Intellectual property in Australia

Allens

Allens’ IP team is ‘superb’. It has developed an outstanding reputation nationally and internationally for its ‘exceptional industry knowledge and unique dedication to its clients. Benefiting from its seamless integration in the wider firm, the IP team is consistently involved in some of the market’s largest commercialisation and brand protection initiatives, and is also a recognised leader in the litigation space. Areas of particular strength include life sciences, technology and media, and advertising. Practice head Miriam Stiel is ‘a masterful negotiator’. Melbourne-based Tim Golder understands exactly what businesses are looking for’. Tim Allen is ‘an exceptional trade mark lawyer’; Allen re-joined the firm from Spruson & Ferguson Lawyers in November 2019, but senior patent counsel Philip Kerr left for Quinn Emanuel Urquhart & Sullivan, LLP in December 2019. Recently promoted partner Joel Barrett and Andrew Wiseman are also recommended. Unless otherwise specified, all lawyers are based in Sydney.

Practice head(s):

Miriam Stiel

Testimonials

Exceptional industry knowledge. Goes above and beyond to stay up to date with market developments in order to provide the most informed advice.

Tim Allen is an exceptional trade mark lawyer who provides very clear and thorough IP advice. He provides clear risk ratings to support business decisions and never sits on the fence. I trust him implicitly.

Breadth of experience; commercial nous; and ease of working with the team.

Tim Golder understands exactly what businesses are looking for when seeking legal advice – advice that is technically correct, but with a commercial and practical focus. He leads a strong and committed team. I always know with Tim that he has our best interests at heart, and will look out for us, even in areas beyond IP.

The IP practice at Allens is superb. The uniqueness of this practice is the dedication and the knowledge that Miriam Stiel and her partners bring to the area. They are well received nationally and internationally. They are knowledgeable, hardworking, and dedicated to their clients. Rarely have I worked with a firm that is interested in the work that I do and that takes such professional care of the subject matter and its instructing solicitors.

Miriam Stiel’s knowledge of IP, litigation procedure, and mediation benefits has led us to excellent outcomes. She is a masterful negotiator and has assembled an amazing team around her. Likewise, Joel Barrett is an incredible mentor, has assembled excellent resources, and has led matters that I have entrusted to him to excellent outcomes. They have been the lynchpin in our engagements and are a fabulous team. The quality of the associates’ research and practical application of skills and commercial knowledge to matters is absolutely unparalleled.

Key clients

Pfizer

Wesfarmers

Ford

PepsiCo

Uber

AB InBev

Westpac

News Corp

Ebay

Foxtel / Fox Sports

VISA

Tiffany & Co

Spotify

Samsung

Merck Inc.

Beam Suntory

Canon

Australian Olympic Committee

Forever New

Gilead Sciences

Work highlights

  • Advising Canon on its IP rights in Australia.
  • Assisting Carlton & United Breweries, Brand Collective, Globe International and Rusty with trade mark portfolio management issues globally.
  • Advising Cytec Industries on developing and implementing strategies to challenge a family of patent applications owned by one of its large commercial competitors, Nalco Company.

Baker McKenzie

Baker McKenzie’s ‘depth of experience around the globe’ enables it to handle the market’s largest IP-driven transactions, while its ‘excellent understanding of the intersection between IP and litigation allows for efficient rights protection’ strategies. Acting for large multinational clients, the firm’s full-service practice group has strengths in every key area of IP work, including copyrights in digital media and publishing, brand and trade mark portfolio management, and high-stakes IP litigation. Andrew Stewart heads up the Sydney-based practice group and handles IP strategy for the US Motion Picture Association. Elisabeth White is involved in trade mark litigation for clients including In-N-Out Burger and Taco Bell, and Richard Gough is a highly regarded specialist patent litigator. Helen Macpherson joined from Norton Rose Fulbright in May 2020, further strengthening the firm’s offering in the patent realm. Robert Arnold comes in for praise by clients, while Chantal Savage is a rising star in the team.

Practice head(s):

Andrew Stewart

Testimonials

Robert Arnold enables a quick and accurate turnaround of high-quality work.

Robert Arnold is very experienced and knowledgeable. The associates we have dealt with on a number of licensing issues and drafting have been timely in their responses and easily contactable.

Good depth of experience around the globe, which is important for cross-border transactions such as those we are commonly working on. The lawyers have a very collaborative approach, both within Baker McKenzie and with their clients.

Elisabeth White is an excellent communicator, with strong client relationship skills. Her IP expertise is very, very strong.

An excellent understanding of the interaction between IP and litigation practice, allowing for efficient rights protection measures to be taken.

Andrew Stewart works well with a wide range of rights holders.

Key clients

Danone

f45 Training Inc

IBM

In-N-Out Burger

Kirin / Lion

LONGi Green Energy Technology Co

Mars Incorporated

Meltwater Holding B.V.

Motion Picture Association of America

Yum! Brands

Work highlights

  • Successfully acted for In-N-Out Burgers in high-profile and Federal Court proceedings brought to prevent a third-party trading as “Down N’ Out”.
  • Acting for F45 in high-stakes patent litigation against a competitor, Body Fit Training, who F45 alleges has adopted key elements of its innovative patented fitness system.
  • Acting for Motion Picture Association, The Walt Disney Company, Sony Pictures Warner Bros and multiple other entities, Australian film makers and distributors, and other content owners, on site blocking matters in Australia.

Clayton Utz

Boasting close relationships with market-leading IP teams in the US, Europe, and Asia, Clayton Utz has a core strength in complex multi-jurisdictional IP work, covering complex patent litigation, copyright protection, and comprehensive trade mark management. In the patent space, the team acts for an impressive list of the world’s largest pharmaceutical companies, but also works across a variety of other sectors, including engineering, energy, and geoscience. Practice head John Collins in Sydney is a key figure in the patent litigation group. Based in Melbourne, Chris McLeod and James McNeil handle contentious and non-contentious trade mark work for well-known domestic and international clients, including Toyota. Tim Webb and Richard Hoad are contacts for IP commercial transactions, based in Sydney and Melbourne, respectively.

Practice head(s):

John Collins

Key clients

Novartis Group

Monsanto (Bayer)

Singtel Optus Group

Seven Network

adidas Australia Pty

Toyota Motor Corporation Australia

Virgin Australia Airlines Pty

Sonic Healthcare

Isentia Group

The a2 Milk Company

Angostura

Sotheby’s

OfficeMax Australia

Chevron

Myer

King Furniture Australia Pty

Perpetual

Fresenius

Pharm-A-Care Laboratories

Hill & Smith Holdings

Swancom t/as The Corner Hotel

REC Solar

Emerald Foods

2XU Pty

Monash University

DownUnder Geosolutions

Cantarella (Vittoria)

Pastificio Rana

Accent Group

Openpay Group

AgBoss Group Pty

Work highlights

  • Acting for Novartis on enforcing a range of patents which could prevent the entry of generic competition for its blockbuster multiple sclerosis drug Gilenya (fingolimod).
  • Acting for ASX-listed Isentia, the largest media monitoring organisation in the Asia-Pacific, in Copyright Tribunal of Australia proceedings with respect to the licensing arrangements offered by Copyright Agency Limited.
  • Acting for Toyota Australia in one of Australia’s largest trade mark enforcement campaigns.

Gilbert + Tobin

According to one client, Gilbert + Tobin is ‘head and shoulders above its competitors’. The firm runs a formidable full-service IP practice, which has built a reputation for success in high-profile litigation; it continues to be involved in some of the market’s largest trade marks, copyright, and patent cases. In addition to market-shaping multi-jurisdictional litigation, the practice group is also skilled in IP commercialisation, portfolio management, and general rights protection, including anti-counterfeiting work for a number of international brands. Based in the firm’s Sydney office, the practice group is headed by Michael Williams, an IP litigator and hall-of-fame lawyer, who is leading several of the team’s most significant ongoing cases. John Lee has also had an impressive year, as have Siabon Seet and Rebecca Dunn, whom clients recognised as ‘absolute standouts’.

Practice head(s):

Michael Williams

Testimonials

High-quality and commercial legal advice. Accessibility to partner and senior practitioners. High-quality service all round. Head and shoulders above competitors.

Siabon Seet and Rebecca Dunn are absolute standouts. Commercial advice. Timely high-quality legal advice. Accessible and committed. Would not use any other firm.

Experience and focus on the area of IP litigation.

Skill and commitment. Thoroughness and attention to detail.

Key clients

Imdex Limited Imdex

Aristocrat Technologies Aristocrat Leisure

Bed Bath and Beyond

Calidad Reseller

Calico LLC

BASF Group

Encompass Corporate Pty

ResMed

State Street Global Advisors

Neutron Holdings Inc Neutron Holdings

Work highlights

  • Represented appellant Calidad Pty in its successful special leave application to the High of Court of Australia in relation to the issue of exhaustion of patent rights for the first time in 112 years.
  • Acting for global asset management giant State Street Global Advisers in a high-profile case against law firm Maurice Blackburn over the use and promotion in Australia of a replica of SSGA’s iconic Fearless Girl statue that sits outside the New York Stock Exchange.
  • Acted for Aristocrat Technologies in Aristocrat Technologies v Konami Japan, a case concerning the recovery of damages for patent infringement, the longest-running and the highest-value patent damages case in Australia.

Herbert Smith Freehills

Herbert Smith Freehills is recognised as a top-tier performer across the Australian legal market, and the IP team is no exception. Headed up by Sue Gilchrist in Sydney, the group has a reputation for handling high-profile patent litigation in the pharmaceuticals and tech sectors. It is also strong in trade mark, copyright, and trade secret disputes, and has been among the most active firms in headline cross-border IP transactions. Indeed, as an integral part of the firm’s global IP offering, the team differentiates itself not just by its market-leading litigation capabilities, but also by its ability to assist clients with IP commercialisation and protection strategies worldwide. Patent litigator Rebekah Gay is also recommended in the Sydney office. Names to note in Melbourne include hall-of-fame lawyer Shaun McVicar and rising star senior associate Emma Iles.

Practice head(s):

Sue Gilchrist

Key clients

Motorola Solutions

Zimmermann Wear Pty

Iluka Resources

Treasury Wine Estates

Caltex Australia

Gilead Sciences

Boral

Commonwealth Bank of Australia

Seven West Media

Work highlights

  • Acting for Motorola Solutions, Inc. in patent and copyright infringement proceedings commenced by the client against a competitor, Hytera, in the Federal Court of Australia, alleging that Hytera’s digital mobile radio systems devices infringe three of our client’s patents.
  • Acting for Gilead in relation to patent infringement proceedings in the Federal Court of Australia relating to Gilead’s blockbuster drug Biktarvy that treats the HIV-1 infection.
  • Advised Seven West Media on its sale of one of Seven’s major media companies of its magazine business, Pacific Magazines, to Bauer Media.

King & Wood Mallesons

Bringing together ‘real specialists in patent law’ and ‘expertise in data protection and privacy’, King & Wood Mallesons is ‘unlike many Australian law firms’. Clients praise the team’s strong understanding of their businesses, allowing for the provision of ‘legal advice tailored to the circumstances’. Though the team handles the gamut of contentious and non-contentious IP work, recent highlights have demonstrated particular strengths in complex patent litigation in the pharmaceuticals and electronics sectors, and high-value and often long-running trade mark disputes. Key figures in the patent space include Matthew Swinn, who heads up the practice group, and Kim O’Connell and recently promoted partner Suzy Madar, two ‘hyper-skilled’ patent experts with ‘real understanding of the pharmaceuticals and biotech industries’. Cate Nagy is the key contact for trade marks work; she is involved in a number of matters in the e-commerce and food and beverage sectors. Katrina Rathie and Caroline Ryan are also recommended.

Practice head(s):

Matthew Swinn

Testimonials

Strategic commercial legal advice, not just black letter law advice. The team understands the business, so legal advice is tailored to the circumstances.

Katrina Rathie is a trusted advisor, commercial and practical, technically excellent, fast turnaround, solution-oriented, with attention to detail, easy to work with, understands our business and our risk tolerance, considered advice even under tight deadlines. Clear communicator.

KWM has real specialists in patent law and other areas of IP specific to industries such as life sciences and IT. That, together with expertise in data protection/privacy, makes them formidable when dealing not only with the IP issues but their intersection with the development of IP rights and its often essential ingredient of personal data.

Kim O’Connell and Suzy Madar should be singled out for their real and lengthy understanding of the pharmaceutical and biotech industries, together with hyper-skilled litigation know-how, allowing them to provide advice at every step of potentially litigious matters which are essential skills to assist a client in best preparing for matters (and avoiding unnecessary ones).

Key clients

Telstra Corporation

Nestlé / Nespresso

LG Electronics

Microsoft

University of Sydney

eBay / PayPal

Woolworths

Procter & Gamble

CSIRO

Arnott’s / Campbell’s Soup Company

National Australia Bank

Seek

REA Group

Work highlights

  • Acted for Campbell Soup Company on the sale of its subsidiary, iconic Australian biscuit manufacturer Arnott’s Biscuits for US$2.2bn; working alongside the M&A team on the assignment.
  • Acting for Spirits International BV in the long-running and highly complex Australian Federal Court litigation concerning ownership of the Stolichnaya vodka trade mark.
  • Represented Arrow Electronics in relation to a claim by Japanese LED manufacturer Nichia Corporation for patent infringement concerning white LED technology.

Ashurst

Active across the spectrum of contentious and non-contentious IP, Ashurst’s strength in this area is seen in its ability to attract new major clients, adding to a client list that already includes ten of the world’s top 20 brands. The firm provides end-to-end support on patents, copyrights, designs, trade marks, and advertising. It also has niche expertise in the regulation of food and therapeutic goods, media, lotteries and promotions, and product launches and labeling. Practice head Lisa Ritson manages IP portfolios for multinationals including Condé Nast and Lindt. Key figures in the contentious space include Stuart D’Aloisio, who is representing Samsung Bioepis in a biosimilar case against Pfizer; and Kellech Smith and Nina Fitzgerald, two ‘outstanding IP litigators’. The practice group is split between Sydney and Melbourne.

Practice head(s):

Lisa Ritson

Testimonials

The team members I dealt with were incredibly approachable, professional, and very efficient at getting back to me on matters.

Nina Fitzgerald was incredibly helpful and always had my best interests at heart.

Technically excellent. Very client-focused. Very commercial.

Kellech Smith and Nina Fitzgerald are outstanding IP litigators. They have excellent legal knowledge and keep the client’s commercial interests at the forefront. They press hard when necessary, but their approach is governed by common sense, and the client’s needs.

Key clients

Combe

Boehringer Ingelheim Animal Health

Conde Nast Publications

Lindt & Sprungli

Merisant

PGS

IBM

Henley Arch

News Life Media

SunPharma

Lifestyles Healthcare Pte

SPC Foods

Google Inc

LEGO Group

Crown Resorts / Consolidated Press Holdings

Nine Entertainment Co Holdings

Whirlpool

PGS Group

Baby Bunting Group

The Newspaper Works

Taylors Wines

Rolex SA

New South Wales Government

Australia and New Zealand Banking Group

Work highlights

  • Acting for Henley Arch Group in trade mark infringement and misleading and deceptive conduct proceedings against Henley Constructions in the Federal Court.
  • Representing Sun Pharma ANZ Pty in complex patent litigation before Australia’s Federal Court relating to the cholesterol-lowering drug Lipidil®.
  • Acting for Merisant and others in a dispute with Flujo Holdings concerning stevia sweetener products and allegations of misleading conduct and trade mark infringement.

Corrs Chambers Westgarth

Corrs Chambers Westgarth's Melbourne-based IP team has ‘deep knowledge of Australian IP matters’ and has been recognised by clients for its ‘clear and concise strategies to tackle trade mark enforcement’ and its ‘practical legal solution for disputes and litigation’. The practice group is active in a variety of industry sectors, but many of its most standout highlights of late have involved patent litigation in the healthcare, life sciences, and pharmaceuticals industries. In this regard, the team is representing clients the likes of Lundbeck and Merck. Names to note in the contentious space include Odette Gourley, Stephen Stern, Grant Fisher and practice head Kate Hay. Eugenia Kolivos stands out for her franchising and commercialisation work.

Practice head(s):

Kate Hay

Testimonials

Corrs has a very practical approach when it comes to providing legal solutions for disputes or litigation. Their IP team analyses the case and relevant precedents and gets involved with the business to obtain the key information required to work on a particular case. The interest shown in the products and services provided by our company is a key differentiator from other external counsels I have engaged in other jurisdictions.

The team has a deep knowledge of Australian IP matters and has provided clear, concise, and practical strategies to tackle trademark enforcement actions against small, medium, or large opponents.

Odette Gourley has an amazing reputation in the IP world and is highly skilled in litigation. Whilst she is an Australian practitioner, her experience and knowledge of the IP system in other countries is a key factor to consider for our company, given that we operate on a global scale.

Key clients

Merck Sharp & Dohme Corp

Facebook

Mirvac

Cargill

Cartier

Lundbeck

Cipla

AFT Pharmaceuticals

Katy Perry

Sportsbet

Jinko

Major League Baseball Properties

REA Group

Caterpillar Inc.

Gucci

Christian Dior Couture

Zip Co

Tasmanian Alkaloids Pty

Southern Cross Austereo

Silverlake

New South Wales Education Standards Authority

Work highlights

  • Acting for global life sciences giant Merck Sharp & Dohme on a challenge to vaccine patents owned by Wyeth.
  • Representing pharmaceuticals multinational Cipla in patent infringement proceedings against global pharmaceutical company.
  • Advising Facebook on the launch and rollout of Facebook NewsService in Australia; work involved a full spread of IP advice and commercial support.

Griffith Hack

Griffith Hack has ‘an excellent track record of the protection and enforcement of IP rights’. The firm has undergone some significant changes over the last two years. First, in 2019 the firm was acquired by IPH, joining a network of reputable IP firms throughout Australia. Then in May 2020, the firm merged with Watermark, bringing into the fold an additional 18 IP lawyers. The practice group is divided into three key segments: life sciences (which is headed up by Amanda Stark); engineering and electrical (led by David Hughes in Sydney); and law and trade marks (led by Anne Makrigiorgos). Other standout names in the sizeable team include Brisbane-based Kellie Stonier (‘exceptionally knowledgeable’ and ‘extremely approachable’), special counsel Malcolm Lyons and former practice head Derek Baigent in Sydney. All mentioned individuals are based in Melbourne, unless stated otherwise.

Testimonials

‘Griffith Hack specialise in Intellectual Property Law with an excellent track record of the protection and enforcement of IP rights for their clients. They provide excellent service to their clients and their fees remain reasonable for the work performed. This firm is excellent with its communication and the advice it provides. The firm’s expertise in IP is exceptional and the work provided is always of first-rate quality.’

‘Griffith Hack is great at explaining the process required and the reasoning behind these requirements and keeping us updated at every step. They are genuinely interested in the issues that our company faces and are very passionate about what they do. Some firms I find quite indifferent and somewhat unapproachable but Griffith Hack is the complete opposite. The firm is also very efficient, which is a welcomed change from most other firms I engage.’

‘Kellie Stonier is exceptionally knowledgeable and willing to assist with any circumstance. Kellie is extremely approachable and I have a lot of confidence in her advice. Kellie’s particular experience in IP is invaluable and assists us greatly, especially in difficult or unusual circumstances.’

‘Jack Collings is again exceptionally knowledgeable and extremely efficient. Jack is excellent to deal with and is great at providing options beyond your initial requirements to assist with protecting the company’s IP further. Jack is great at listening and understanding the direction in which the company would like to go and providing the best advice based on this.’

Their client focus and attention to detail. Prompt responses. Efficient, meaning costs are reasonable. Our interaction is well personalised: I feel as a client that Malcolm Lyons treats us as well and with as much care and attention as he would with a larger client. His responses are timely and carefully considered.’

‘Excellent knowledge of the IP sector, great strategic skills, and advice, really gets to know our business, gives advice in a way which everyone can understand.’

‘Peer Watterson, was exceptional in managing the matter, ad coaching through the examiner despite a holiday period to ensure that upon our appeal, our patent was certified. His skill is unmatched in the forming of the basis of the patent application – to arguing the basis of our patent to the examiner in order to be certified.’

‘I find GH extremely responsive and focused on our requests. They are bespoke in their relationships with clients, which shows they take a tailored approach to solving problems. This makes them stand out in the industry. They offer a diverse range of expertise and maintain depth in each of those disciplines. Their seminars are informative and demonstrate significant expertise in specific fields, say trademarking, branding, biotechnology. Importantly, if they don’t have the answer, they will tell you so.’

‘Robert Wulff for his high client focus and unique ability to tease out and articulate inventive concepts in a provisional which are targeted to commercial advantage. Greg Munt for his ability to manage complex inventive concepts in multiple jurisdictions whilst maintaining clarity around intricate details of applications. Nicola Scheepers for her ability to distill clear course of action in complex trade mark matters.’

‘Amanda Stark and Gavin Atkins are clear communicators, understand the technical issues and impact on worldwide litigation. Understand when bringing in barristers will add value and when work would be better handled elsewhere. Come with suggestions for the next steps but listen to the input given and change approach accordingly.’

‘I have been working with Georgina Higinbotham for the past few years. She has been the primary reason I am so happy with Griffith Hack. Georgina’s knowledge of the processing as well as expertise in the technical aspects is impressive. Nothing is ever too hard to go over or explain in great detail. It has been a pleasure.’

Key clients

University of New South Wales

Allergan Inc and Allergan Australia Pty

BASF

CSR Building Products

Sony Interactive Entertainment

ArmourWall Group

Virgin Australia Airlines Pty

Puma SE

University of Melbourne

University of Sydney

Macquarie University

Kymab

Battery World Australia Pty

Security Communication Solutions International Pty

Globaltech Corporation Pty

Work highlights

  • Advising the University of New South Wales for over 20 years, protecting its world-class research in areas such as photovoltaics and quantum computing.
  • Managed Allergan’s Federal Court trial in relation to the infringement of the mark Botox®.
  • Successfully acted on behalf of multiple subsidiaries of BASF in Federal Court proceedings against a number of companies.

Minter Ellison

Rated for its ‘ability to anticipate what the other side might do’, Minter Ellison is ‘exceptionally good at strategising a way forward in legal disputes’ ranging from large-scale trade mark and copyright matters to bet-the-company patent litigation in the pharmaceuticals, software, and mining sectors. Practice head Robert Cooper in Melbourne is leading many of the team’s most impressive highlights, including patent litigation for Hytera Communications, Technological Resources (Rio Tinto), and Alphapharm (Mylan). On the non-contentious side, the firm handles strategic commercialisation and also boasts a fully integrated trade mark and patent registration group. Sydney-based John Fairbairn is ‘an expert advisor on copyright and privacy matters and has deep knowledge of the media and entertainment industry’.

Practice head(s):

Robert Cooper

Testimonials

Minter Ellison is well-prepared and exceptionally good at strategising a way forward in legal disputes.

The team stands out due to their ability to provide strategic advice that factors in the commercial picture. The advice is also targeted and succinct – meeting the client’s needs. Their ability to anticipate issues and what the other side may do, and take the respective steps to mitigate potential damage. They are good at communication and case management. Great partner availability and engagement. They have good commercial knowledge of the industry.

John Fairbairn is an expert advisor on copyright and privacy matters and has a deep knowledge of the media and entertainment industry, including fair dealing, licensing, collecting societies, and brand protection. He provides cost-effective, strategic, and timely advice.

Helen Lauder is an expert in privacy law, with expertise in regulatory inquiries.

Key clients

Bristol-Meyers Squibb

Foxtel

Bayer Healthcare

Alphapharm / Mylan

Pfizer / Hospira

SingTel Optus

Rio Tinto

Commonwealth Government of Australia

University of New South Wales

Monash University

Work highlights

  • Acting for Hytera in ‘bet the company’ litigation in Australia by defending patent infringement claims brought by US giant Motorola regarding the large and competitive market for digital mobile radios.
  • Defending Alphapharm in dispute in relation to insulin injector pens, scoring a success in resisting an interlocutory injunction at first instance and on appeal.
  • Represented Mylan in asserting three patents relating to the drug fenofibrate against Sun Pharma (formerly Ranbaxy) in the Federal Court.

Norton Rose Fulbright

Norton Rose Fulbright is well-positioned to act for large domestic and multinational brands, partially due to its ‘strong global footprint’ and its ‘extensive networks through the global IP community that can be brought to bear on any issue’. Primarily based in the firm’s Sydney-based office, the IP group advises on a full range of issues involving patents, trade marks, copyrights, designs, and trade secrets, both contentious and non-contentious. It also has strengths in franchise law, and sectors including life sciences and healthcare, consumer goods, energy, and financial services. The team is led by Frances Drummond - ‘a straight-shooter’ with deep expertise in trade mark law. Georgina Hey and Jackie O’Brien are also recommended. Senior associate Alyson Poole is also noted. 

Practice head(s):

Frances Drummond

Testimonials

We conducted a tender process for our global IP work this year but ultimately retained Norton Rose Fulbright to manage our global portfolio because of the quality of the service combined with the strong global footprint. We also use the Norton Rose Fulbright offices in UK, US, and Asia for IP and other commercial work. Having a firm with a strong Australian base and able to manage other countries suits the style of our global business.

We deal mostly with Frances Drummond and Alyson Poole. Frances has assisted us with some complex disputes advice in the past year. We value Frances putting her knowledge of our business into providing genuine commercial solutions, balancing our risk profile, and the nature of the matter. Frances is easy to deal with and works hard for us. We also deal with Alyson regularly and find her very attentive to detail and easy to deal with.

Frances and Georgina led a team with deep experience. Both are domestically and internationally experienced and have extensive networks through the global IP community. They are proactive, responsive, and commercial.

Frances Drummond is a straight-shooter, commercial and gets things done.

Jackie O’Brien provides well-reasoned clear advice that is easily understood by non-lawyers. She is always concerned to consider practicalities as well as the strict legal position. She is responsive and a pleasure to work with.

Key clients

Accolade Wines

Aldi

Australia Post

Caltex

Carnival plc

Morphe Makeup

Country Road

Luxxottica Retail Australia

BNP PAribas

Nando’s

Target

Quayeyewear

Reflector Entertainment

Sarb

Goodman Fielder Pty

Nine Network

Work highlights

  • Successfully defended Aldi in a word mark prosecution brought by Moroccanoil Israel in relation to the sought removal of the word ‘Morrocanoil’ from Aldi’s products.
  • Acted for China Mengniu in relation to the IP aspects of its AU$1.5bn acquisition of popular Australian dairy company Bellamy’s Australia.
  • Managing Accolade Wines Australia’s global trade mark portfolio.

Addisons

Addisons fields an ‘extremely talented’ team, with ‘a number of attorneys that are responsive, client-centric and a pleasure to work with’. The firm is noted for its trade mark practice, where it advises large domestic and international brands on brand strategy and protection in Australia, and also represents Australian companies in trade mark and trade dress disputes, often involving foreign rights holders. The trade marks team is jointly led by Karen Anne Hayne and Donna Short, the latter of whom also has experience of IP commercialisation and IP-driven transactions. Food and beverage, consumer goods and technology are among the team’s sector-specific strengths.

Practice head(s):

Karen Anne Hayne; Donna Short

Other key lawyers:

Tim Clarke

Testimonials

This is an extremely talented firm with a number of quality attorneys that are responsive, client-centric, and a pleasure to work with. The bench strength is remarkable with Karen Hayne, Donna Short, and Tim Clarke. You cannot find a more experienced and established team to work with.

Key clients

Virgin Enterprises

Nintendo of America Inc

OFX Group

Centre for Corporate Health Pty

Australian Ethical Investment

ClearView Wealth

IPLA Trademark Law

Monash IVF Group

Playboy Enterprises International

Spectrumceuticals Pty

Green Homes Australia Pty

Fin Control Systems Pty

TSG Interactive Services

I Have a Voice Orphans Choir

Formula One Group

Bega Cheese

The Hollard Insurance Company Pty

WOSUP Australia Pty

MoneyMe Financial Group Pty

Work highlights

  • Advised Virgin Enterprises on all facets of the Virgin Group’s brand protection, registration and enforcement in connection with the Virgin brand in Australia.
  • Acted on behalf of TSG Interactive Services‘ subsidiary Rational Intellectual Holdings in respect of two opposition proceedings in relation to “Star”-related trade marks.
  • Acting on behalf of Bega Cheese on appeal by Kraft-Heinz to the Full Federal Court in respect of judgement of Federal Court of Australia in favour of Bega.

Banki Haddock Fiora

Banki Haddock Fiora is a Sydney-based IP boutique with a strong roster of clients including performer’s rights and copyright collecting societies, publishing houses, media groups and various corporate rights holders. Kate Haddock heads up the copyright practice and acts for all but one of Australia’s copyright collecting societies. Trade mark head Margaret Shearer handles the Australian trade mark of several well-known food and beverage and retail companies. Julie Robb leads on IP disputes and enforcement work. Kate Andean was promoted to partner in February 2020.

Other key lawyers:

Peter Banki; Alison McGinn; Kate Andean

Testimonials

Very informed. Easy to get hold of.

Key clients

Apra Amcos

Copyright Agency

Thomas Duncan-Watt

Fiji Performing Rights Association

Stan

Key-Sun Laboratories Pty

New Shanghi

Urban Purveyor Group

Pfizer, Inc.

Hannesbrands, Inc.

Schneider Electric (Australia) Pty

Societe des Produits Nestle S.A.

Costco Wholesale Corporation

Australian Broadcasting Corporation

Work highlights

  • Acted for Copyright Agency in proceedings in the Copyright Tribunal to set two tariffs: one against Australian universities regarding the amount they pay for the copying and communication of works for educational purposes, and the other against the State of NSW regarding government copying and communication of works.
  • Acted for Boomerang Investments Pty in proceedings involving complex issues of infringement of copyright and entitlement to damages.
  • Advising Velcro BVBA on multiple strategic IP matters relating to trade marks and IP commercialisation.

Bird & Bird

Leveraging ‘great access to international networks’, Bird & Bird’s Sydney-based IP team routinely advises major domestic and international clients on brand strategy and protection, including opposition and enforcement matters. The practice group also has expertise in a variety of IP disputes, from trade secrets and misappropriation claims to patent and trade mark infringement litigation. Areas of particular strength include healthcare, life sciences, pharmaceuticals. Practice head Jane Owen manages international trade mark portfolios for clients including First Pharma and Elixinol Global. Lynne Lewis represented GSK Consumer Healthcare Australia in an administrative matter at the intersection of competition and IP law.

Practice head(s):

Jane Owen

Other key lawyers:

Lynne Lewis; Troy Gurnett; Sophie Dawson

Testimonials

‘Jane Owen is always responsive and practical in her approach.’

‘Great access to international networks where that will provide relevant insights into practices which may be relevant in Australia. The team in Australia is experienced in both contentious and non-contentious IP issues so can meet the breadth of our needs. They are commercially pragmatic while having deep legal knowledge.’

‘The team (Sophie Dawson, Joel Parsons, and Jarrad Parker) have great knowledge of our business and a real passion for working with the media industry. They are very responsive to client needs, concerned about providing value for money, and work hard to help us succeed as a business.’

‘Responsiveness; Subject matter expertise; Global network of related firms and agents providing extra responsiveness; Always friendly and willing to assist.’

‘Patience in waiting for instructions and repeating advice where necessary; No unreasonable demand placed; Always friendly but professional.’

Key clients

GlaxoSmithKline Consumer Healthcare Australia Pty

Wisetech Global

Boart Longyear /Globaltech Corporation Pty

Dongkuk Steel

Howden Group

The Players’ Tribune

Gram Engineering Pty

Rakman Pty / Fire Containment Pty

Abbey Laboratories Pty

Elixinol Global

Boehringer Ingelheim

Align Technology, Inc

First Pharma Pty

Troy Laboratories

Take-Two Interactive Inc, Rock Star Games, Inc

Nine Network Australia Pty

DXC Technology / Ent. Services Australia Pty

Airtasker Pty

HCAFranchise Corporation Inc

HelloFresh

Ascott International Management (2001) Pte

Oakmoore Pty

KPMG Australia IP Holdings Pty

The Wonderful Company

University of New South Wales

AmorePacific

Target Brands Inc

Vodafone Hutchinson Australia

Pearson plc

Mattel

Laura Metaal Holding B.V.

Australian Literacy & Numeracy Foundation

Solfarina Run

Centre for Cultural Compete

Work highlights

  • Acting for Dongkuk Steel in long-running Federal Court patent infringement proceedings brought against it by BlueScope Steel.
  • Acting for GSK and Novartis in Federal Court proceedings brought by the Australian Competition and Consumer Commission relating to the branding of Osteo Gel and Voltaren Emulgel.
  • Advising a global medicinal cannabis company on managing its substantial global trade mark portfolio in Australia, New Zealand, Asia, Mexico, Canada, EU, UK, South America and the US, as well as on opposition proceedings in the EU, Australia and China.

DLA Piper

The IP and technology group at DLA Piper has an impressive track record of assisting large international brands with their entry into the Australian market and with the further commercialisation of their IP. Headed up by Melinda Upton in Sydney, the team handled a number of strategic portfolio matters for Fitbit; it also advised clients including SmileDirectClub and Planet Fitness on the establishment of Australia-based operations. In the contentious space, the team has shown its strength in complex patent litigation involving life sciences, pharmaceuticals, and medical devices. Nicholas Tyacke and Melbourne-based Robynne Sanders are names to note in this space. Greg Bodulovic in Sydney made partner in May 2020. Senior associate Jessie Buchan is also noted.

Practice head(s):

Melinda Upton

Key clients

Fitbit Inc

Planet Fitness

SmileDirectClub, LLC

Entertainment One

Blue Diamond Growers

Asahi / Four Pillars

Guzman y Gomez

Irvin and Johnson Holding Company (Pty)

Byrnecut Group

Pfizer

Neurim Pharmaceuticals (1991)

ResMed

Boss Fire Pty

Horticulture Innovation Australia

Discovery Inc

Flowr Canada Holdings ULC

Work highlights

  • Advising SmileDirectClub on all legal aspects of the establishment and operation of SmileDirect Club’s business operations in Australia, including on a broad range of healthcare and medical device regulatory matters.
  • Advising Fitbit on a number of strategic IP matters across multiple jurisdictions, including on a number of trade mark and copyright infringement proceedings, anti-counterfeiting strategies and parallel importation of their products.
  • Successfully advising and acting for Neurim Pharmaceuticals in patent amendment, infringement and revocation proceedings, relating to Neurim’s patent that covers its unique prolonged-release melatonin product.

Gadens Lawyers

Gadens Lawyers provides clients with ‘a safe pair of hands’ for IP management and enforcement matters, key transactional support, and growth strategies. In addition, the group has been especially active in IP disputes over the past 12 months. Melbourne-based Glenn McGowan is the name to note in the contentious space; his recent work demonstrates an impressive breadth of service, with infringement claims involving patents, registered designs, trade marks, and copyrights. On the non-contentious side, the team handles brand protection, advertising and merchandising, and corporate transactional support for clients in sectors including consumer goods, food and beverage, fashion and retail, and automotive. David Smith heads up the IP group in Melbourne.

Practice head(s):

David Smith

Testimonials

The work in the field of trade marks is of high quality. They are responsive and reply to us within 24 hours. I have worked with other firms in Australia. However, Gadens is more responsive and quicker. The team offers more options to our clients.

Knowledgeable, hands-on, and a safe pair of hands that I can trust. This particularly applies to Hazel McDwyer.

We choose to work with David Smith because he has such a strong understanding of our business and the wider industry in which we operate. David provides commercial advice in a format that we can share with the business without having to spend time deciphering legal jargon.

Key clients

Cotton On Group

BP Australia

Expedia

Accolade Wines

Bapcor

Healius

DiDi

Baiada

Foreo AB

Australian Whisky Holdings

Work highlights

  • Advised Kathmandu Holdings on its acquisition of iconic global surf brand and action sports company, Rip Curl Group Pty, including on the global trade mark portfolio and all licensing agreements with retail licensees and distributors globally.
  • Acting for Automotive Brands Group Pty, one of Australia’s largest retailers of automotive parts and accessories, in trade mark opposition proceedings against a competitor relating to the PIAK trade marks.
  • Advised Ultimate Building Solutions on allegations of copyright infringement in a set of building plans with litigation initiated in the Federal Court of Australia in Brisbane, against Ultimate Building Solutions Pty.

Jones Day

According to one client, working with Jones Day’s IP team ‘is one of the most valuable experiences that an in-house counsel may have in their career’. The practice group stands out for its expertise in patent litigation in the healthcare, life sciences, and pharmaceuticals sectors. Given its integration in the firm’s global network, the Australia-based team often finds itself involved in multi-jurisdictional disputes acting for clients of the calibre of Sanofi, Bristol-Myers Squibb, and Celgene. Among the team’s recent highlights, Melbourne-based practice head Lisa Taliadoros helped represent Sanofi in a test case, in which the Australian government sought compensation arising merely from the client’s assertion of its patent rights. Anthony Muratore is a stalwart in the patent litigation landscape in Sydney.

Practice head(s):

Lisa Taliadoros

Other key lawyers:

Anthony Muratore

Testimonials

‘Jones Day IP team makes strategic movements in every momentum of the patent prosecution process, and they provide systematic information which helps in-house counsel, in turn, help the management team of a company in the decision-making process. For example, every time they make decisions, they give pros and cons, with time and cost estimation, and such information greatly enhances the chance of the management team of a company making a right, informed decision. Also, they are good at not only in the field of patent prosecution, responding to an opposition, federal court appeal, etc, but also in the field of PR or IR, dealing with potential investors, board of directors, news media, etc. Working with Jones Day IP team is one of the most valuable experience that an in-house counsel may have in her career.’

‘Anthony Insogna, the head of the IP team is very professional and reliable. He is doing an excellent job in coordinating other jurisdictions’ movements including the US, Australia, Europe, Japan, and China.’

Key clients

Merck & Co., Inc.

Bristol Myers Squibb

Regeneron Pharmaceuticals, Inc.

The Kraft Heinz Company

Sanofi

ToolGen, Inc

Celgene Corporation

Zoetis

Work highlights

  • Acting for ToolGen, Inc. in relation to a challenge to its patent rights concerning molecular biology technology CRISPR.
  • Acting for Kraft Heinz in relation to a dispute with Bega Cheese concerning the right to use certain trade dress (unregistered trade marks) for peanut butter in Australia and advertising of the respective parties’ products.
  • Acting for Sanofi, Sanofi-Aventis US LLC and Bristol-Myers Squibb Investco LLC (Sanofi/BMS) in a test case by the Australian Government.

Maddocks

Maddocks is recognised by clients for its ‘attention to detail’ and its ‘understanding of client needs’. From patents to trade marks, the team handles a full range of contentious and non-contentious IP work for clients in areas including pharmaceuticals, healthcare, technology, and hospitality. Ben Miller is a key contact for patent licensing and disputes, particularly in the biotech and pharmaceuticals sectors; he recently represented Arrow Pharmaceuticals in its successful opposition of a Novartis patent. Practice head Brendan Coady handles international trade mark filing and strategy for a number of large Australian brands. All lawyers mentioned above are based in Sydney.

Practice head(s):

Brendan Coady

Other key lawyers:

Ben Miller; Robert Gregory

Testimonials

The team has experience and expertise in matters that go both case management and understanding the case. They understand the clients’ needs.

Key clients

Abbott Laboratories

Alkem Laboratories

Apotex Pty

Aristocrat Technologies

Arrow Pharmaceuticals

Axicom

Chartered Accountants Australia New Zealand

Charlie Teo Foundation

Children’s Medical Research Institute

Garvan Institute of Medical Research

Generic Partners

Juno Pharmaceuticals

LaserClinics Australia

LEO Pharma A/S

McDonalds

NetComm Wireless

Norbrook Laboratories

Ramsay Health

ResMed

Samsung Bioepis

Samsung Electronics Australia

St Vincent’s Hospital Sydney

Sydney Airport Corporation

Yum Restaurants

Work highlights

  • Acting for Arrow Pharmaceuticals in its defence of an appeal by Novartis to Arrow’s successful opposition to a grant in the Patent Office of one of Novartis’s patents for certain formulations of fingolimod.
  • Acting for St Vincent’s Hospital Sydney in the drafting and negotiation of a patent license agreement with F Hoffman-La Roche A.G.
  • Advising Adstream Holdings on its worldwide trade mark portfolio; work involves searching, filing, registering and maintaining the company’s trade marks across the globe, including Australia, Europe, North America and South East Asia.

McCullough Robertson

McCullough Robertson is called upon by international clients to handle IP litigation and strategic portfolio matters both in Australia and worldwide; however, where the group stands out most is in its full-service IP work for Australian companies. In this context, the team’s work ranges from large IP-driven corporate transactions to the enforcement of IP rights. Based in Brisbane, the team is led by Belinda Breakspear, a ‘calm, planted lawyer’ who is ‘always willing to adapt to fit in with a client’s requirements’. The practice group is active across several core sectors, including TMT, retail, life sciences, and e-commerce.

Practice head(s):

Belinda Breakspear

Other key lawyers:

Peter Stokes; Alex Hutchens

Testimonials

I have known Belinda Breakspear for a number of years – she is a calm, planted lawyer, who gives solid commercial advice. She has always been available and is always willing to adapt her standard template (e.g. searches) to fit in with a client’s requirements.

Key clients

Flight Centre Travel Group

Top Deck Travel

Russell Mineral Equipment Pty

Une Piece Pty

Wagners Holding Company

TechnologyOne

Griffith University

Queensland Ballet

Cairns and Mackay Airports

Girl Guides Australia

Maxi the Lifeguard

Work highlights

  • Managing Flight Centre Travel Group Limited’s worldwide trade mark portfolio, including providing regular strategic IP advice to support the protection and enforcement of it’s 90 plus brands, in over 150 countries worldwide.
  • Advising an Australian university on IP, brand protection and commercialisation agreements.
  • Acting for luxury Australian fashion label Une Piece on trade mark prosecution and design registration in Australia and overseas.

Piper Alderman

Piper Alderman provides comprehensive support to domestic and international clients in IP enforcement, protection, and strategic expansion matters. Headed up by Tim Clark out of the Melbourne-based office, the team has an especially strong reputation in the contentious space, where recent highlights show strengths in patent and trade mark infringement litigation and trade secrets claims. The practice group also has an impressive track record in patent and trade make oppositions and appeals. Another key figure is Tim O’Callaghan  in Adelaide (an ‘adaptable and personable’ attorney), who handles trade mark registration and portfolio management for corporate clients and has experience acting alongside international counsel in disputes involving foreign litigants.

Practice head(s):

Tim Clark

Other key lawyers:

Tim O’Callaghan ; Sarah Johnson

Testimonials

They can deliver creative solutions and tools to assist combat counterfeit.

Tim O’Callaghan works with clients to tailor solutions. Tim is also adaptable and personable.

Key clients

Australian Digital Health Agency

Habitat Early Learning Centre

Best Practice Software

Blackmagic Design Pty

EasyFlower

Fantech

Melbourne Health

Redarc Electronics Pty

Clover Corporation

Work highlights

  • Advising Fantech on defending against ongoing non-use revocation and invalidity proceedings against Fantech in respect of Fantech’s SYSTEMAIRE trade mark registration in New Zealand before the Intellectual Property Office of New Zealand.
  • Acted in the prosecution of its trade mark in Australia and the US relating to Penington Institute’s “International Overdose Awareness Day”.
  • Acting for the Canadian mining supplies company C.M.E on Patent infringement proceedings in the Federal Court alleging infringement of three patents by five respondents.

Shelston IP

Led by Chris Bevitt, Sydney-based boutique Shelston IP has experience in every major area of IP law, covering contentious and non-contentious work involving patents, trade marks, and designs, copyrights, and trade secrets. The firm runs a multidisciplinary boutique model, providing clients with in-house access to IP experts with specialised expertise in a number of core industries. Paul Harrison heads up the chemical and biotech team, Allira Hudson-Gofers leads the mechanical and electrical engineering group, and Michael Christie heads the life sciences team. Sean McManis is the name to note in the trade marks space. Katrina Crooks and Mark Vincent jointly head the IP litigation group.

Practice head(s):

Chris Bevitt

Key clients

Hytera Communications Corporation

Dyno Nobel

InfoTrack Pty

Fuchs Lubricants (Australasia) Pty

Australian Rugby League Commission

Football Federation Australia

GrainCorp Operations

Colgate Palmolive Pty

Dyson Technology

Janssen Pharmaceuticals / Johnson & Johnson

Work highlights

  • Acting on behalf of Hytera against Motorola in high-profile multi-jurisdictional patent and copyright litigation.
  • Acting on behalf of Dyno Nobel against Orica – a high profile dispute in the mining industry between the two key players in explosives technology.
  • Acting on behalf of InfoTrack Pty Ltd against Encompass Corporation Pty Ltd and SAI Global Property Division Pty ltd – Full Court appeal – leading case on the patentability of computer-implemented business methods. Also, in a related Patent Office opposition.

Simpsons Solicitors

Simpsons Solicitors is a specialist IP firm with a particularly strong reputation in the media and entertainment space and an impressive client roster to back it up. Acting across the spectrum of contentious and non-contentious trade mark and copyright matters, the team is instructed by a variety of commercial entities, federal and state government institutions, and media personalities. Based in Sydney, Adam Simpson leads the firm’s IP litigation and publishing teams; Jules Munro heads up the music industry group; Mark Bamford leads the film and TV finance and production group. Also recommended is Ian McDonald, who has unique expertise in the museums and galleries sector.

Other key lawyers:

Ian McDonald

Key clients

Kobalt Music Publishing

Riot Games, Inc

Maurice Blackburn Lawyers

Universal Music Publishing and Songs of Universal, Inc

The Wiggles

Anindiliyakwa Land Council

Allen & Unwin Pty

Spiral Foods Pty

Hachette Publishing Group

David Gross

Work highlights

  • Representing Kobalt Music Group in Australia’s largest entertainment litigation in 2019/20 in relation to the hit song “Love Is In The Air”.
  • Representing Maurice Blackburn Lawyers in Federal Court proceedings brought by US financial institution State Street regarding Maurice Blackburn’s acquisition of a Fearless Girl statue.
  • Advising global brands, including Riot Games, The Wiggles and Spiral Foods, on trade mark prosecution and portfolio matters.

Spruson & Ferguson Lawyers

Clients choose Spruson & Ferguson Lawyers for its ‘international coverage’, its ‘sound, reliable advice’, and its ‘expediency in responding to important issues’. An IP boutique with a longstanding reputation, the firm brings together experts in the registration, commercialisation, and litigation of trade marks and patents to provide comprehensive IP support to domestic and international companies. The practice is headed by Sydney-based Khajaque Kortian, who counts digital technology among his core areas of focus. Also of note, Sylvie Tso (‘very professional’) acted for an Australian client in the sale of its IP to a US-based Fortune 500 medical technology company, and Francesca Colubriale (‘outstanding’) handled opposition proceedings for clients including Philip Morris and Accor.

Practice head(s):

Khajaque Kortian

Testimonials

We choose to utilise the services of Spruson and Ferguson because of their international coverage, as well as their expediency in responding to important issues when it is required.

We mainly deal with Sylvie Tso who looks after our trade mark work, but also manages her team when we also need assistance with patent applications or infringement disputes. We have found Sylvie to always be very professional and attentive to our needs.

Spruson & Ferguson provide sound, reliable advice in a timely fashion and seek to deliver the best possible value for their clients.

Francesca Colubriale has been outstanding to deal with. We have used Spruson & Ferguson for a comprehensive global trademark registration process and we have been extremely happy with her work.

Key clients

The Salvation Army Australia

Accor

Philip Morris International

Intervet International B.V.

Ceramiche Caesar S.p.A.

Work highlights

  • Acting for Ceramiche Caesar S.p.A. in an appeal of three sets of related proceedings to the Full Court of the Federal Court of Australia regarding Caesarstone’s attempt to expand its use of the Caesarstone trade mark.
  • Acting for Intervet International B.V. on its defence of an appeal brought by Merial Inc. from a decision of the Commissioner of Patents.
  • Acting for Accor on its opposition of a registration of an application to register the trade mark Notel in Australia in respect of hospitality services.

K&L Gates

K&L Gates  handles IP issues from trade mark registration to copyright litigation with minimum fuss and a lot of good humour’. The Australia IP team is led from Melbourne by global IP co-head Jonathan Feder. Working in conjunction with its colleagues worldwide, the team is routinely involved in commercial licensing and transactional support, brand protection, and general portfolio management. It stands out in particular for its activity in the fashion industry, though the team is also experienced in the areas of technology, sport, and food and beverage. Also recommended in Melbourne is Chris Round, whose recent highlights included several IP-related disputes, strategic IP transactions, and a global rebranding matter.

Practice head(s):

Jonathan Feder

Other key lawyers:

Chris Round; Tony Watson

Key clients

A2B Australia Pty

ABN Group

Australian Football League

Factory X Pty

First Sentier Investors

McDonald Jones Homes

Metricon Homes Pty

National Basketball League

R. M. Williams Pty

Seafolly Pty

Sullivan’s Cove

Work highlights

  • Acting for Directed Electronics OE Pty in commercial litigation proceedings in the Federal Court of Australia.
  • Advising the Australian Football League on its global brand portfolio since 2006; work includes advising on securing registrations of trade marks and playing uniforms as registered designs.
  • Acting for Seafolly Pty and fashion sector clients on matters concerning brand and design protection, copyright advice and litigious matters involving copyright, designs and trade marks.

Arnold Bloch Leibler

Arnold Bloch Leibler is ‘often involved in bet-the-company IP litigation’ for Australian companies in sectors including food and beverage, fashion, retail, and consumer goods. Clients appreciate the IP team’s seamless integration into the wider firm, allowing for ‘far greater breadth of experience than is common at many of the leading IP firms’. Based in Melbourne, the team is headed by Zaven Mardirossian, who regularly represents Australian companies in trade mark, copyright, and patent-related disputes, often against well-known international brands. The group also handles a full range of non-contentious work, from trade mark filing and registration to strategic licensing transactions.

Practice head(s):

Zaven Mardirossian

Other key lawyers:

Gabriel Sakkal

Testimonials

The IP practice is often engaged in bet-the-company litigation. The IP practice forms part of a larger firm with a broad range of work. As a result, the IP practitioners have a far greater breadth of experience than is common at many of the leading IP firms. They are accustomed to grappling with a wide range of IP issues, in respect of a broad range of clients, in high-profile cases.

Key clients

Fonterra Australia

PallaPharma

Baillieu1889

Colman Education Foundation

Cygnett

Avetta

The Just Group

A Managing Director of Construction Engineering

Skymorials

BilottoNominees Pty

Decjuba

Gurner™

Peter Alexander

Work highlights

  • Acted for Cygnett Pty (Cygnett) in Federal Court proceedings in relation to Cygnett’s alleged infringement of Yes Distribution’s ‘PowerFlo’ trade mark.
  • Acted for Palla Pharma in Federal Court proceedings commenced by Tasmanian Alkaloids Pty, in which TA alleged that TPI infringed its world-first patent over a variety of “high codeine poppies”.
  • Acted for stockbroking firm Baillieu 1889 in a dispute against members of the Baillieu family over the rights to use the ‘Baillieu’ family name.

Davies Collison Cave

Davies Collison Cave enters the rankings this year on the basis of its impressive IP litigation victories in the pharmaceuticals and engineering sectors, and solid client recommendations highlighting its ‘technical abilities and professionalism’. In addition to its strength in patent and trade mark litigation, the firm also advises on rights transfers and assignments, data protection matters, and general IP protection and enforcement. Key figures include IP litigator Chris JordanAdam Sears (who looks after the trade marks group), patents team head David Webber, and Michael Wolnizer (who acts as group managing principal of the firm). All mentioned lawyers are based in Melbourne.

Testimonials

Adam Sears and Nick Holmes have serviced us for many years. They work as an extension of our legal team. We find them extremely approachable and enjoyable to work with, and they provide us with an excellent service, stemming from deep experience and knowledge of IP across Australian and New Zealand.

Great commercial awareness of client’s real business needs; keen to apply their knowledge.

They are extremely responsive and give thorough replies to our queries. They suggest potential pathways when we meet roadblocks. They provide risk assessments that are appropriate. In addition to their technical abilities and professionalism, this is a friendly team that is a pleasure to work with.

Chris Jordan and Michael Wolnizer are both highly approachable and business-minded leaders.

Key clients

Telstra

Johnson & Johnson

CSL

Microsoft

Wesfarmers

CSIRO

Monster Energy

DuluxGroup

GlaxoSmithKline

Orica Australia Pty

Novartis

Work highlights

  • Acted for Bayer Pharma Aktiengesellschaft in an infringement suit against a number of generic companies asserting a patent covering Bayer’s oral high selling contraceptive products Yasmin and Yaz.
  • Acting for Orica Explosives Technology Pty on defending its mining blast technology including electronic blasting services.
  • Successfully represented GlaxoSmithKline in infringement proceedings in which the clients asserted a patent covering its Panadol Osteo product.

Dentons

Rated for its ‘competitive rates’ and ‘quick responses’, Dentons really ‘understands the needs and pressures of general counsel’. Headed up by Joy Atacador in Melbourne, the team is perhaps best known for its ‘exceptional’ portfolio management and IP transactions work. Notably, the group manages domestic, regional, and global IP portfolios for a number of well-known Australian and international brands, with particular experience in the areas of retail, leisure, hospitality, and consumer and medical products. Much of the team’s standout work is strategic transactions aimed at business expansion; recent examples include franchising-related services provided to Avis Budget Group and IWG. The team also has experience in IP disputes.

Practice head(s):

Joy Atacador

Testimonials

The team is unique because of its members’ specialised understanding of intellectual property. The team is quick to respond to queries, and understands the needs and pressures of general counsel in the in-house space.

The team has knowledge, passion, and ability to get the job done on time.

Key clients

Bauer Media

Generic Partners

Hertz

Starwood Capital

Avis Budget Group

IWG

LG Electronics

Berkshire Hathaway Home Services

Sussan Group

Rapid Response Revival

Work highlights

  • Overseeing all legal aspects ofRapid Response Revival Research’s growth strategy.
  • Acting as sole legal adviser for Avis Budget Group, advising across multiple matters including drafting precedent franchise agreements, advising on competition law, advising on trade mark and other matters including privacy in respect of the franchised business.
  • Advising IWG on its global franchising strategy in Australia and New Zealand, including drafting agreements and negotiating with prospective franchisees.

HWL Ebsworth

HWL Ebsworth’s IP group is recognised for its track record in brand protection, licensing and commercialisation, registration, and enforcement work. Luke Dale (Adelaide) and Matthew Craven (Melbourne) have experience in matters including franchising; Bill Singleton (Brisbane) specialises in the field of IT and technology; and Jennifer Huby (Sydney) has expertise in the media and communications sector.

Mills Oakley

Mills Oakley provides ‘prudent, timely and commercially astute legal advice’ on IP matters ranging from patent and trade mark litigation to worldwide filings and strategic licensing. Clients rate James Lawrence as ‘an important IP litigator’ who ‘really shines at the intersection of IP and TMT work’. Among his recent highlights, Lawrence represented the Australian author of a popular children’s book in a trade mark infringement claim brought by US rapper JAY-Z. Lawrence is based in Sydney alongside Teresa Nicoletti heads the IP, health, and life sciences practice group. Also recommended is Brisbane-based Malcolm McBratney, who has experience of trade mark and patent disputes and IP commercialisation.

Practice head(s):

Teresa Nicoletti

Testimonials

Mills Oakley has a strong, focused IP team. Mills Oakley provides prudent, timely, and commercially astute legal advice in relation to intellectual property, particularly with regard to patent and trade mark matters.

James Lawrence is a leading IP litigator. James has extensive experience in the technology fields, particularly in relation to software and computer-implemented inventions.

Mills Oakley has great intellectual property attorneys and a great group of top-tier clients. We find them extremely easy to work with, as their standards and case-handling are truly world-class.

IP litigator James Lawrence really shines at the intersection of IP and TMT work. He has excellent and practical ideas for how clients can get success in complex disputes.

Malcolm McBratney has extraordinary skill with strategies in handling client portfolios for top-tier clients. He understands their needs inside and out.

Key clients

Rokt Pte

Zetco Valves Pty

The Little Homie Pty

PPK Group

RP Data Pty

Axis IP Pty

Cali Press Pty

Super Geek Pty

Bainbridge Pty

Mad Mex International Pty

Work highlights

  • Acted for Rokt Pty in Commissioner of Patents v Rokt Pte Ltd, a Full Federal Court appeal concerning patent eligibility for computer-implemented inventions.  
  • Acted for The Little Homie Pty and its director Ms Jessica Chia in the trade mark and passing-off case brought by rapper Jay-Z in relation to hip-hop themed children’s books.
  • Acted for CoreLogic, the world’s largest data and analytics company, in trade mark opposition proceedings against Pointdata Holdings Pty relating to the registration of the mark ‘ipData’.

Sparke Helmore Lawyers

The team at Sparke Helmore Lawyers handles a wide range of contentious and non-contentious IP work for Australia-based companies, government departments, and local authorities, but stands out in particular for its experience of brand protection for foreign clients doing business in Australia. Recognised for her ‘comprehensive, clear and remarkably spot-on advice’, Sydney-based Shannon Platt heads up the practice group; she assisted Crocs, Inc with the registration of a shape trade mark in Australia, and also represented a US-based bridal gown manufacturer in a trade mark infringement claim and in a separate unauthorised domain name dispute.

Practice head(s):

Shannon Platt

Other key lawyers:

Tina Guan

Testimonials

Sparke Helmore provides high-quality, strategic advice.

Shannon Platt has been practising in the IP field for many years, she instinctively understands our commercial objectives and her advice is always comprehensive, clear, and remarkably spot-on.

Key clients

Allnex Resins Australia Pty / Allnex Netherlands B.V.

APT Advanced Polymer Technology

Coal Services

Community First Credit Union

Craveable Brands

Crocs, Inc

Austrade

Electrolux Home Products

Greencross / Petbarn / Animates

Industrial Galvanizers Pty

Lidl Stiftung & Co. KG

Liquor Marketing Group

Maggie Sottero Designs, LLC

Merck KGaA

Council of the City of Shellharbour

Yarra Valley Water Corporation

Liverpool City Council

Parramatta City Council

Millennium & Copthorne International

University of Technology Sydney

Take 3

James Cumming & Sons Pty

Tomkins Commercial & Industrial Builders Pty

Bentleys Australia Pty

Wander Group Holdings Pty

Grant Bloodstock Pty

Tsingtao Brewery Company

Goodlife Operations Pty

Ricoh Company

Australia’s Oy

Work highlights

  • Acted for Community First Credit Union against Bendigo & Adelaide Bank in trade mark proceedings regarding the descriptive words “Community Bank”.
  • Assisted Crocs, Inc. with successfully registering an Australian shape trade mark for the shape of the famous “Crocs Classic Clog” shoe.
  • Acted for for Maggie Sottero Designs LLC on successfully resolving a suite of worldwide trade mark oppositions.

Thomson Geer

Practical’ and ‘customer-focused’, Thomson Geer advises domestic and multinational clients on trade mark portfolio management, patent litigation, and IP enforcement. The team has experience in a variety of industry sectors, though the past year has seen marked activity in the fields of healthcare and pharmaceuticals, consumer goods, gaming and entertainment, and technology. A key figure in the team is Ben Coogan in Brisbane, a ‘customer-focused’ lawyer who is ‘particularly skilled at developing effective strategies to achieve outcomes that meet customer expectations’.

Other key lawyers:

Ben Coogan; Dianne Beer; Tony Conaghan

Testimonials

They are practical, client-focused, and committed to getting the best outcome for their customers.

Ben Coogan is very practical and client-focused. He is particularly skilled at understanding clients’ needs and developing effective and innovative strategies to achieve outcomes that meet their expectations.

Work highlights

  • Acted for Dr Wolff Group on its defence of a trade mark dispute brought against it by Combe International.
  • Acting for Konami Australia Pty in patent litigation in the Federal Court of Australia in Sydney.
  • Managing the extensive trade mark portfolio of the multinational Healthcare and FMCG group Reckitt Benckiser throughout Australia and the Pacific.