Allens has ‘deep experience in the IP space’. The group demonstrates strength across a wide variety of IP offerings, including advisory work, registration and oppositions and portfolio management regarding patents, trade marks and designs. The team also has a reputation for handling major IP transactions, litigation, licensing, commercialisation and enforcement mandates. Particular sectors of focus for the group include technology and life sciences. Standout partner Miriam Stiel leads the team from Sydney and has particular expertise advising on brand protection and advertising matters. In Melbourne, Tim Golder has substantial experience in trade mark protection, while Tim Allen is strong in brand management. Back in Sydney, Andrew Wiseman‘s commercial background and litigation skills stand him in good stead to advise his clients on the full range of IP issues; and Joel Barrett, who is active across a range of sectors, was promoted to partner in mid-2020. Caroline Ryan, who is also a registered trade market attorney, joined the team as a partner in July 2021 bringing experience in IP protection and enforcement.
Intellectual property in Australia
Other key lawyers:
‘Pragmatic advice and always responsive‘
‘The Allens’ team has deep experience in the IP space which they can call on. We have always found them extremely responsive and practical in servicing our IP needs.‘
‘Miriam Stiehl is a standout partner.‘
‘Tim Allen is our lead partner. He has always shown not only outstanding legal IP knowledge but, as importantly, provided excellent commercial advice on every aspect our IP service needs. He is complemented by an excellent team who manage our IP needs in a cost effective way.’
Anheuser-Busch (Abb InBev)
Australian Olympic Committee
Foxtel / Fox Sports
Merck Sharp & Dohme
- Advising LAVO on its development of, and investment in, a new solid-state hydrogen storage technology.
- Successfully defended the validity of a Wyeth patent relating to pneumococcal conjugate vaccines, establishing that Merck’s proposed pneumococcal conjugate vaccine will infringe Wyeth’s patent.
- Advising Uber on the management of its Australia and New Zealand trade mark portfolio.
Split between Melbourne and Sydney, Ashurst's dedicated IP team is active in significant litigation and commercial mandates regarding patents, copyright, designs and trade marks for both local Australian and major international clients. Particular sector focuses include food and therapeutic goods regulation, product launches and labelling, lotteries and promotions, and media regulation. The team is also active academically, publishing IP-related articles, podcasts and analysis. Anita Cade is now practice group head after taking over from Hall of Fame lawyer Lisa Ritson, who still plays an active role in the team managing IP portfolios. Kellech Smith, Stuart D’Aloisio and Nina Fitzgerald are also significant team members.
‘They are one of the leading intellectual property practices in Australia capable of handling large scale patent, trade mark and copyright litigation, which they do on a regular basis. They are also part of a major international law firm which brings various advantages. They have very good teams of associates and lawyers working with them. In my experience, collectively they provide great service to their clients both in terms of their legal ability and in their approach to the strategy of litigation. I regularly recommend them to clients seeking representation in the intellectual property space in Australia.’
‘Technically excellent. Very client-focussed and commercial.’
‘Amazing attention to detail and incisive thinking, great project management.’
‘Stuart D’Aloisio (partner, Melbourne) is an excellent litigator, with a particular focus on patent litigation. He regularly acts in major pharmaceutical and life-science patent cases. In my experience he is a shrewd litigator and an outstanding lawyer, with great judgment and appropriate attention to detail in the way that he prepares cases. To my observation he also has good client relationship skills. He has a first rate team of associates and lawyers working with him.’
‘Stuart D’Aloisio is a great all rounder. He is exceptionally knowledgeable and a clear thinker, but also across the details of project management and client management.
‘Nina Fitzgerald is a great client manager and a good team manager.’
‘Nina Fitgerald and Kellech Smith partners. Both outstanding lawyers.
Advance Magazine Publishers
Boehringer Ingelheim Animal Health
Chicago Mercantile Exchange
Chocoladefabriken Lindt & Sprüngli
City of Melbourne
Clifford Hallam Healthcare
Endemol Shine Australia
Sydney Opera House Trust
- Acted for energy company AGL in an ex parte interlocutorand injunction application, expediting a Federal Court of Australia hearing against Greenpeaceasserting copyright and trade mark infringement in relation to the use of AGL’s logo in a Greenpeace media campaign.
- Acting for Henley Arch in trade mark infringement and misleading & deceptive conduct proceedings in the Federal Court against Henley Constructions, concerning the latter’s use of the “HENLEY” trade mark (and similar marks) in relation to building services in Sydney.
- Represented Sun Pharma in patent litigation brought by Mylan before Australia’s Federal Court, Full Federal Court and High Court regarding the cholesterol-lowering drug “LIPIDIL”.
Handling work for local, domestic clients as well as major international companies, the practice at Baker McKenzie LLP is praised for its 'high level of expertise'. The team is active across the full range of IP issues including copyright, patent and trade mark litigation, brand protection and management, and associated commercial transactions across the healthcare, life sciences, TMT, financial services, consumer goods and retail sectors. Andrew Stewart is head of the IP and TMT practice in Australia and focuses on audio and visual streaming copyright mandates. Jonathan Flintoft has particular strengths in trade mark prosecution, especially if an overseas element is present. Helen Mcpherson joined the group in June 2020 from Norton Rose Fulbright and has added to the practice's patent litigation expertise, in which Elisabeth White is also a notable name. All partners named are located in Sydney. Richard Gough has now retired from the firm.
Other key lawyers:
‘We have found them to have a high level of expertise in our area of interest. This is not simply knowledge in that field, but also a good understanding of the commercial aspects of putting that expertise into practice.’
‘They are global, and able to support our needs – which are also global. Everyone we have dealt with (across multiple offices) has an approach that is engaging and easy to work with.’
‘Client care is excellent. A good level of communication, genuine care to understand our needs and provide effective answers.’
‘Commerciality is good, with a commercial approach to providing legal advice. In every dealing they have sought to understand our business, our goals and the broader context of our needs.’
‘Helen MacPherson replaced the previous partner and she has done a lot to build a relationship by seeking to understand our nature and needs, and reaching out with presentations and information in relevant areas.’
Lion / Bega
LONGi Green Energy Technology
Motion Picture Association of America
- Representing Meltwater’s Australian business in seeking to have the Copyright Tribunal determine a fair license scheme following a collecting society’s proposal of a new industry license, which included a fee increase of more than 300%.
- Acting for In-N-Out Burgers in long-running, high-profile Federal Court proceedings against a third party business trading as “Down N’ Out”.
- Acting for LONGi in long-running patent amendment, infringementand revocation proceedings in the Federal Court of Australia against the Hanwha Group of companies.
The strong national team at Clayton Utz is 'among the very best in Australia.’ It has great IP-litigation capabilities spanning patent, copyright and trade mark disputes. In particular, the practice's patent expertise is reflected in its impressive list of pharmaceutical clients who trust the team to undertake their patent work. Other areas of focus for the team include transport, telecoms, food, banking and finance and government entities. In addition, the team's strong relationships with leading IP firms situated in the US, Europe and the Asia Pacific region leave it well-positioned to assist on cross-jurisdictional mandates. Working out of Sydney, the 'exceptional' John Collins is practice group head and possesses expertise in trade mark and patent issues. Timothy Webb is joint head of the firm's trade mark and brand protection group, and also a key member of the Sydney team which also includes Natalie Shoolman, 'an outstanding special counsel.' In Melbourne, Chris McLeod's brand protection work from for Toyota is particularly significant and Richard Hoad is an additional figure of note.
Other key lawyers:
‘Clayton Utz provide an excellent service to their clients. They are commercial and responsive. They are among the very best in Australia. ’
‘The people have been great to work with as they understand our business and are very quick to respond. Their advice is succinct and to the point and they manage difficult conversations such as their trade mark fees being too high and always try and find a way to resolve any concerns (e.g. reducing trade mark fees).’
‘‘From the way they handled the case it is clear that they are experts providing comprehensive and thorough service while giving precise advise.’
‘We worked with Tim Webb (Partner) – I would highly recommend him; the client service was excellent and he achieved a very positive outcome for us in the matter. Tim was impressive on all fronts – most importantly, he understood our commercial objectives and ensured the legal strategy achieved exactly what we wanted. I would not hesitate to use Clayton Utz in any other trade mark matters that arise for our companies. ’
‘John Collins stands out as exceptional. John is highly experienced and offers clear and practical advice.’
‘Nathalie Shoolman is very intelligent, thorough and nice to work with.’
‘The team’s unique strength is in John Collins’ leadership. John is highly experienced and adept when it comes to IP law and litigation. He has also built a high performing team who model his leadership values. His focus on technical mastery, commerciality and client focus is evident from all interactions with the members of his team. ’
‘Natalie Shoolman is an outstanding special counsel. Her client relationship management skills are superb: she is highly responsive, thorough and thoughtful in her engagement. ’
‘I thoroughly enjoy working with Dean Gerakiteys as he very clear with his advice and he is always available to run through matters. He works extremely hard to understand the business and will be transparent if he feels that it is not the best interests of the company to pursue a matter. He is extremely knowledgeable and feel 100% confident in the advice he provides.’
Singtel Optus Group
Toyota Motor Corporation Australia
Virgin Australia Airlines
The a2 Milk Company
King Furniture Australia
Hill & Smith Holdings
Swancom t/as The Corner Hotel
- Acting for Novartis and Novartis Pharmaceuticals Australia in proceedings to enforce patents and prevent the entry of generic competition for its blockbuster multiple sclerosis drug Gilenya (fingolimod).
- Representing Sandoz in the long-running Lundbeck escitalopram (Lexapro) patent-infringement case; a claim for around $150m made by Lundbeck against four companies (including Sandoz) for alleged infringement of a patent covering the depression treatment Lexapro.
- Acted for NPP Australia (NPPA), a joint venture public company mutually owned by the Reserve Bank of Australia and 12 authorised deposit taking institutions, successfully launching proceedings against US blockchain company Ripple Labs for trade mark infringement.
Gilbert + Tobin
The practice at Gilbert + Tobin advises on the full range of IP issues for both domestic and international clients, and is particularly formidable in high-profile litigation involving some of the most significant copyright, patents and trade mark cases. Complex IP transactions, brand protection, portfolio management, commercial IP licensing, product liability and anti-counterfeiting matters are also part of the firm's offering. The group is led from Sydney by Michael Williams who is particularly strong in IP litigation. Also Sydney-based, Siabon Seet is similarly recognised for her IP litigation skills, handling major cases and enforcement matters; while John Lee is a skilled patent litigation specialist.
‘Knowledge of law, ease of working together.’
‘The IP team at Gilbert and Tobin is very client focused, their attention to detail is exceptional and I believe has been critical in the many successes we have had defending our patents in the Australia in courts. Their communication is excellent and considered, and as a client, I have always felt well informed.’
‘Reliability, credibility and creative thinking.’
‘John Lee has an exceptional ability to make complex matters simple for the layman which has been needed on many occasions.’
State Street Global Advisors
BCI Media Group
Self Care Corporation
Neutron Holdings (Lime)
Quadrant Private Equity
Luigi Lavazza S.p.A
A Nelson & Co
Fiat Chrysler Automobiles (Jeep division)
- Representing Calidad in “Calidad Pty & Ors v. Seiko Epson Corporation & Anor”, an important patent case concerning the complex doctrinal issue of whether patent rights are exhausted on first sale to the market.
- Representing Aristocrat Technologies in a ‘bet-the-farm’ case for our client that upheld the patentability of Aristocrat’s patent portfolio.
- Acting for State Street Global Advisers in a high-profile case against law firm Maurice Blackburn, and 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, and the use of SSGA’s Fearless Girl trade mark and copyright in the statue.
Herbert Smith Freehills
With its integrated offering, Herbert Smith Freehills has recognised strengths across the IP space, providing clients with access to support, advise and representation in IP litigation, commercial transactions and trade mark portfolio management. Sue Gilchrist heads up the group from Sydney and is a skilled IP litigator across high-profile patent, copyright and trade mark disputes, both domestic and international. Shaun McVicar is also a name of note in Melbourne with significant expertise in patent validity and infringements in the pharmaceutical and life-science sectors. Other sector focuses include financial services, consumer goods, TMT, energy, mining and resources. Emma Iles was promoted to the partnership in May 2021, but Patrick Sands left the same month to join the team at K&L Gates.
Other key lawyers:
King & Wood Mallesons
King & Wood Mallesons has a full service IP offering, including litigation, IP transactions, and advisory work regarding trade mark, copyright and patent issues. The team boasts an impressive list of clients ranging from global companies and blue-chip Australian corporates to start-ups and entrepreneurs across a wide range of sectors. The practice also works alongside the firm's M&A and private equity groups to asset with IP asset transfers. Matthew Swinn is head of the IP and health sector team in Melbourne. Cate Nagy and Bill Ladas are key figures in the group's trade mark practice, and Kim O’Connell and Suzy Madar focus on patent mandates with particular strength in the life-sciences arena. Scott Bouvier's strengths lie in commercial dealings and disputes regarding IP, especially in the technology, food and agricultural segments. Katrina Rathie has now retired from the firm.
‘They are extremely knowledgeable on the law and propose creative solutions, and are exceedingly responsive to our inquiries for advice on various matters and will work with you to keep their fees and costs within the client’s budget.’
‘The team at KWM are very pro-active in their IP management which has assisted us to implement a far better IP protection program.’
‘King & Wood Mallesons has been a trusted legal service provider for over 10 years. They have an extremely broad range of expertise delivered through a large team to service our needs across a wide range of practice areas. They are intimately familiar with our organisation and provide clear, practical and helpful advice to assist us to achieve our business objectives.’
‘Very quick response times, good availability of partners but equally good at delegating work down to appropriate level to keep costs manageable. Clear, practical advice and not a problem to arrange out of hours calls to cope with time differences.’
‘Bill Ladas is amazing – knowledgeable, responsive, creative, dedicated and practical. We were in the middle of a contested Opposition when the pandemic hit and the client’s retail business was very badly impacted and Bill generously reduced his fees to see the case through to a favourable conclusion.’
‘I would specifically acknowledge Suzy Madar as a standout partner. Suzy is highly commercial, client-focused and responsive. She brings a strategic and commercial focus to her legal advice work. ’
‘Bill Ladas provided us with fantastic service. He is knowledgeable in the space and well connected. Advice is timely and commercial and an eye is often kept on minimising costs.’
‘Matthew Swinn has handled our business for many years. He is great knowledge not just about his core IP speciality but also more broadly in things like regulatory matters. He delivers clear, concise and practical advice and makes himself readily available. Very quick to resolve any issues such as billing queries.’
University of Sydney
eBay / PayPal
Procter & Gamble
Arnott’s / Campbell’s Soup Company
- Acting for Spirits International in a long-running and highly complex Australian Federal Court litigation concerning ownership of the “STOLICHNAYA” vodka trade mark.
- Successfully represented QAD in relation to a software licensing dispute with Shepparton Partners Collective Operations; Coca-Cola Amatil was a cross-respondent.
- Acting for One-Blue in relation to the infringement of standard essential patents (SEPs) by importers of Blu-Ray disc players.
The practice at Corrs Chambers Westgarth has a strong track record handling contentious and non-contentious IP mandates for leading clients in the pharmaceutical, life sciences, agriculture, technology and media sectors. The team's capabilities span across patents, trade marks, copyright and designs, including portfolio management. Melbourne-based Kate Hay sits at the head of the team and has substantial expertise handling both domestic and cross border litigation across a wide variety of sectors; and Eugenia Kolivos holds expertise in the protection, maintenance and commercialisation of proprietary knowledge. Odette Gourley, Grant Fisher, David Fixler and Stephen Stern are all strong in contentious IP matters.
Other key lawyers:
‘Corrs provides a comprehensive service across commercial, dispute resolution and trade mark registration in the IP space. The people across the IP team are all very commercial in their approach, solutions-focussed and easy to deal with.’
‘Corrs’ team is incredibly responsive, commercial and pragmatic. They know when to bring in other expertise and the value of other perspectives. Their decision making is sensible and client focused, and they do not lose sight of over arching commercial objectives, recommending reasonable, risk aligned compromises. ’
‘Kate Hay is singlehandedly the most impressive IP professional I have worked with, either as a colleague or as a client. She has an amazing ability to make her clients feel comfortable, to explain highly complex issues simply, to manage complex matters with absolute aplomb and is a terrific mentor to junior lawyers. Whenever I need someone to assist with an IP-related matter, Kate is the first person I will call.’
‘Kate Hay is an absolute delight to work with. She is clear, concise and client centric. She really spends time getting to know the client and their needs. David Fixler is another strong player.’
‘Stephen Stern is absolutely fantastic. He has a very rare mix of: excellent legal knowledge; practical commercial acumen; broad range of effective negotiating skills from friendly to fearsome; absolute passion for his craft; and genuine interest in and desire to put clients first.’
‘Great strength of team and collaboration. Fabulous partners (Grant Fisher, Kate Hay and David Fixler) who all work together and with their lawyers in a close knot and collaborative way.’
‘Grant Fisher and David Fixler and the teams working for them have a strong intellectual property practice, with a particular focus on patent litigation. I think they are leaders in their field in that area in Australia. The Sydney office of the firm also has a strong intellectual property practice, led by Odette Gourley. Corrs is one of the “go to” firms for intellectual property in Australia given the strength of their experience and reputation. In my experience, the standard of their legal work and representation is excellent, and they bring a good strategic focus to litigation on behalf of their clients. To my observation, they have good teams of talented junior lawyers working for them, and are effective in maintaning client relationships. They are also great to work with as counsel instructed by them.’
‘Grant Fisher has patent attorney as well as legal qualifications and brings a strong legal and technical focus to the matters he is involved in. He has particular experience in pharmaceutical patent litigation, in which he has worked for many years in a number of high profile cases at trial and appellate level. David Fixler also has significant experience in that area and is one of the prominent practitioners at the partner level in that field. One of the matters I have worked on for Grant and David recently is a significant piece of pharmaceutical patent litigation involving numerous counsel which was under preparation for several months but is presently on hold. The details are confidential, but if commenced, it would be one of the largest pharmaceutical patent cases in Australia, to my knowledge. They were both instrumental in formulating the strategy and preparing the legal basis and evidence for the case.’
Merck Sharp & Dohme Corp
Gucci (and Kering Group)
Consorzio Parmigiano Reggiano
Christian Dior Couture
Major League Baseball Properties
Southern Cross Austereo
Australian Geographic & Blue Ant Media
Martin & Pleasance
Nuance re Medical One
- Defending global pharmaceutical life sciences company Merck Sharp & Dohme in relation to patent invalidity and infringement proceedings brought by Pfizer concerning pneumococcal vaccines.
- Defending Martin & Pleasance in litigation brought by A Nelson & Co regarding the client’s natural remedy brands “RESCUE REMEDY” and “RESTQ”.
- Representing Zip Co in a dispute with another fintech company over the use of the Zip mark.
Servicing both domestic and international clients, Griffith Hack is a specialist IP law firm with offices in Melbourne, Sydney, Perth and Brisbane. The practice has capabilities across the entire spectrum of IP law, including contentious, non-contentious and commercial mandates involving trade marks, copyright, patents and designs. The group has undergone significant change of late, not only as a result of additions to the team, but also its merger with Watermark in May 2020, which involved integrating the new lawyers into the specialist departments of the group: life sciences, led by Amanda Stark (Melbourne); engineering and electrical, led by David Hughes; and the trademarks team led by Nicola Scheepers. Anne Makrigiorgos (Melbourne) remains a key player in the trade mark arena. Derek Baigent leads the overall IP law team and has a particular focus on technology-related IP and its commercialisation, as well as patent litigation. All lawyers mentioned are based in Sydney unless otherwise stated.
Other key lawyers:
‘Griffith Hack excels at both technical and legal knowledge and understanding. If they do not have the expertise in-house for a particular problem, they do not hesitate to involve a third party that does – this show of humility makes them trustworthy for all topics. Furthermore, their optimism and proactivity are at a level that is rare to see.’
‘Thanks to the strength, depth, and breadth of their services, Griffith Hack offers clients a clear pathway to success in protecting and exploiting high-value IP assets. They have time and again proven themselves the Australasian firm of choice for overseas IP practitioners seeking to navigate the Australasian IP systems. Indeed, many of my own firm’s UK and European clients have been blessed with enviable IP and commercial positions in Australasia thanks to the superb strategic focus and tactical legal instincts of Griffith Hack.’
‘Griffith Hack offer us tremendous support with expertise within our field. We are able to work closely with the team to develop a strategy that optimises our IP program.’
‘Griffith Hack has the resources and network to act globally, yet are still able to provide a high quality, individual service. In general, the firm has been great to deal with, and maintains a strong culture of professionalism and personalised service. In my dealings with Griffith Hack, everyone is polite, helpful and knowledgeable. I have dealt with other firms in past, and while they have been fine to deal with, Griffith Hack stands out as really taking an interest in what we do, and works extremely hard to getting the right outcome for us.’
‘Amanda Stark is an exceptional patent attorney with extensive expertise in managing biotech patent matters. I have been working with Amanda for several years now on a number of different patent matters, including one which was opposed – and it has been a pleasant journey even under the high stress of the dispute and complexity of one of the matters. Amanda is always, responsive, patient, professional, extremely knowledgeable and works hard to achieve the best outcome for her clients. Amanda is a pleasure to work with and provides outstanding client support and transparency around potential outcomes and costs. Her advice is concise, through and easy to understand. I would have no hesitation in recommending Amanda to anyone requiring patent/IP services. ’
‘Nicola Scheepers has been supportive, is aware of our needs and provides pragmatic advice for trade mark registration and provide excellent pragmatic legal advice.
‘Derek Baigent provides excellent pragmatic legal advise and is outstanding.’
‘Dr Malcolm Lyons: highly qualified with a PhD in genetics, he delivers high level comprehension of difficult scientific data in an efficient time-frame, with clear concise patent drafting, which led to the critical success of our company’s patent application, without which we would have been unable to build a pathway towards the development, manufacture and export of our drug globally. Malcolm is very pleasant to work with, responds promptly to inquiries, and has an efficient process.’
Allergan Inc / Allergan Australia
CSR Building Products
Sony Interactive Entertainment
Virgin Australia Airlines
University of Melbourne
University of Sydney
Battery World Australia
Security Communication Solutions International
Deswik Mining Consultants (Australia)
Department of Agriculture and Fisheries
Century Yuasa Batteries
Battery World Australia
Prudential Investment Company of Australia
Oaks Hotels & Resorts
- Acting for Puma in a Federal Court appeal of a trade mark opposition proceeding brought by Caterpillar.
- Acting on behalf of CSR Building Products in fiercely contested disputes relating to patents for modular formwork systems.
- Acting for Kymab in defending a third party requested re-examination of an AU granted patent relying on prior art documents considered in “Regeneron Pharmaceuticals, Inc. v Kymab Limited” .
Praised as 'strategic and commercial', Minter Ellison acts for national and international clients with regard to their IP portfolios. The team has a fully integrated practice providing full-service registration capabilities across patents and trade marks, in addition to its skills in handling mandates involving securing protection, commercial transactions and litigation concerning patents, trade marks and copyright. Dual qualified in Australia and the UK, Robert Cooper (Melbourne) heads the group and is particularly adept in the patent litigation space. With 'a deep knowledge of the media and entertainment industry', John Fairbairn is the name to note in Sydney.
Other key lawyers:
‘They are strategic and commercial, willing to think outside the box and collaborate to find new solutions. They are responsive, turn things around quickly, communicative and client services oriented. They are genuinely nice people to work with which is even more important in these trying times. ’
‘Deep technical knowledge about the issues, both with respect to legal matters, but also technical matters regarding the IP. Involvement of a patent attorney on the team was great.’
‘John Fairbairn is an expert advisor on copyright, trade mark and privacy matters and has a deep knowledge of the media and entertainment industry, including fair dealing, licensing, collecting societies and brand protection. He provide cost effective, strategic and timely advice.’
Commonwealth Government of Australia
University of New South Wales
Free TV Australia
Southern Cross Austereo
- Acting for Hytera Communications in a large multi-jurisdictional patent litigation.
- Acting for Selfcare Corporation in a full Federal Court appeal of a decision by that body in relation to a dispute over the word ‘Botox’ and alleged misleading and deceptive conduct’.
- Advising Astellas US in the opposition to an Australian patent application filed by Aragon Pharmaceuticals.
Norton Rose Fulbright has 'astounding expertise' and is well-positioned to service national, regional and global clients across the pharmaceutical, life sciences, energy, mining, commodities, consumer markets and financial services' areas. The group skilfully handles enforcement, protection, portfolio management, transactions and litigation concerning patents, trade marks, copyright and designs. The practice also houses franchising expertise. Frances Drummond leads the team from Sydney, where Jackie O’Brien ('one of the pre-eminent intellectual property lawyers in Australia'), who has considerable global IP expertise, is also situated.
‘NRF have been a long time trusted/key advisor to my company – they completely understand how our business works and the internal framework concerning our matter management – they always provide timely, sage advice with strong industry knowledge in a professional and cost conscious manner – they are a delight to work with. They have outstanding expertise, are solutions driven and very commercial and honest – they are worth every dollar we spend engaging them.’
‘They offer exceptional service across the breadth of intellectual property, from commercial and strategic advice, to registration advice and strategy and dispute resolution, especially contested litigation.’
‘The Senior Associates who have worked with Jackie over time have all been very capable and responsive. On our work the team has been cost conscious and has ensured that it understood the objectives of the project and the business needs of the client before providing advice. ’
‘Jackie O’Brien’s strengths include: very strong technical expertise; a determination to ensure that advice takes into account all relevant facts and circumstances, is tailored to its audience and is of practical assistance; very strong communication skills (written advice is clear and readable, oral explanations to non-lawyers are excellent and well received); ability and determination to deliver to a deadline, even when it is tight. ’
‘Ms Jackie O’Brien is one of the pre-eminent intellectual property lawyers in Australia. Her in-depth legal knowledge is matched by her commercial acumen and her deft skill in compiling the right team for each case to meet the client’s needs and to achieve the best possible outcome. In my opinion, Ms O’Brien has one of the highest reputations of any intellectual property lawyer in Australia, especially in, but not confined to, litigation. She is well-respected and highly regarded by her peers at the solicitor level, counsel (both juniors and senior counsel) and the judiciary. For the unique combination of attributes and skills that she has (and which I have only sought to summarise), I recommend her immediately and without hesitation for intellectual property matters. In my experience, Mr Cameron Harvey is a skilled, commercial negotiator with a sharp strategic approach to litigation and dispute resolution. Ms Drummond has remarkable knowledge of trade mark law, especially in the trade mark registration area, which can be deployed to achieve commercial outcomes and in parallel with litigation.’
Trip A Deal
Move 4 Life
Loan Market Group
- Advising Goodman Fielder in Federal Court proceedings against the world’s largest field pasta company, Rana, for trade mark infringement in relation to their of “La Famiglia”.
- Advising Quayeyewear on its global IP portfolio management, including the management of Quay’s global trade mark and brand portfolio, registered designs, enforcement, social media and retail website take downs, along with review of commercial arrangements with suppliers.
- Acting for Accolade Wines and its international related entities in respect of the management of its trade marks and designs.
The Sydney-based group at Addisons offers an integrated IP service with particular strength in advising consumer-facing businesses in Australia and internationally on their trademark needs - particularly in relation to the media and publishing, travel and tourism, technology, food and beverage, consumer goods and gaming sectors. A recent highlight saw the team act for Bega in a high-profile trade mark dispute. The practice is co-led by Donna Short and Karen Anne Hayne; Short is 'an expert in her field' and supports clients throughout the lifecycle of their IP assets, and Hayne is particularly experienced and adept at acting for international clients.
‘We are treated like a priority client by all team members we have had dealings with at the firm, despite our work typically being pro-bono. We are assisted in a timely and often fairly immediate manner. We are given thorough assistance, our matters are dealt with patiently and we are provided with expert and thorough advice. The covid environment has not affected the level of service we receive when we need it.’
‘Accessible expert advice.’
‘I have worked with Donna for several years and she is consistently professional and friendly in her dealings, along with being an expert in her field. She makes herself readily available at short notice to assist us, even though it is usually for pro-bono assistance. She provides confidence in taking steps forward through clear direction and sound advice provided in a timely manner. Martin O’Connor – while not our lawyer in the IP space, offers support as part of the firm that is consistent with our experience of working with Donna. Martin makes himself available at a moment’s notice and despite usually being pro-bono work we are treated like a priority client. His advice is also expert and reassuring. I would highly recommend both of them.’
‘Donna Short First class in providing efficient, user-friendly, prompt advice using her depth of experience.’
MoneyMe Financial Group
Formula One Group
Ampol Management Services
The Hollard Insurance Company
Australian Associated Press
Karst Peak Capital
State Asphalts NSW
Playboy Enterprises International
The Beauty Chef
TSG Interactive Services
Bankstown District Sports Club
Monash IVF Group
- Acted for Bega in relation to a dispute with Kraft-Heinz regarding a peanut butter product and use of various trade marks and trade dress by each company.
- Acted for AAP in respect of the sale of its AAP newswire business to a consortium of investors and philanthropists.
- Acted on behalf of Bega in its $534m acquisition of Lion & Diary Drinks.
Banki Haddock Fiora
Banki Haddock Fiora is a Sydney-based, commercial boutique law firm which has an IP offering that spans contentious and non-continuous mandates involving copyright, designs, patents and trade marks. In the copyright area, they team is particularly adept at acting for book, music and media publishers. Kate Haddock leads the copyright practice and has particular expertise in acting for copyright collecting societies, while Julie Robb leads the litigation group and has a strong international client base. Simon Kneebone now heads the trade marks practice following the retirement of former head Margaret Shearer. Former special counsel Marina Olsen was raised to the partnership in January 2021.
‘A boutique firm so you know who’s dealing with your matters. Good service at competitive prices.’
‘Excellent attention to detail. They develop a deep understanding of their clients situation and provide very considered and detailed advice.’
‘Firm is a good fit for the client organisation. Advice is clear, straightforward and solutions-based and therefore requires little translation for organisation’s internal clients.’
‘Great way of framing things in plain English and easily for someone to understand who doesn’t have a legal background.’
‘Alison McGinn is very responsive, alert, and astute.’
Schneider Electric (Australia)
Australian Broadcasting Corporation
Societe des Produits Nestle
Penguin Random House UK
Australian Community Media
Smartair Diffusion / Fusion HVAC
Costco Wholesale Corporation
Urban Purveyor Group
Ainsworth Game Technology
- Acted for Copyright Agency in a three-week hearing at the Copyright Tribunal against all 39 Australian universities in relation to the amount of equitable remuneration payable by the universities for material copied and communicated in reliance on the statutory licence.
- Acted for sport and leisure equipment manufacturer Sperling Enterprises in consumer law and passing-off proceedings commenced by Home Grown Brands (Australia), in the Federal Circuit Court of Australia in relation to the design for a ‘nipper’ trainer board.
- Acted for ATH in commercially significant Federal Court proceedings commenced against , a packaging manufacturer Arrow Plastics concerning a device relating to the detection of metabolites indicative of disease.
The practice at Bird & Bird benefits from the firm’s international reach to act for major domestic and global clients. In addition to handling patent infringement proceedings and brand management, the group also provides pro bono IP services. Practice head and highly-regarded litigator Jane Owen has expertise in the life science and higher education sectors, and their associated IP issues. Lynne Lewis is adept at handling IP-related consumer and regulatory law; and Sophie Dawson is a TMT specialist litigator and advises on copyright issues in this area.
‘Sophie Dawson is experienced and approachable. Very responsive to queries and happy to talk through issues. Access to international resources also appreciated.’
‘I’ve been very impressed with Lynne Lewis’s professionalism, expertise and more importantly true partnership and understanding of our business needs.’
‘Broad expertise across commercial IP issues and litigious/contentious issues, which is unusual in a smallish team. Keen to offer us competitive pricing ’
‘The team at Bird & Bird has adapted to our numerous requests in the world of intellectual property on an ongoing basis – no request is ever too obscure for the team to navigate! It has been fabulous to partner with the team, and we are appreciative not only of the pragmatic-level advice, but also the brilliant training offered to.’
‘The people are the difference. With the team at Bird & Bird you have trust in their ability as well as honest and transparent communication.’
‘A great understanding of the industry I work in makes a difference to the advice I receive. Lynne Lewis is focused on getting the best outcome for my company.’
GlaxoSmithKline Consumer Healthcare Australia
Brien Holden Vision Institute
Freedom Foods Group
Rakman / Trafalgar Group
Take-Two Interactive / Rock Star Games
Nine Network Australia
Ascott International Management (2001)
KPMG Australia IP Holdings
The Wonderful Company
University of New South Wales
Vodafone Hutchinson Australia
Australian Literacy & Numeracy Foundation
Internet Services Australia 1
Body Fit Training Company
- Advising 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 Jubilant Generics in urgent Federal Court proceedings against Arrotex, Arrow Pharmaceuticals Generic Partners.
- Representing Boart Longyear in a patent infringement/revocation claim brought against it and its subsidiary Globaltech by Australian Mud Company in relation to downhole core orientation equipment used in the mining industry.
Davies Collison Cave
The IP team at Davies Collison Cave has key areas of strength in patent and trade mark litigation where the group has had numerous successes. In addition to contentious matters, the team also handles commercialisation, brand protection and registration, and is particularly active in the pharmaceutical, technology, media and telecoms sectors for a roster that includes both Australian and overseas clients. Michael Wolnizer is group managing principal of the firm, David Webber is head of the patents practice, Adam Sears leads the trade mark group, and Chris Jordan is also a key name to note. All lawyers mentioned are based in Melbourne.
Other key lawyers:
‘High quality work, flexible, very knowledgeable across all technology areas, great at aligning IP strategy with commercial goals.’
‘The lawyers we work with at DCC are exceptional patent attorneys with extensive expertise in managing biotech patent matters. I have been working with several DCC lawyers for several years now on a number of different patent matters. Sam Mikan, Alex Tzanidis, Sally Davis and Sally Foreman. All are always, responsive, patient, professional, extremely knowledgeable and work hard to achieve the best outcome for their clients. All are a pleasure to work with and provide outstanding client support and transparency around potential outcomes and costs.’
‘All DCC attorney’s I work with provide concise, through and easy to understand advice. I would have no hesitation in recommending any of these attorneys to anyone requiring patent/IP services.’
‘My main contact at DCC is Stuart Green in Sydney. I’ve worked with Stuart for several years on various trade mark matters and, in fact, followed him with work/clients from his previous firm which is a sign of the confidence I have in him. Stuart is super responsive and can be relied upon to provide clear and pragmatic advice. He’s also a delight to work with on a personal level; erudite and fun.’
Consortium for Common Food Names
State of Victoria
The University of Queensland
Monash University Institute of Pharmaceutical Sciences
- Assisted the Consortium to prepare and file submissions in connection with the EU-AU Free Trade Agreement negotiations, specifically in relation to the protection of European PDOs and GIs in Australia.
- Acted on behalf of Bayer in an infringement suit against a number of generic companies asserting a patent covering Bayer’s oral high-selling contraceptive products Yasmin and Yaz and in defending the relevant Bayer patent covering these products.
- Assisted Imugene on the drafting and filing of all the patents arising from its with the Medical University of Vienna; and the provision of strategic advice on the IP portfolios licensed from Ohio State University.
DLA Piper‘s IP practice spans across Sydney and Melbourne and forms part of the firm’s global network of offices. The Australian team provides clients with a range of services, from asset and portfolio management, commercialisation and enforcement strategies to contentious, non-contentious and transactional mandates. Life sciences and pharmaceutical sectors are a particular focus of the practice. Nicholas Tyacke has ‘strong strategic vision and amazing attention to detail’ and is noted for his patent litigation abilities in the life-sciences sector.
‘It has a highly skilled, well co-ordinated and extremely committed team.’
‘Innovative and creative. Think wide. Very compliant high professional level seamless collaborative work.’
‘Greg Bodulovic provides an exceptional level of service and advice. He is commercially astute and measured, and is invaluable in any IP dispute or transaction.’
‘Nick Tyacke has strong strategic vision and amazing attention to detail and an unshakeable commitment to achieving the best possible outcome for his clients.’
‘Nicholas Tyacke has outstanding expertise in patent law in Australia and rest of the world. He takes care of the entire scope of client’s interests not just the limited IP angle Very fast to respond and most reliable – creative, out-of-the-box thinking while maintaining the highest professional ethics.’
Gadens Lawyers advises clients -both domestic start-ups and international corporations- on protecting, managing and commercialising their IP assets throughout their lifecycles, as well as enforcing rights and completing commercial transactions. On the contentious side, Glenn McGowan QC is a particular name of note, having previously been at the Victoria Bar. Sector focuses of the practice include technology, retail, energy, and sports and leisure. David Smith sits at the helm of the practice an maintains a strong focus on sales and marketing-related IP matters.
‘The trade mark team has strengthened substantially over the past five years. The lateral recruitment of Kerry Awerbuch and Dudley Kneller, and the internal development of solicitors such as Madeleine McMaster, now means that Gaden offers a comprehensive trade mark filing, opposition, and litigation practice. The team at Gadens acts for many of Australia’s leading brands, in a range of litigation and opposition proceedings, including some large brand owners who are regularly involved in IP disputes. As a result, the team has developed deep expertise in assisting their clients to protect and enforce their trade mark rights, and to agilely and tactically respond to infringement proceedings. Moreover, Kerry, Dudley and Madeleine, are diligent in the extreme, working as hard and as often as necessary to secure the best result for their clients. Notably, they do so with enthusiasm and without unnecessary legalism, adopting a pragmatic approach.’
‘Gadens has an extremely strong IP team which provides excellent technical legal advice – whilst also being pragmatic and commercial where required. Gadens is always the first firm to release news alerts when changes in the law occur, and their ‘one pager’ handouts on trade promotions are a fantastic resource.’
‘People – all the team members we have worked with have been a pleasure to work with. They feel like an extension of our internal team, readily available for any urgent queries or matters which require a quick turnaround. They have our best interest at heart, presenting a wholesome strategical approach in our matters whilst thinking through our firm’s long term interest and direction.’
‘Excellent service, nothing is too much trouble, easy to understand advice, commercially savvy, attentive to client needs. Very good value for money compared to other firms.’
‘Hazel McDwyer. Hazel is technically capable, very personable and understands our business and the market in which we operate. Hazel is accessible and very responsive, which is important. You’re in safe hands with Hazel.’
‘Adam Walker and Alana Long stand out as they genuinely feel like an extension of our internal team. They understand our firm’s values and cause, presenting strategies which have our best interest at heart. They’re readily available when urgent matters require attention and are problem solvers through challenging situations.’
‘David Smith is my main point of contact at Gadens, and is highly professional and approachable. David is always available to discuss any legal issues that may arise, and his advice is always extremely prompt. David also has a great team supporting him, so I know that we can always rely on Gadens to steer us in the right direction.’
‘Kerry Awerbuch is an experienced trade mark litigator. She has acted (and continues to act) for numerous high-profile clients, including Cotton On, PopSockets, and Elite Eleven. Kerry is easy to deal with, focused on generating exceptional client outcomes, tactically astute, and a true expert in trade mark law. She is entrusted by a number of Australia’s most famous brand owners to protect their trade mark portfolios and to navigate and tactically respond to allegations of trade mark infringement. She does so in a cost-effective manner, with clear communication and tactically astute advice, consistently achieving “beyond expectation” outcomes, whilst engendering substantial client loyalty.’
Vida Glow Hold
Adairs Retail Group
World Expeditions Travel Group
Elite Eleven Sporting
The Citadel Group
- Acting for Baiada on a range of trade mark matters and with respect to its overall trade mark strategy.
- Acting for PopSockets in relation to its Australian trade mark applications, as well as assisting the client achieve registration of a number of key trade marks in Australia over the past year.
- Advised 3P Learning in relation to its merger with Blake eLearning.
The highly competent IP team at global firm Jones Day is based in Melbourne and Sydney with Lisa Taliadoros heading the practice. Patent litigation is a particular specialism of the team, as are trade mark-related mandates, with most of the team having scientific qualifications, benefitting its many clients in the life sciences, pharmaceutical and biotechnology arenas. Patent litigator Anthony Muratore is also of note in these areas as well as mechanical engineering and information technology.
Other key lawyers:
‘Jones Day is a major international law firm with a strong reputation, including in relation to major intellectual property litigation. In Australia, their Sydney and Melbourne offices have a very prominent intellectual property practice, led by Lisa Taliadoros (Melbourne) and Anthony Muratore (Sydney). Among other areas, they are prominent in pharmaceutical and life sciences patent litigation and have conducted a number of recent major cases in that area. I have had experience working with and against them, as a barrister briefed in such cases, and their matters are always very well run and their work is of a consistently high standard. They are among the leaders in this area in Australia.’
‘Lisa Taliadoris (partner, Melbourne) and Anthony Muratore (Sydney) are the leaders of Jones Day’s intellectual property practice in Australia. They have an excellent grasp of the law in this area, particularly in relation to patent litigation in my experience. They also have a detailed knowledge of the technical aspects and regulatory regimes that are relevant to pharmaceutical and life-sciences’ patent litigation. To my observation, they always take steps to familiarise themselves with the technical and scientific aspects of matters in which they are involved, as well as the legal aspects. They think strategically. Their matters are always well run and the evidence well prepared. They have been involved in numerous prominent and significant intellectual property litigation matters in Australia over the years, both at first instance and on appeal, including in the High Court (Australia’s highest Court). They provide top tier service to their clients.’
‘Dedication, exceptional knowledge of the law, sophisticated understanding of tactics and very strong science in life sciences.’
‘Lisa Taliadoris and Anthony Muratore and dedicated, quick thinking, strategic and a deep understanding of the law.’
Bristol Myers Squibb
PRP Diagnostic Imaging
K&L Gates‘s IP offering reaches across four continents and the team is adept at conducting portfolio management, prosecutions and litigation. With expertise in the fashion, sport, technology, property, construction and life-science sectors, the team is increasingly advising and acting for international clients. Jonathan Feder leads the global IP practice with particular expertise in enforcing trade marks in the fashion industry both in Australia and overseas. Chris Round is skilled in IP registration and litigation; and experienced patent litigator Patrick Sands joined the team from Herbert Smith Freehills in May 2021, bolstering the group’s patent offering.
‘The K&L Gates IP team has long been one of the leading IP practices in Melbourne, particularly in copyright and trade mark matters. They are fierce in the pursuit of their clients’ interests.’
‘The partners specialise in the sectors they target and provide value add discussions on market movements, status of the industry and initiatives implemented by similar organisations. This generates new work for the firm and provides me insight into the sector. The service provided is efficient and accurate.’
‘Jonathan Feder is exceptional in his advice. He is direct and commercial. His team innovates processes so they have clear processes and procedures. They are organised and can operate with little input/direction from me. I see and value them as part of my team.’
‘Patrick Sands, partner, I’ve worked with for many years. He is an outstanding lawyer, technically excellent, very client-focussed and commercial. A pleasure to work with.’
‘Chris Round has a very strong practice in trade marks and copyright. He is an astute practitioner, with an unstinting commitment to achieving the right outcome for his clients.’
Australian Football League
Deckers Outdoor Corporation
Directed Electronics Australia
First Sentier Investors
Otsuka America Pharmaceutical
Seafolly (L Catterton)
- Advised A2B Australia in litigation against Lime scooters and bicycles.
- Advised Deckers Outdoor, the owner of the UGG trade marks globally, in relation to the opposition of a number of Australian trade marks featuring the word UGG.
- Advising the AFL on its global brand portfolio (since 2006) including in relation to securing registration of trade marks and playing uniforms as registered designs for the 2021 season.
With offices in Melbourne, Sydney and Canberra, Maddocks has particular expertise in life science and pharmaceuticals-focused IP practice, with experience across trade marks, patents, copyright and designs. The team handles a wide range of IP services, from commercialisation, licensing, franchising and advertising, through to litigation. Sydney-based Brendan Coady leads the group and has recognised expertise in the telecoms and technology sector. Also in Sydney, Ben Miller joined the firm in 2018 having previously led the national life-sciences team at Ashurst; his bio-tech, life sciences and pharmaceutical patent litigation expertise has notably broadened the practice group’s offering.
‘The practice has a highly commercial and strategic focus, which understands the needs and context of the clients business and the risks and opportunities that arise from the specific client business and operations, facilitating the integration of that information into transactional advice. The practice focuses on providing a balanced view as to what the opposing party may be seeking, not just the client’s needs and wants, which supports the negotiations of transactions.’
‘The intellectual property team at Maddocks is exceptional. They deliver a top tier service at a mid-tier rate. They work well together as a team and are excited about the matters that they work on. They have great depth of knowledge and ensure that clients are kept constantly in the loop. They deliver on all their commitments.’
‘Ben Miller has an exceptional knowledge of IP law, both within Australia and internationally, and has extensive experience both in transactional negotiations, implementation and the management of IP disputes. Ben Miller has a highly commercial and strategic focus, which understands the needs and context of the clients business and the risks and opportunities that arise from the specific client business and operations, and facilitates integration of that information into transactional advice. Ben focuses on providing a balanced view as to what the opposing party may be seeking, not just the client’s needs and wants, which supports the negotiations of transactions. Ben is friendly, approachable and a delight to work with. ’
‘Ben Miller is one of the those rare individuals who can explain an incredibly complex concept in a simple understandable way. He is an outstanding communicator and a well-rounded person who I really enjoy working with. Ben is highly strategic and ensures that every step of a matter is considered and planned. There are always surprises in litigation but Ben is very good at anticipating issues and ensuring that he has commercial solutions.
‘I dealt with Ben Miller who is a very experienced practitioner but practical and has a good “can-do” attitude.’
Chartered Accountants Australia New Zealand
Charlie Teo Foundation
Children’s Medical Research Institute
Garvan Institute of Medical Research
Samsung Electronics Australia
St Vincent’s Hospital Sydney
Sydney Airport Corporation
Australian Nuclear Science & Technology Organisation
- Acting for Alkem’s Australian subsidiary, Pharmacor, in Australian Federal Court proceedings brought by Novartis for alleged infringement and invalidity of four patents concerning certain formulations and uses of fingolimod, sold by Novartis as its blockbuster multiple sclerosis drug “GILENYA”.
- Acting for Veraseal in Australian Federal Court patent-infringement proceedings against Coca-Cola Amatil, relating to a patent concerning sealing technology for closures used by Coca Cola in products including Mount Franklin, Powerade, Barista Bros, Pump and Glaceau Vitaminwater.
- Managing the worldwide trade mark portfolio of Adstream Holdings, which involves searching, filing, registering and maintaining the company’s trade marks across the globe, including Australia, Europe, North America and South East Asia.
The commercially-focused McCullough Robertson IP team operates from offices in Brisbane and Sydney, with trade mark prosecution, advice, enforcement and portfolio management being at the centre of the practice. The team has particular strengths in the mining, travel, life sciences and technology sectors, servicing Australian-based clients as well as international companies. The team is led by Belinda Breakspear, who is active in a range of IP ownership, enforcement and protection matters. Alex Hutchens, head of the firm’s TMT group, is also a notable IP practitioner.
‘I have worked with Belinda and her team for a number of years and know them from when I was at previous firms. For the reasons outlined below (commercial focus, cost-effectiveness, strategy expertise and depth of IP knowledge), these are all factors in why I chose to work with McCullough Robertson. In particular, they offer excellent value for money, responsive and not afraid to make a recommendation. You receive considered, tailored advice that will include a recommendation. This is not always something that is received from other firms around the world.’
‘There are no ‘airs and graces’ with McCulloch Robertson. They are very good at what they do but their lawyers are professional, collegiate, approachable and very easy to work worth. The IP practice offers excellent value for money and it is clear that they Belinda and her team place a significant emphasis on delivering cost-effective and commercially focused advice. With a rapid response time and succinct, on-point advice, they are a pleasure to work with.
‘Belinda (and her team) are incredibly quick to respond and I have found any advice they have provided to us to be extremely commercial in the outlook and with a focus on the most cost-effective strategy. The ease of dealing with Belinda and her team is such that you almost feel that they are in the office alongside you – they take the time to know what our clients need, the manner and scope of the advice.’
I hold Belinda, John and the McCullough Robertson IP team in such regard that I have referred other contacts from around the world to them when I am asked if I can recommend local counsel in Australia.’
Flight Centre Travel Group
Ms Claire Dunne vs Mondadori International
Russell Mineral Equipment
Cerebral Palsy Alliance
Spread across the firm's offices in Melbourne, Sydney and Adelaide, Piper Alderman's practice has strengths in conducting a range of IP work including patents, trade marks, copyright and designs for public and private companies, government agencies, research organisations and charities based in Australia and internationally. Life sciences, food and beverages, and technology are core focus areas of the team. Tim Clark is head of the IP practice and leads the Melbourne team; he primiarly undertakes transactional and non-contentious work in the telecoms and life-science sectors. Tim O’Callaghan leads the team from the Adelaide office and has expertise in portfolio management and protection; he also supports clients in the defence sector. Sarah Johnson left the firm in June 2021 and Eilish Gigney has been promoted to special counsel.
Other key lawyers:
ASC Ship Building
Bionics Institute of Australia
CME Blasting & Mining Equipment
Shahin Family Trust
- Advising Fantech with regard to its intellectual property matters, including the protection, exploitation and enforcement of its IP assets and in dealing with third party IP rights
- Acting for Redarc in a patent dispute involving an alleged breach of a Federal Court injunction by the respondent.
- Defending proceedings brought by the plaintiff alleging detinue and conversion of military fighter jet sensor pods by Airspeed.
Sydney-based specialist IP firm Simpsons Solicitors is active in trade mark portfolio management, transactional mandates and advisory work for its impressive roster of music, publishing and screen-content clients. Copyright and trade mark litigation are also particular strengths of the team; notable recent successes for the team include the Universal Music v Clive Palmer case. Adam Moxon Simpson heads up the copyright and trade mark litigation practice; with expertise in the media industry, Jules Munro leads the music industry group with an impressive list of clients; and Mark Bamford heads up the film and TV finance and production practice.
Other key lawyers:
‘Specialist intellectual property lawyers.’
‘Simpsons offer sound and balanced advice and recommendations, and they handle all matters with great diligence, professionalism, and skill. Of the matters that they have handled, we have had an almost 100% success rate in achieving either victory or a favourable outcome.’
‘Their team is diverse in their skill-sets and fields, strong and effective, and they have represented excellent value for money over our long history together. Additionally, all members of their team are personable and a pleasure to deal with.’
‘I have found most other legal firms in the area of intellectual property as it relates to the music industry to either have a lack of rigour and firepower at one end of the spectrum, or at the other end, to have too much of a corporate focus to grasp the realities of our industry. Simpsons gets the balance right. They have the feel of a boutique company – they are vibrant, and a pleasure to deal with, whilst also providing incredible service.’
‘Access to specialist lawyers and strategic advice.’
‘For commercial, copyright and transactional issues, we work with Jules Munro. For litigation matters we work with Adam Simpson. Jules Munro stands out for his industry knowledge and pragmatism. Adam Simpson is very experienced with copyright-related litigation, and is a calm and expert hand in contentious matters. Adam and Jules are intelligent, knowledgeable, honest, likeable, polite and charming, and act with integrity. They have a strong work ethic, and are extremely dedicated to their jobs and providing exceptional service and advice. They have assembled an excellent team.’
‘Adam Simpson is an outstanding lawyer which strong personal and relationship skills, the ability to relate to a client and their needs to help create an environment of transparency and clear understanding. Adam is also dedicated and has attention to detail.’
Universal Music Publishing / Songs of Universal
Maurice Blackburn Lawyers
Kobalt Music Publishing
National Gallery of Australia
- Successfully represented Universal Music Publishing and Songs of Universal in a copyright infringement claim against Clive Palmer, in relation to his unauthorised use of the Twisted Sister hit “We’re Not Gonna Take It” for his 2019 election campaign.
- Defended Maurice Blackburn Lawyers successfully against all claims brought by US asset manager State Street Global Advisors in relation to its purchase and display of a replica of the Fearless Girl statue in Melbourne.
- Representing Netflix in Copyright Tribunal proceedings in relation to a licence scheme for the use of music in streaming services operating in Australia.
Spruson & Ferguson Lawyers
Specialist IP firm Spruson & Ferguson Lawyers was substantially boosted in November 2021 as a result of its merger with Shelston IP. Key lawyers who are now part of the group include Chris Bevitt, Allira Hudson-Gofers and Gareth Dixon who bring a wealth of IP protection expertise and ‘never fail to meet or exceed the expectations‘ of clients. The team handles a wide range of IP-related work, primarily involving trade marks and patents, for both local and larger international clients. In particular, the group is skilled at pursuing and defending proceedings for infringement, invalidity, passing off and misleading and deceptive conduct. Khajaque Kortian is the head of the group and is active in digital technology-related IP matters and disputes. Sylvie Tso, who has US patent law expertise, and Francesca Colubriale, who counts trade mark-related matters as her specialism, are also notable members of the team. Peter Hallett left the firm in December 2020 to move in house. All lawyers mentioned are based in Sydney.
Other key lawyers:
McDonald’s Australia / McD Asia Pacific
- Acting for Ceramiche Caesar in an appeal of three related proceedings (two trade mark opposition appeals and one Trade Marks Register rectification proceeding), and then on appeal to the full Federal Court of Australia regarding Caesarstone’s attempt to expand its use of the “CAESARSTONE” trade mark (used for benchtops to flooring and wall cladding) in the face of the client’s prior rights for “CAESAR” for tiles.
- Acting for McDonald’s Australia and McD Asia Pacific in proceedings for trade mark infringement brought by the client for infringement of registered trade marks “BIG MAC” and “MEGA MAC” as well as added claims of misleading and deceptive comparative advertising.
- Acting on behalf of Firstmac in relation to trade mark infringement claims regarding use of the trade mark “ZIP” in relation to financial loans and related financial services.
Thomson Geer handles the protection, commercialisation and enforcement of the IP brands of Australian and global clients, focusing particularly on trade marks and patents. The practice group has undergone considerable expansion with the September 2020 addition of Andrew Chalet in Melbourne, special counsel Peytee Grusche in Perth and their team from Russell Kennedy, with their particular strength in life sciences and technology complementing the existing strengths of the team in these areas. Ben Coogan is also a key lawyer with considerable experience across a wide array of IP disputes.
Other key lawyers:
- Acting for Dr August Wolff in a trade mark dispute involving the use of registered trade mark “VAGISIL” by US company Combe International and the application by our client, a German company, wishing to enter the Australian market and register its mark “VAGISAN”.
- Managing the extensive trade mark portfolio of multinational healthcare and FMCG group, Reckitt, throughout Australia and the Pacific.
- Acting for Konami in patent litigation at Australia’s Federal Court against Aristocrat Technologies Australia related to electronic gaming machine technology.
Arnold Bloch Leibler
Arnold Bloch Leibler advises local and cross-border clients in the retail, technology, manufacturing, life sciences and telecommunications' sectors on how to protect, manage and develop their IP assets, as well as representing them in contentious matters. Zaven Mardirossian heads up the practice and is adept at third party infringement proceedings. Senior associate Gabriel Sakkal is also a notable member of the team. Both are based in Melbourne.
Other key lawyers:
‘The ABL IP team is not, unlike in many other firms, an exclusive IP team. Rather, the IP litigators at ABL have broader practices, also acting in general commercial and competition disputes. As a result, the ABL IP team has a broader experience, and is able to “think outside the IP box” and to leverage its experience in other practice areas for the benefit of its clients in IP disputes.’
‘Matthew Lees is exceptionally intelligent and works exceptionally hard. Matthew does not let sleep get in the way of delivering carefully considered and insightful legal advice. ’
‘This practice is unique, in my experience, by reason of the high degree of partner level attention that clients receive. The firm has many partners and associates who combine strong technical legal skills with sound practical and commercial nous.’
‘Zaven Mardirossian in particular never loses sight of the clients’ ultimate commercial objectives and is imaginative in seeking to achieve speedy commercial resolutions to complex disputes.’
‘The individual that I have worked most with, Matthew Lees, stands out by reason of his excellent technical legal skills, his extraordinary work ethic and attention to detail and his first rate personal communication skills.’
Retail Food Group
Jalna Dairy Foods
BetEasy (formerly CrownBet) and TSG
- Acted for New Zealand dairy giant, Fonterra, in a large trade mark licence dispute in the Supreme Court of Victoria against Bega Cheese.
- Acting for Retail Food Group in relation to a trade mark dispute against major American retail chain, Cinnabon.
- Acting for Smart Badge in relation to the development and registration of various intellectual property rights, including patents and trade marks.
Dentons is adept at acting for major Australian and international clients in the retail, hotel and leisure sectors, advising them on a wide range of IP matters, from their licensing, marketing and advertising needs to the enforcement of trade marks and brand protection. Patent infringement, protection and commercialisation is also a core focus of the team. Registered trade mark attorney Joy Atacador (Melbourne) leads the team, which was strengthened recently with the April 2021 arrival of competition and economic regulation partner Donald Robertson from Herbert Smith Freehills.
‘Dentons has provided me with outstanding service through its knowledge of all stages of the intellectual property process as well as in-depth understanding of my subject area. The team’s strengths include its clear communication at all times of the patenting process, its full understanding of my sector, its relevant and timely advice, and its ability to adapt its service to my personal needs. We always work collaboratively on all my patent submissions. Its key strength is the depth of its knowledge of the whole process of the patenting process as well as Licensing Agreements and IP sale processes. Its billing process is prompt and clearly laid out. I have worked with several other practices and Dentons is outstanding in its field.’
‘I have worked exclusively with Dr Andrew Baker. Andrew exhibits a genuine concern for the success of my intellectual property needs and goals. He has an in depth understanding and knowledge of my sector and is always willing to share thoughts, ideas, his experience and comments on the best way to successfully lodge, respond to reviewers concerns and ultimately to successfully get my patents granted. Andrews communication skills are very high. Andrew always seems to make himself available to me whenever I need to consult with him. Andrew is very easy to work with. He likes to work collaboratively to assure the very best outcome. Andrew has always responded quickly to any emails or phone calls I have sent/made to him.’
Rapid Response Revival
Dye & Durham
Firbank Grammar School
Avis Budget Group
- Acting for Rapid Response Revival, a privately held company in the late stages of commercialising its patented automatic, external mini-defibrillator.
- Assisted Dye & Durham with its purchase of SAI Global’s property division, which will allow the client to create a platform in Australia that is more highly aligned with Dye & Durham’s existing product lines in Canada and the United Kingdom.
- Assisted Argenta with multiple deals including in relation to the acquisition of Argenta (parent company Tomlinson Group) by KKR (one of the world’s largest private equity companies).
Mills Oakley is active in the patent and trade mark litigation space as well as brand protection and portfolio management. Teresa Nicoletti (Sydney) leads the IP, health, and life sciences practice group, and James Lawrence (Sydney) and Malcolm McBratney (Brisbane) are also notable team members.
Sparke Helmore Lawyers advises on IP matters involving trade marks, copyright, patents, designs and trade secrets, with particular focuses on brand protection, breach of confidence, commercialisation, enforcement and domain name disputes for both domestic and international clients, including government agencies and local authorities. The practice also undertakes contentious mandates. Shannon Platt is group head for IP and the corporate and commercial practice. The practice group has also undergone some changes, with Dalvin Chien's March 2021 arrival from Norton Rose Fulbright following on from Richard Chew's December 2020 move to K&L Gates.
‘Have worked with them for many years, and all of their operations are excellent.’
‘Shannon Platt and her team are all very excellent, qualified and knowledgeable.’
Allnex Resins Australia / Allnex Netherlands
APT Advanced Polymer Technology
Australia’s Oyster Coast
Civic Transport Services
Clarence Valley Anglican School Council
Community First Credit Union
Council of the City of Shellharbour
Electrolux Home Products
James Cumming & Sons
Liquor Marketing Group
Liverpool City Council
Luk Fook Holdings
Maggie Sottero Designs
Meals on Wheels
Millennium & Copthorne International
National Disability Insurance Scheme (NDIS) Launch Transition Agency
NSW Government (Department of Communities and Justice)
Parramatta City Council
Regional Development Australia
Rural and Remote Medical Services
Share the Dignity
Tomkins Commercial & Industrial Builders
Tsingtao Brewery Company
University of Technology Sydney
Yarra Valley Water Corporation
- Acted for Community First Credit Union against Bendigo & Adelaide Bank in two parallel Federal Court proceedings concerning the monopoly asserted by Bendigo Bank in what CFCU considers to be descriptive words “COMMUNITY BANK”.
- Acted for Little Wings, a not-for-profit organisation which applied to register its “LITTLE WINGS” trade mark in Australia.
- Acted for Shellharbour City Council to successfully oppose trade mark applications by Bright Eyes Events for “WINGS OVER ILLAWARRA”, an annual aviation event hosted by Council.