baxters in the Federal Court in relation to registered designs and inducement of breach of contract, and defending Apotex in patent and copyright infringement proceedings brought by sanofi-aventis in the Federal Court. Other clients include Apple, Disney and GlaxoSmithKline. Kathryn Everett, Shaun McVicar and Campbell Thompson are recommended.

Minter Ellison advises on IP protection, commercialisation transactions and enforcement litigation. It acted for John Fairfax Publications in Federal Court proceedings alleging that ABIX online news abstracting service infringed copyright, and is representing Zurich in trade mark infringement litigation against an Australian company trading under the name Zurich Securities. Charles Alexander and Bruce Legorburu are recommended. John Fairbairn joined from Clayton Utz.

DLA Piper Australia’s clients appreciate ‘the breadth and depth of the practice’, and benefit from the ‘co-ordinated service over multiple jurisdictions’. The team obtained an injunction in the Federal Court for ESPN, prohibiting Final Siren Events from staging an event that was unaffiliated with but misleadingly similar to ESPN’s established X Games event. It has also been advising Defence Material Organisation on IP aspects of a multibillion-dollar procurement. Other clients include REVA Medical, Snapper Media, Nuplex Group and Toyota. Judith Miller is ‘an indispensable resource’, Alec Christie is ‘proactive rather than reactive’, Shannon Platt is ‘extremely able and competent’, and Anthony Willis’ ‘strengths are his direct manner and ability to think ahead’.

Strong areas for Griffith Hack’s IP practice include resources, pharmaceuticals and life sciences. Clients include Honda, Sigma Pharmaceuticals and Alphapharm as well as new clients Shell and Dr Reddy’s Laboratories. Wayne Condon and senior associate Jacky Mandelbaum are recommended for their ‘good understanding of the industry’. Recent arrival Lisa Simonds has a PhD in pharmacology and a background in pharmaceutical litigation.

Norton Rose Australia’s IP group was recently bolstered by the addition of Jackie O’Brien from Allens Arthur Robinson. The practice acts for entities including start-ups, public and private companies as well as multinationals. It recently represented Foo Fighters in finalising settlement of a Federal Court proceeding brought by the band relating to copyright issues. Practice head Cameron Harvey advised IBML on copyright and trade mark matters including parallel importation. Michelin, Phillips and Remington are also clients.

Specialist IP firm Phillips Ormonde & Fitzpatrick has offices in Melbourne, Sydney and Adelaide. It handles a broad base of instructions including patents, trade marks, designs, and associated research and investigations. The practice was recently appointed as exclusive Australian partner by React, the European anti-counterfeiting network. Greg Chambers and Graham Cowin are recommended.

Simpsons Solicitors provides a ‘remarkable service’, handling matters ‘with great diligence, skill and prowess’, and the team is ‘diverse in skill sets, personable and a pleasure to deal with’. Adam Simpson, Jules Munro and special counsels Andrea Simpson and Shane Simpson are ‘all to be thoroughly recommended’. The team is acting for Larrikin Music Publishing in its copyright infringement action against EMI concerning Men at Work’s song, Down Under.

Arnold Bloch Leibler’s Jane Sheridan led advice to Acrux regarding an exclusive worlwide patent licensing agreement with US-based pharmaceutical company Eli Lilly. Other clients include Bensons Property Group, SEEK and Lonsdale. Michael Dodge and Zaven Mardirossian head the practice.

IP is a key area of expertise for Banki Haddock Fiora. The firm handles contentious matters, and advises on commercialisation of IP rights. Practice head Peter Banki is chairman of the Australian Copyright Council.

Henry Davis York provides ‘a better customer experience than some of the larger firms’, with clients appreciating the ‘depth of the personal relationships with the lawyers’. The team recently acted for Orient Capital in a Supreme Court claim for breach of confidence against competitor Thomson Reuters. It continues to advise longstanding client Panasonic on a range of IP issues. Practice head Donna Short is ‘expert in trade mark law’.

Although only including two partners, Piper Alderman’s IP group displays a ‘very impressive range of skills and experience in the IP, biotech and technology fields’, and its lawyers are ‘highly experienced and qualified individuals’. Clients include Omni Oil Technologies, Bridgestone and Ansell. Practice head Tim O’Callaghan is able ‘to provide good interim advice on the spot’.

TressCox receives resounding praise for its ‘expertise, depth of knowledge and timely responses’. Practice head Jennifer Huby is recommended for her ‘excellent service and great experience in music-related IP matters’, and Andrew Chalet is ‘outstanding’. The group advises the University of Melbourne on the commercialisation of IP, and also counts HomeAway, Warner Music and Photon among its clients.

Operating exclusively in the TMT and IP space, Blueprint Law gives ‘very good advice’ with ‘wide-ranging knowledge and well-targeted strategies’. The practice was recently instructed to act for a major online insurance provider as its sole legal adviser on IP matters. Gary Rogers has ‘profound knowledge’.

Jones Day’s Anthony Muratore and Lisa Taliadoros are recommended for their expertise in the IP field. They are acting for Myriad Genetics against Cancer Voices in Federal Court revocation proceedings concerning patents for breast cancer genes.

Kelly & Co’s ‘high-quality’ IP group successfully represented Metcash Trading in a Federal Court action against unauthorised use of trade marks and business names. It also achieved dismissal of proceedings against Clipsal in a Federal Court claim regarding IP in the Cbus 2 product suite. Luke Dale and Peter Campbell are recommended.

Maddocks’ IP practice head Peter Francis led a successful copyright and trade mark infringement action for Nintendo in the Federal Court against GadgetGear. Brendan Coady is also recommended.