Allens‘ group is particularly prolific in the life sciences sector, acting for major global healthcare players in patent infringement and revocation proceedings before the Federal Court of Australia. The group also regularly manages trade mark portfolios for blue-chip clients from a myriad of sectors. Caroline Ryan, who joined the firm’s sizeable Melbourne IP team from King & Wood Mallesons in July 2021, is praised for being ‘highly skilled in IP, and responsive and practical in her advice.’ Sydney-based practice head Miriam Stiel is a key port of call for clients seeking strategic brand protection and advertising advice. Melbourne-based Richard Hamer is ‘well known for his expertise in the patents field’, specialising most keenly in pharmaceutical sector patent litigation. Other key names to note include the Melbourne-based managing associate Nadia Diaz, who has significant experience in both contentious and non-contentious intellectual property and franchising matters. Elsewhere, Tim Golder has a strong litigious practice within intellectual property and Andrew Wiseman is active in the life sciences sector, emblematic of the group as a whole.
Intellectual property in Australia
Allens
Practice head(s):
Miriam Stiel
Other key lawyers:
Robert Munro; Caroline Ryan; Richard Hamer; Andrew Wiseman; Emma Gorrie; Tim Golder; Nadia Diaz; Rob Vienet
Testimonials
‘We chose Allens for a major IP project due to the reputation of Miriam Stiel and her team, the size of the Allens IP practice, and the ability to resource the team adequately to meet our very tight timeframes. We have been very impressed with the quality of advice, creative thought and ability to meet deadlines.’
‘Attention to detail, clarity of information, follow up, consistency. Andrew Wiseman has been excellent.’
‘This practice is highly competent and works well as a team.’
Key clients
Airbnb Inc
Anheuser-Busch (AB InBev)
Australian News Channel (ANC)
Bunuba Cultural Conservation Institute
BlueScope
Co-operative for Aborigines
Cytec Industries (Cytec)
Football Australia
Ford Motor Company of Australia
Infosys Technologies Limited
National Rugby League
News Corporation
Next Level Elevators
Organon Pharma
Pro-Pac Packaging (Aust)
Pty Limited (Pro-Pac)
Redbubble Limited
Schneider Electric
Sony Music Publishing
Stratus Medical LLC
The NOCO Company
Work highlights
- Acted for Airbnb in Australia and New Zealand with respect to all aspects of trade mark portfolio management, branding strategy, marketing and IP enforcement, including Australian Consumer Law matters.
Ashurst
Working across offices in Melbourne and Sydney, the multi-jurisdictional practice at Ashurst is lauded by clients for offering a ‘depth of expertise within the team, and displaying good collaboration with other practice areas to provide seamless service.’ Its dedicated IP team ‘has an excellent reputation across the breadth and depth of intellectual property’, able to handle the full gamut of advisory, commercial, portfolio protection and IP enforcement issues. Group head Anita Cade has a broad IP practice which spans contentious and non-contentious matters, with recent engagements seeing her advising consumer goods multinationals on trade mark infringement proceedings brought by heavyweight conglomerates. Lisa Ritson also frequently handles litigation proceedings, appearing in trade mark oppositions, as well as contentious marketing and consumer protection matters. Stuart D’Aloisio concentrates on property litigation and transactional work.
Practice head(s):
Anita Cade
Other key lawyers:
Kellech Smith; Nina Fitzgerald, Joanna Lawrence, Lisa Ritson
Testimonials
‘Highly responsive and demonstrates great client alignment. Takes the time to understand our strategic drivers.’
‘Anita Cade makes you feel like you’re her only client and remains highly engaged in strategic matters.’
‘Good access to partner; depth of expertise within the team, and good collaboration with other practice areas to provide a seamless service’
Key clients
AGL Energy
AIA Australia
AliBaba Group
Ant Group
ANZ Bank
Apotex
auDA (Australian Domain Name Authority)
Australia Post
Aurizon Holdings Limited
Baby Bunting
BHP Group
Boehringer Ingelheim Animal Health
Bubs Australia
Bureau of Meteorology (BOM)
Burger King Corporation
Cathay Pacific Airways
Candy Digital
Combe
Commercial Radio Australia
Henkel
Pharmacor
Work highlights
- Acted for Combe in its successful opposition to the registration of the trade mark VAGISAN by Dr. August Wolff in Australia.
- Acting for Pharmacor in proceedings against Biogen before the Federal Court of Australia relating to Pharmacor’s generic pharmaceutical dimethyl fumarate products.
- Acting for Henkel in proceedings brought by Reckitt Benckiser relating to Henkel’s launch of its Somat dishwashing products in the Australian market.
Baker McKenzie
The team at Baker McKenzie handles a range of contentious IP matters, from copyright litigation to high-profile trade mark and large-scale patent proceedings – a particular area of strength for Helen Macpherson. The team is led by Andrew Stewart, an ‘excellent strategic thinker’ who regularly advises clients on audio and visual streaming copyright mandates. Elisabeth White is also active in contentious proceedings, focusing chiefly on IP protection and enforcement matters. Byron Angelopulo, who spearheads the firm’s Australian trade mark offering, is a prolific advisor in commercial and transactional IP work. Chantal Savage is also a key name to note at associate level.
Practice head(s):
Andrew Stewart
Other key lawyers:
Elisabeth White; Jonathan Flintoft; Helen Mcpherson; Byron Angelopulo; Victoria Bell, Chantal Savage
Testimonials
‘The team at Baker McKenzie is very competent. They are capable of handling any size and type of matter, and they are very easy to work with.’
‘The partners are sensible and competent. Elisabeth White is very measured and pragmatic. Andrew Stewart is an excellent strategic thinker.’
‘Very detail-oriented and responsive to clients.’
Key clients
Afterpay
CSL
Danone
F45 Training Inc
IBM
In-N-Out Burger
LONGi Green Energy Technology Co Ltd
Mars Incorporated
Meltwater Holding B V
Motion Picture Association of America
Yum! Brands
Work highlights
- Represented Network Ten All Access Pty Limited who were seeking to have the Copyright Tribunal to determine a fair licence scheme following APRA AMCOS’ proposal of a new industry licence.
- Represented F45 Training in Federal Court proceedings.
- Assisting Afterpay with the global rollout of its main and subsidiary brands.
Clayton Utz
Operating across a number of offices nationwide, the team at Clayton Utz regularly advises on a significant volume of both contentious and non-contentious work, including patents, licensing, copyright, trade marks, trade secrets, and litigious proceedings taken before the federal courts. Sydney-based practice head John Collins is a seasoned practitioner who specialises in complex patent and trade mark issues, both domestically and internationally. Regarded by clients as ‘one of Australia’s top IP litigators’, Tim Webb is especially noted for his expertise in copyright law. All named lawyers are based in Sydney. James Neil was promoted to partner in January 2022.
Practice head(s):
John Collins
Other key lawyers:
Dean Gerakiteys; James Neil; Tim Webb; Brett Doyle; Chris McLeod
Testimonials
‘The team at Clayton Utz can certainly handle a large volume of work, and are very responsive whenever we need assistance. Despite this, the team provides a highly specialised and bespoke service. They are very creative and strategic.’
‘James Neil is excellent to work with, and knows our business and brands as well as anybody. His commercial acumen has resulted in en pointe strategic business decisions for our business.’
‘Tim Webb has deep knowledge of the law combined with a very practical and commercial application of it. He is responsive and realistic as to outcomes which ultimately is a driver of success.’
Key clients
Novartis Group, including its generic drug subsidiary Sandoz
Monsanto (Bayer)
Singtel Optus Group
Seven Network
adidas Australia Pty Ltd
Toyota Motor Corporation Australia Ltd
Virgin Australia Airlines Pty Ltd
Sonic Healthcare
Isentia Group Limited
The a2 Milk Company Limited
Angostura Limited
Chevron
Myer
Fresenius
Pharm-A-Care Laboratories
Hill & Smith Holdings
Swancom t/as The Corner Hotel
REC Solar
Emerald Foods
2XU Pty Ltd
Monash University
DownUnder Geosolutions
Cantarella (Vittoria)
Pastificio Rana
Accent Group Limited
Openpay Group Limited
AgBoss Group Pty Ltd
Sou’West Brewery
Universal Biosensors
The Entourage Education Group
PDP Fine Foods Pty Ltd & PDP Capital Pty Ltd
Department of Education, Skills and Employment (Commonwealth)
GME
Work highlights
- Acting for Novartis AG and Novartis Pharmaceuticals Australia Pty Ltd in proceedings to enforce patents and prevent the entry of generic competition for its blockbuster multiple sclerosis drug Gilenya (fingolimod).
- Acting for Isentia, the largest media monitoring organisation (MMO) in the Asia-Pacific, in Copyright Tribunal of Australia and Federal Court of Australia proceedings with respect to the licence terms offered by Copyright Agency Ltd (CAL), the copyright collecting society for press and online media articles.
- Acted for Toyota against well over 150 parties which have been misusing Toyota’s trade marks (and often also copyright works).
Corrs Chambers Westgarth
Fielding a sizeable team working across sites in Perth, Brisbane, Melbourne, and Sydney, the group at Corrs Chambers Westgarth is especially reputed for its prolificity in the pharmaceutical and life sciences sectors, representing a host of companies with formidable market shares. David Fixler and Grant Fisher are regarded by clients as ‘exceptional lawyers‘ within the worlds of healthcare and life sciences, while Eugenia Kolivos, who took over leadership of the team in early 2022, is a ‘fantastic IP and commercial lawyer’, equally noted for her capabilities in the sector. Stephen Stern is a key port of call for clients seeking assistance on trade mark issues, regularly representing luxury brands in counterfeit matters. Odette Gourley
is noted for her considerable track record in patent, copyright, and trade mark disputes.
Practice head(s):
Eugenia Kolivos
Other key lawyers:
David Fixler; Grant Fisher; Stephen Stern; Odette Gourley
Testimonials
‘The Corrs team, especially Stephen Sterns, has a overall great reputation of being excellent in IP. We had a large litigation that was quite complex and the team was able to provide strategically, and efficient, advice during the litigation.’
‘David Fixler is good. Has a good understanding of the overall area relative to our work’
‘A strong team of talented IP practitioners who dig deep to understand the problem to find the solution.’
‘Eugenia Kolivos is a fantastic IP and commercial lawyer who provides sector specific advice.
‘David Fixler and Grant Fisher are exceptional lawyers who specialise in the life sciences & healthcare sector.’
‘Corrs is a large high quality all service law firm which adds strength to their IP practice. Within their IP practice they have many leading individuals which gives them collective strength and experience.’
Key clients
AB InBev
Cartier
Caterpillar
Ferrari
Gucci
Katy Perry
Lacoste
Lundbeck
Merck Sharp & Dohme
University of Melbourne
Blackstone
CIVC Re Champagne
Work highlights
Gilbert + Tobin
Praised for its ‘great innate knowledge of IP litigation‘, Gilbert + Tobin‘s strong contentious acumen sees the team running multiple cases in the High Court of Australia, often concurrently. Beyond its proficiency in disputes, the team possesses wide-ranging expertise in commercial IP licensing and regulatory compliance, including knowledge of food labelling, and health and Therapeutic Goods Administration (TGA) regulation. The practice is headed up by the Sydney-based Michael Williams, who boasts ‘strong capabilities across the board‘ when it comes to trade mark, copyright, and patent matters. Williams is well-supported by Chris Williams, a key figure within the patent litigation specialist. Siabon Seet is particularly prolific when it comes to brand protection and complex trade mark litigation work, and John Lee specialises in cross-border patent litigation. At associate level, Rebecca Dunn‘s workload is concentrated in technology and data protection disputes.
Practice head(s):
Michael Williams
Other key lawyers:
Chris Williams; Siabon Seet; John Lee; Rebecca Dunn
Testimonials
‘Great innate knowledge of IP litigation and strong capability across the board. Excellent technical skills.’
‘Chris Williams is an talented partner who balances commercial outcomes with the best advocacy possible when managing formal claims. Provides great insight into possible risk outcomes which gives you confidence in your ability to progress with matters.’
‘They care about fully understanding the clients position and understanding how to make the case a success for the client. Thorough with their investigations and evidence. Professional and mature mindset.’
Key clients
Aristocrat Technologies
State Street Global Advisors
REC Solar
BCI Media Group
Imdex Limited
Self Care Corporation
Quadrant Private Equity
NSW Government
Luigi Lavazza S.p.A
CPC Patent Technologies
Work highlights
- Assisted Aristocrat Technologies in Australia’s highest court in the case of Aristocrat Technologies Australia Pty Ltd v. Commissioner of Patents.
- Advised self care IP Holdings Pty Ltd on its successful Special Leave Application to the High Court to challenge a judgment finding it had infringed Botox manufacturer’s Allergan’s trade mark by promoting its topical creams as Botox alternatives.
- Advising CPC Patent Technologies in the Federal Court of Australia in a patent infringement action against Apple over biometric technology used in iPhones and iPads.
Herbert Smith Freehills
With a significant presence in both Melbourne and Sydney, the cross-disciplinary group at Herbert Smith Freehills fields dedicated IP disputes, commercial IP, and trade mark-focused teams. The wider practice is headed up by Sue Gilchrist, a Sydney-based partner noted for her capabilities in high-profile patent, copyright, and trade mark litigation. Other key names to note include the Melbourne-based Shaun McVicar, who specialises in the pharmaceutical and medical device sectors, and the Sydney-based Rebekah Gay – global IP disputes co-chair – who handles a range of multi-jurisdictional patent litigations. Sydney-based senior associate Anna Vandervliet routinely advises on cross-border disputes, counting a number of FMCG clients among her broad client base, and Emma Iles focuses on pharmaceutical and medical device patent litigation.
Practice head(s):
Sue Gilchrist
Other key lawyers:
Shaun McVicar; Rebekah Gay; Emma Iles; Anna Vandervliet; Kristin Stammer; Tess Mierendorff
Key clients
Motorola Solutions Inc
Gilead Inc
Wesfarmers
Tabcorp
Hanwha
Goodman Fielder
Millennium Pharmaceuticals
Cantarella Bros Pty Ltd
Commonwealth Bank of Australia
Seven West Media Limited
Work highlights
King & Wood Mallesons
Praised by clients for displaying ‘a deep and broad experience in licensing IP’, King & Wood Mallesons specialises in high-stakes litigation, brand protection, and strategic IP commercial advice. Litigation expert Matthew Swinn heads up the team from the firm’s Melbourne office, working with various high-profile manufacturing companies – including medical device manufacturers – on a range of matters. The Melbourne office was bolstered by the arrival of Kate Hay from Corrs Chambers Westgarth in March 2022; a seasoned lawyer who possesses significant experience in multi-jurisdictional patent, copyright, and trade mark litigation. Elsewhere, Kim O’Connell is well known for her work in the life sciences sector. At the associate level, Brisbane-based senior associate Karen Litherland‘s ‘combination of common sense advice and great attention to detail’ makes her a key contact for various global banks and multinational tech companies.
Practice head(s):
Matthew Swinn
Other key lawyers:
Karen Litherland; Kate Hay; Cate Nagy; Scott Bouvier; Kim O’Connell; Bill Ladas; Suzy Madar
Testimonials
‘Deep and broad experience in licensing IP. Commercially astute. Legal advice placed in context of business type and sector. Strong ability to find the right legal template to meet the commercial objective.’
‘Good combination of partner experience and associate attention to detail. Karen Litherland is an invaluable resource to our business – the combination of common sense advice and great attention to detail is highly valued.’
‘They are true experts; their technical ability is second to none. They are very responsive and always pleasant to deal with.’
Key clients
Fisher & Paykel Healthcare Limited
Tritium
Energy Beverages LLC
Instagram, LLC
QAD Australia Pty Limited (QAD)
Silicon Quantum Computing Pty Ltd
Monash University
FutureFeed
MSA 4×4 Accessories
REA Group
Zip Co Limited and Zip money Payments Pty Ltd (collectively, Zip)
Body Fit Training
Work highlights
- Acting for Instagram, LLC in trade mark proceedings before the Federal Court of Australia
- Advised Silicon Quantum Computing (SQC) on the sale of complex intellectual property rights and specialised equipment relating to certain quantum computing hardware to a new UNSW Sydney spin-out company.
- Acting for REA in a copyright dispute in relation to use of photographs on various online platforms
DLA Piper
DLA Piper regularly represents some of the world's largest pharmaceutical companies in a slew of contentious and non-contentious matters. Nicholas Tyacke in Sydney and Robynne Sanders in Melbourne jointly head up the ‘commercial, pragmatic’ group. Sanders, who is praised for his ‘great attention to detail', focuses chiefly on patent litigation for clients in the medical devices, engineering, and IT sectors, while Tyacke - life sciences IP and regulatory practice head - is a leading patent and IP litigator who regularly acts for large pharmaceutical companies. The pair is ably supported by the Sydney-based Jessie Buchan, noted for her expertise in soft IP issues.
Practice head(s):
Nicholas Tyacke; Robynne Sanders
Other key lawyers:
Rob McMaster
Testimonials
‘Technical legal knowledge very strong. Very commercial, pragmatic with lots of common sense.’
‘Robynne Sanders and Rob McMaster are stand-outs. Very hard workers, great attention to detail.’
‘Very capable, careful, close attention to detail.’
‘Nicholas Tyacke is a careful, knowledgeable litigator with close attention to detail and a sound knowledge of the law.’
Key clients
Pfizer and its affiliates
Neurim Pharmaceuticals (1991) Ltd
Roche
Ozcare
Murray Engineering Pty Ltd
SmileDirectClub
ResApp
Intercontinental Exchange
AirTrunk Singapore Holding Pte Ltd
Guzman y Gomez
ResMed Pty Ltd
Boss Fire Pty Ltd
UON Pty Ltd and LAA Industries Pty Ltd
Global Retail Brands Australia Pty Ltd
LVMH (Louis Vuitton Moët Hennessy)
Campari
Work highlights
- Acting for Pfizer in a series of patent litigation cases, in relation to its small molecule (pharmaceutical) and large molecule (biological) medicines.
- Acting for these mining sector clients in the defence of patent revocation proceedings.
- Advising Guzman y Gomez on its global trade mark portfolio, including advising on branding clearance, prosecution and oppositions, and providing strategic branding advice.
Griffith Hack
Working across offices in Melbourne and Sydney, the team at Griffith Hack is praised for the depth of its ‘understanding of patent law and practice in Australia’, as well as the ‘cohesive, balanced‘ nature of its subspecialised team structure. Key names to note at practice management level include Nicola Scheepers, who oversees the trade mark team; Amanda Stark, who spearheads the chemlife offering; Derek Baigent, who steers the team’s IP law efforts; and David Hughes, who oversees the Engineering and ICT team. Bagient is particularly renowned for his contentious expertise, especially in relation to technology-focused IP issues, including patent litigation and commercialisation.
Practice head(s):
Nicola Scheepers; Amanda Stark; David Hughes; Derek Baigent
Other key lawyers:
Janelle Borham
Testimonials
‘Cohesive, balanced, diverse, and client centric team. The team understands our business well, and presents their work in a manner that reduces friction in our business.’
‘Very bespoke management of our IP portfolio and related matters. I always feel like we matter as a client.’
‘Careful and attentive. Always on top of our matters and have a deep understanding of the underlying technology.’
Key clients
Allergan Inc and Allergan Australia Pty Ltd
BASF
CSR Building Products Ltd
Sony Interactive Entertainment (“Sony”)
ArmourWall Group
Virgin Australia Airlines Pty Ltd
Puma SE
University of Melbourne
University of Sydney
Macquarie University
Kymab Limited
Battery World Australia Pty Ltd
Security Communication Solutions International Pty Ltd
Globaltech Corporation Pty Ltd
Bostik Asahi
Beverages Kinrise Group
Pact Group
IWI Ltd
Illion Australia
Seasol International Pty Ltd
Deswik Mining Consultants (Australia) Pty Ltd
Department of Agriculture and Fisheries
Toptyres Australia Pty Ltd
Work highlights
- Assisted Allergan in the Federal Court in relation to an application to remove a defensive registration.
- Representing Elanco in an appeal to the Federal Court of Australia from patent opposition proceedings brought by Abbey Laboratories Pty Ltd before the Australian Patent Office.
- Defended Cytec Industries in a patent application against all grounds of opposition filed by CSIRO.
K&L Gates
Praised for its ‘knowledgeable and approachable‘ practitioners, K&L Gates fields an international IP offering – encompassing portfolio management, trade mark prosecution, and patent litigation – covering a range of sectors, from fashion and sport to property and construction. Trade mark matters are a key area of expertise for group practice head Jonathan Feder, who also serves as the firm’s global IP co-chair. Patrick Sands‘ practice is centred on IP litigation, while special counsel Gregory Pieris is a go-to name for contentious and non-contentious trade mark, design, copyright, and trade practice matters.
Practice head(s):
Jonathan Feder
Other key lawyers:
Chris Round; Patrick Sands
Testimonials
‘Great team, good knowledge, and approachable.’
Key clients
A2B Australia
Australian Football League (AFL)
Britax Child Safety
Cricket Australia
Deckers Outdoor Corporation
Directed Electronics Australia Pty Ltd
Dreamstreet Lending
Factory X Pty Ltd
Jellycat Ltd
Simavita /Smartz
Sleeping Duck Pty Ltd
Work highlights
- Assisted Deckers Outdoor Corporation in opposing trade mark applications, preparing its evidence in support of oppositions and prosecuting opposition proceedings through to hearing.
- Advised various sporting clients in Australia and globally in relation to prosecution of trade marks.
- Advising and acting for Factory X in relation to an Australian trade mark opposition against KOGAN, an online shopping business.
Minter Ellison
Fielding various seasoned experts across its offices in Melbourne, Brisbane, and Sydney, the team at Minter Ellison – noted for the depth of its media sector expertise – advises a diverse array of clients on commercial transactions, patent enforcement, designs, and copyright issues, among other matters. This ‘great depth of experience and insight‘ is especially concentrated in patent litigation, where practice head Robert Cooper is a key port of call. Other key names to note include Shyama Jayaswal, who ‘knows the pharmaceutical industry back to front and brings a keen understanding of science’, and John Fairbairn, who regularly works on copyright, patent and trade mark disputes.
Practice head(s):
Robert Cooper
Other key lawyers:
Nigel Lokan; Simone Mitchell; Shyama Jayaswal; Gus Lightowlers; John Fairbairn
Testimonials
‘The intellectual property team at Minter Ellison in Melbourne has a great depth of experience and insight into their clients’ businesses/industries and the law. From a litigation perspective, they play hard but with a view to achieving the best possible outcome for their clients (not just for the sake of it).’
‘Gus Lightowlers is a new partner/patent attorney of the firm and is excellent at client communication. A very clever operator. Robert Cooper, is an excellent team leader with an incredible depth of experience. Shyama Jayaswal knows the pharmaceutical industry back to front and brings a keen understanding of the science to every matter she is involved in.’
‘Simone Mitchell is extremely knowledgeable and very commercial in terms of IP matters. Very responsive and provides clear and comprehensive advice.’
‘Highly competent in all things patents, from patent application prosecution to handling patent oppositions.’
‘Nigel Lokan and Simone Mitchell are really good at what they do.’
Key clients
Cap-XX
Copyright Agency
Endeavour Group
Foxtel
Giorgio Armani
Stan Entertainment
Thales Australia
Woolworths
ESCO Corporation
BMS
PPG Industries
PPG Industries
Work highlights
- Acting for Stan Entertainment in proceedings commenced by copyright collecting society APRA | AMCOS, who is seeking to re-set terms on which subscription video on demand services can exercise the copyright in music included in their programming.
- Representing Thales Australia in Court of Appeal proceedings against rival contractor Nioa, in relation to a breach of confidence claim concerning technology used in the Austeyr assault rifle.
- Advised Sandoz in relation to its Australian launch plans for numerous new products in a range of therapeutic areas.
Norton Rose Fulbright
The ‘strong, competent team’ at Norton Rose Fulbright is praised for its ‘genuine trade mark expertise,’ handling a mix of enforcement, protection, portfolio management, and transactional matters, both regionally and internationally. Practice head Cameron Harvey specialises in contentious matters, advising on litigious proceedings before the federal court. The ‘very responsive and hands-on‘ Georgina Hey assists clients with all aspects of brand and IP asset management, including managing the global brand portfolios for large companies. Frances Drummond leads the global IP team, practicing across all aspects of trade mark law including portfolio management, enforcement, litigation and exploitation. Senior associate Alyson Poole specialises in intellectual property protection, enforcement and commercialisation. All named lawyers are based in the firm’s Sydney office.
Practice head(s):
Cameron Harvey
Other key lawyers:
Georgina Hey; Alyson Poole; Isobel Taylor; Frances Drummond
Testimonials
‘Norton Rose Fulbright is professional in all aspects of intellectual property. Their team communicates with us in a timely and cost-efficient way.’
‘Georgina Hey, Alyson Poole and Isobel Taylor are very responsive and hands-on, and they are very easy to work with.’
‘The Norton Rose Fulbright Australia IP team are a leading practice group in this area. They have a depth of skill and knowledge’
‘This team has genuine trade mark expertise which is why I have not moved to other IP practices for trade mark work.’
‘The team are a leading practice group in this area. They have a depth of skill and knowledge, approaching matters with legal insight and analysis while simultaneously maintaining focus on the commercial outcomes and possible solutions to address client needs.’
‘The lawyers who manage our IP matters are a strong, competent team who offer pragmatic, commercial advice tailored to the needs of our business, which they are very familiar with.’
‘Georgina Hey is a pleasure to work with – smart, down to earth and responsive. She is our go-to trade mark lawyer. Cameron Harvey has, in recent years, been trusted with significant trade mark litigation for our business.’
‘Norton Rose’s IP team is very responsive and business focused, offering practical and useful solutions.’
Key clients
7-Eleven Stores Pty Ltd
Accolade Wines Australia Limited
Australasian Food Group Pty Ltd
Australian Pharmaceutical Industries Ltd
Australian Postal Corporation
Bellerine Heights Pty Ltd
BIC Contracting LLC
Bonza Aviation
Brookfield Global Manager Australia Pty
Chang Tsi & Partners
Cliffs Asia Pacific
Iron Ore Pty Ltd
ESR Goodman
Fielder Pte. Ltd.
Mazda Australia Pty. Limited
McDonalds Australia Limited
McDonald’s Australia Limited
Milkadamia International Holdings Pty Ltd
Nando’s Australia Pty Ltd
Nine Network Australia Pty Ltd
Work highlights
- Advising Goodman Fielder on its global trade mark and design portfolio management services since 2016.
- Advising ESR on its acquisition of Blackstone’s Australian logistics portfolio for AUD 3.8 billion.
- Advised PATRIZIA AG (PATRIZIA) on its acquisition of infrastructure investment manager Whitehelm Capital.
Addisons
The group at Addisons has a strong focus on trade marks. The team is jointly spearheaded by Donna Short and Karen Anne Hayne, who both advise on commercial IP issues and trade mark matters for a diverse roster of high-profile global companies. Justine Munsie is praised for her ‘prompt and accurate advice’ as well as for her ‘depth of understanding of the media sector and newsrooms.’ At associate level, significant recent additions include IP lawyer Shimona Rastogi. Senior associate Bianca D’Angelo, meanwhile, offers litigious and strategic advice on trade mark, copyright and design issues. All named lawyers are based in Sydney. Since publication, James Lawrence joined from Mills Oakley.
Practice head(s):
Donna Short; Karen Anne Hayne
Other key lawyers:
Justine Munsie; Bianca D’Angelo; Shimona Rastogi
Testimonials
‘Addisons provide an exemplary service.’
‘Justine Munsie is valued for prompt and accurate advice and for her depth of understanding of the media sector and newsrooms.’
‘The people are easy to deal with and interpret the law in common sense terms for business owners, with realistic outcomes.’
‘Great advice that is relevant to running a business, Donna Short in particular has a wealth of knowledge on IP and negotiation tactics. Timely communications and follow-ups has also been spot on.’
Key clients
Australian Ethical Investment Ltd
Schroders plc
Taylor Made Golf Company Inc.
Virgin Enterprises Limited
Fin Control Systems Pty Ltd
Industrie Clothing Pty Ltd
The Beauty Chef Pty Ltd
Aveo Group
OFX Group Limited
Australian Ethical Investment Ltd
ClearView Wealth Limited
Bega Cheese Limited
MoneyMe Financial Group Pty Ltd
The Hollard Insurance Company Pty Ltd (and related companies)
Formula One Group
Police Bank Ltd
Playboy Enterprises International , Inc
San Miguel Brewing International
Monash IVF Group
Temple & Webster
Work highlights
- Acting for Hungry Jack’s Pty Limited in Federal Court of Australia proceedings commenced by McDonald’s.
- Assisting Australian Ethical Investment Ltd with achieving acceptance of its valuable brand AUSTRALIAN ETHICAL SUPER following submission of extensive evidence showing use of the trade mark for over 10 years in Australia.
- Advising Virgin Group on a range of intellectual property matters in Australian including managing its extensive Australian trade mark portfolio, as well as pursuing trade mark infringement matters on behalf of the client.
Banki Haddock Fiora
Copyright and patent litigation are key areas of expertise for the Sydney-based Banki Haddock Fiora; a boutique commercial firm which handles a gamut of litigious and transactional work in the IP space. Regarded by some clients as a practice that ‘understands music copyright better than any other firm in Australia‘, the team is particularly skilled at acting for music, literary and media publishers in a range of contentious and non-contentious matters. The cross-disciplinary practice is jointly chaired by several partners: Kate Haddock leads the copyright team; Julie Robb heads up the dispute resolution practice; and Simon Kneebone, who heads up the trade marks and designs group, is praised by clients for his ‘clear experience in the consumer products and brand protection space.’ At the senior associate level, experienced IP litigator Alasdair Doctor is recommended.
Practice head(s):
Kate Haddock; Julie Robb; Simon Kneebone
Other key lawyers:
Alasdair Doctor; Vina Ngo; Kate Andean; Alison McGinn
Testimonials
‘I believe Banki Haddock Fiora understands music copyright better than any other firm in Australia.’
‘Kate Haddock is in my opinion the best copyright lawyer in Australia. Alasdair Doctor is always available, extremely efficient, and strategic.’
‘We have been really impressed by everyone we have come across at Banki Haddock Fiora in terms of professional calibre and the commercial advice given, but what also stands out is how the lawyers work together collaboratively as a team.’
Key clients
APRA AMCOS
Copyright Agency Limited
Schneider Electric (Australia) Pty Ltd
Australian Broadcasting Corporation
Societe des Produits Nestle S.A.
Penguin Random House UK
Are Media Pty Ltd
Sperling Enterprises Pty Ltd
Australian Community Media
Smartair Diffusion Pty Ltd and Fusion HVAC Pty Ltd
Pfizer, Inc.
Hanesbrands, Inc.
Costco Wholesale Corporation
Key-Sun Laboratories Pty Ltd
New Shanghai
Urban Purveyor Group
ATH (Australia) Pty Ltd
Ainsworth Game Technology Limited
Work highlights
- Acting for APRA AMCOS in proceedings in the Copyright Tribunal of Australia to determine a licence scheme for subscription video on demand services.
- Acting for Société des Produits Nestlé S.A. in the Federal Court appeal by A2 Milk Company Ltd against its unsuccessful opposition to Nestlé’s trade mark application for NAN A2.
- Acting for Copyright Agency Limited in proceedings in the Copyright Tribunal of Australia against the bodies representing all Australian primary and secondary schools to determine appropriate methods to ascertain the extent of use of copyright materials in those institutions.
Bird & Bird
Practitioners at the Sydney-based Bird & Bird are praised for their ‘good knowledge on contentious and non-contentious IP issues’ as well as their ‘experience with a variety of clients.’ The group is able to draw on its close collaborative ties with a wider international network of offices to advise on complex cross-border matters, including concurrent patent infringement proceedings which have been filed both domestically and internationally. The team is headed up by Jane Owen, a specialist in IP strategy and disputes work. Lynne Lewis is particularly focused on retail and consumer issues within IP.
Practice head(s):
Jane Owen
Other key lawyers:
Sophie Dawson; Lynne Lewis
Testimonials
‘Good knowledge on contentious and non-contentious IP issues and experience with a variety of clients. Pragmatic and commercial.’
‘Sophie Dawson is a pleasure to deal with. Efficient and knowledgeable.’
Key clients
Boart Longyear Group of companies Limited
Uniden Australia Pty Limited
Rakman Pty Ltd & Trafalgar Pty Ltd
Howden Group
Abbey Laboratories ats Elanco
Troy Laboratories
Lupin Pharmaceuticals
Mahindra & Mahindra
Mattel (and its related entities)
Wisetech Global Limited
Internet Services Australia 1 Pty Ltd trading as THE ICONIC
Align Technology, Inc
Elixinol Global Limited
The Wonderful Company
Airtasker Pty Ltd
First Pharma Pty Ltd
Noumi Limited (previously Freedom Foods Group)
Caffitaly SpA
Target Brands Inc
KPMG Australia IP Holdings Pty Ltd
HelloFresh SE
GlaxoSmithKline Consumer Healthcare Australia Pty Ltd
Wontok Australia Pty Ltd /Wontok International
Body Fit Training Company Pty Ltd
Specsavers
Zagro Veterinary
Epic Games, Inc
Take-Two Interactive Software Inc; RockStar Games, Inc
The Capital Group Companies
Qatar Airways Group (Q.C.S.C.)
Work highlights
- Acting for Boart Longyear Limited in 2 patent infringement/revocation claims in the Federal Court.
- Successfully obtaining orders and relief for copyright infringement for Take-Two Interactive Software Inc; RockStar Games Inc in proceedings concerning unauthorised mods written for the Grand Theft Auto V game.
- Bringing successful patent and design infringement proceedings in the Federal Court on behalf of our client, HyperIce Inc, relating to its sports massage gun.
Gadens Lawyers
Sought out by a range of clients - from start ups to key domestic entities and multinational companies - Gadens Lawyers is noted for its 'comprehensive' IP filing, opposition, and litigation practice. Practice head David Smith, whose mandates are often centred around the sales and marketing aspects of intellectual property, is notably supported by Kerry Awerbuch, a strong trade mark litigator who assists high-profile clients in the IT, engineering, manufacturing, and retail industries, among others. All named lawyers are based in Melbourne. Hazel McDwyer has left the practice.
Practice head(s):
David Smith
Other key lawyers:
Savannah Hardingham; Dudley Kneller; Kerry Awerbuch; Glenn McGowan
Testimonials
‘The trade mark team has strengthened substantially over the past 5-10 years. Gaden offers a comprehensive IP filing, opposition, and litigation practice.’
The team at Gadens acts for many well-known and iconic Australian brands, in high-profile litigation and opposition proceedings. The client base of Gadens includes 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 IP rights, and to agilely and tactically respond to infringement proceedings.’
‘Kerry Awerbuch is an experienced trade mark litigator (as well as acting across the full spectrum of IP disputes). She has acted (and continues to act) for numerous high-profile clients.’
Key clients
3P Learning Limited
Alauda Aeronautics Pty Ltd
Baiada Pty Ltd
Adairs Retail Group Pty Ltd
Blackberry Limited
Citadel Limited
Cotton On Group
Elite Eleven Sporting Pty Ltd
Esse Studios Pty Ltd
Fleet Space Technologies Pty Ltd
Grace Loves Lace Pty Ltd
Healius Ltd
Kennards Hire Pty Ltd
Lark Distillery Pty Ltd
Mister Zimi Pty Ltd
Motion Asia Pacific Pty Ltd
PopSockets LLC
Prene Bags Pty Ltd
Rebecca Vallance Pty Ltd
Sleeping Duck Pty Ltd
Strateas.Carlucci Pty Ltd
Thankyou Group Pty Ltd
The Citadel Group Limited
Unyoked Pty Ltd
Vida Glow Pty Ltd
Warwick Fabrics (Australia) Pty Ltd
Work highlights
- Acting for Chuchka in successfully defending a Full Federal Court appeal brought by State of Escape in VID 37 of 2021, appealing the first instance decision in VID 521/2018.
- Acting for Cotton On Group in Federal Court of Australia proceeding VID 664/2021, which concerned Cotton On’s allegations of groundless threats of copyright infringement, groundless threats of trade mark infringement, a trade mark revocation action and a trade mark non-use action.
- Acting for Motion Asia Pacific, a leading manufacturer and distributor of industrial engineering products for the Asia Pacific, in complex trade mark oppositions as well as in trade mark prosecution and IP advice matters.
Jones Day
Working as part of the firm's integrated global offering, Jones Day's specialist IP team is reputed by clients for its proficiency in biopharmaceutical patent litigation, as well as for its wider non-contentious capabilities in the biotechnology and life sciences sectors. Melbourne-based practice head Lisa Taliadoros' expertise in these areas is complemented by her knowledge of pharmaceutical matters. The Sydney-based Anthony Muratore is a 'very experienced patent litigator' who regularly handles cross-border, often multi-jurisdictional patent disputes. Richard Hoad joined the group in Melbourne from Clayton Utz in October 2022.
Practice head(s):
Lisa Taliadoros
Other key lawyers:
Anthony Muratore; Samin Raihan; Richard Hoad
Testimonials
‘The Jones Day team is very active in biopharma patent litigation, knows the law well, and is up to speed on the latest legal developments. They are fierce advocates.’
‘Lisa Taliadoros and Anthony Muratore are very experienced patent litigators and fine advocates.’
‘Experienced practitioners in both the art of litigation and the science underlying many patent disputes. Exceptionally skilled at working with experts.’
‘Lisa Taliadoros has excellent scientific knowledge, particularly biotechnology. Anthony Muratore is a shrewd and canny litigator and has a great knowledge of patent law’
‘The Jones Day patent litigation team are highly specialised and have considerable technical expertise in the area. They provide excellent service to their clients.’
‘Lisa Taliadoros is an excellent lawyer and a highly proficient litigator who leaves no stone unturned. She is very experienced in conducting major patent litigation, particularly in the pharmaceutical patent space. Anthony Muratore as counsel/consultant has long-standing experience and expertise in the area.’
‘Exceptional team of unparalleled skill and expertise.’
‘Lisa Taliadoros and Anthony Muratore each have a very extensive knowledge of the law, deep strategic insights and great tactical skill and courage.’
Key clients
Chevron Corporation
Celgene Corporation (a Bristol Myers Squibb company)
Bristol Myers Squibb
ToolGen, Inc
Sanofi
Regeneron Pharmaceuticals, Inc.
Merck Sharp & Dohme LLC and Merck Sharp & Dohme (Australia) Pty Ltd
Work highlights
- Acted for Chevron Global Energy Inc. in its dispute against Ampol Australia Petroleum Pty Ltd in the Federal Court of Australia concerning iconic Chevron trade marks including Caltex, StarCard and associated indicia.
- Acting for Celgene, a global biopharmaceutical company, in a number of patent infringement and validity proceedings in the Federal Court of Australia and High Court of New Zealand (and globally) concerning patents to its products Revlimid® and Pomalyst®.
- Acting for ToolGen, a leading Korea-based global biotechnology company in Federal Court proceedings concerning the validity of its patent rights to the revolutionary CRISPR gene editing technology.
Maddocks
The team at Maddocks is led by Brendan Coady who is also the technology sector lead. The group handles the protection and commercialisation of patents and related litigation together with a full service in relation to brand protection and monetisation. Its work covers sectors including pharmaceuticals, medical technology and chemical engineering industries. Ben Miller is a hugely experienced IP specialist (patent transactions and disputes) while Anthony Willis and Caroline Atkins in Canberra, and Jeff Goodall are some of the key advisers who provide the full range of technical and commercial expertise.
Practice head(s):
Brendan Coady
Other key lawyers:
Ben Miller; Anthony Willis ; Caroline Atkins; Geff Goodall
McCullough Robertson
Providing ‘outstanding local advice for the Australian market‘, McCullough Robertson - based in Brisbane and Sydney - assists clients with portfolio management at all stages of the life cycle, as well as with trade mark prosecution and enforcement. The group is headed up by the ‘commercial, client-focused‘ Belinda Breakspear. Alex Hutchens is a seasoned commercial and regulatory lawyer with a keen focus on IP, IT, telecoms, and privacy data protection issues. On the contentious side, Peter Stokes, who regularly appears on behalf of clients in patent and trade mark disputes, is recommended.
Practice head(s):
Belinda Breakspear
Other key lawyers:
Alex Hutchens; Peter Stokes
Testimonials
‘McCullough Robertson continues to provide outstanding local advice for the Australian market.’
‘Special mention must be made of Belinda Breakspear. She is highly commercial, client focused and consistently delivers ‘on time’ and ‘on point’ advice as well as being a pleasure to work with.’
Key clients
Flight Centre Travel Group Limited
Graziher
Russell Mineral Equipment Pty Ltd
Une Piece Pty Ltd
Beach 26 Pty Ltd (trading as Live Learn Survive)
Work highlights
- Advising a university in Australia on the IP ownership and related commercial agreements.
- McCullough Robertson manages Flight Centre Travel Group Limited’s worldwide trade mark portfolio.
- Acting for Beach 26 Pty Ltd (trading as Live Learn Survive) (Beach 26) ‘Lifeguard Maxi’ in IP protection, copyright protection issues and provided IP and commercial advice.
Piper Alderman
Entrusted by a wide-ranging client roster that spans public and private companies, government, research organisations, not-for-profits, and private individuals, Piper Alderman fields a ‘diverse IP team that is very knowledgeable in trade marks across various jurisdictions.’ The group is co-chaired by the ‘highly personable and responsive' Tim O’Callaghan, an Adelaide-based partner praised for bringing ‘a fresh perspective in the delivery of services in the brand protection space.’ In Melbourne, fellow co-chair Tim Clark is noted for his knowledge of the TMT, life sciences, and biotechnology sectors.
Practice head(s):
Tim Clark, Tim O’Callaghan
Other key lawyers:
Jamin Li
Testimonials
‘Diverse IP team that is very knowledgeable in trade marks across various jurisdictions.’
‘Tim Clark and Jamin Li are very attentive and responsive to urgent needs. They have a unique ability to understand commercial drivers for a business and take a practical response to resolving issues.’
‘Highly adaptable to suit changing brand needs in terms of goods, territories, frequency of services, and division of activities between firm and in-house team.’
‘Tim O’Callaghan is highly personable and responsive. He brings a fresh perspective in delivery of services in the brand protection space.’
‘Clear, straight, fast and detailed advice.’
‘Brings together the best mix of skills, expertise and experience to address the needs of the client. Very professional in every aspect of their work, responsive and timeliness of delivery is a strength when compared to other companies. This practice attracts very talented people.’
‘Very accessible. Understand the importance of being commercial and acts in a timely way.’
‘Tim O’Callaghan is very experienced. He returns calls promptly and is commercial in his approach.’
Key clients
Airspeed Pty Ltd
Blockchain Australia Ltd
C.M.E. Blasting & Mining Equipment Ltd
Peregrine Group
REDARC Electronics Pty Ltd
Suree Interfoods Co Ltd
Tic Toc Online Pty Ltd
Work highlights
- Represented Airspeed Pty Ltd, a prominent aerospace and maritime Defence SME, in Supreme Court of NSW proceedings, defending against allegations by a former business partner of detinue and breach of bailment of aircraft sensor technology.
- Acting for CME Blasting & Mining Equipment Ltd in contentious Federal Court proceedings, prosecuting claims of patent infringement, inducement to breach contract, tort of conversion & detinue and misleading & deceptive conduct against a Western Australian based company and its director.
- Represented Peregrine Group in disputes against those seeking to misappropriate its IP, trade mark monitoring and WIPO domain name disputes.
Simpsons Solicitors
Based in Sydney, Simpsons Solicitors is a specialist IP firm which ‘provides excellent advice that is both technical and strategic.’ The team regularly appears in high-profile trade mark and copyright cases, representing major multinational tech companies and streaming platforms in Copyright Tribunal proceedings regarding license schemes. The group is headed up by Adam Simpson, noted by clients for his ‘deep experience in IP and trade practices law’, together with media and entertainment sector experts Jules Munro and Mark Bamford.
Practice head(s):
Adam Simpson; Jules Munro; Mark Bamford
Other key lawyers:
Ian McDonald; Sebastian Tonkin
Testimonials
‘Adam Simpson and his team are highly responsive, pragmatic, and full of real-world commercial experience that gives their advice significant value.’
‘Adam Simpson has helped us navigate both litigation, and ways to avoid it, in a calm, practical and commonsense way that speaks of his deep experience in IP and trade practices law. He engenders a high degree of trust through his openness and honesty.’
‘Excellent knowledge of the creative industries, particularly the music sector.’
Key clients
Netflix, Inc
Universal Music Publishing and Songs of Universal, Inc
Maurice Blackburn Lawyers
Kobalt Music Publishing
Screen Australia
The University of Melbourne
Riot Games Inc
The Wiggles
Spiral Foods
Hachette Publishing
Palmanova Pty Ltd
Allen & Unwin
Pan Macmillan Australia
Work highlights
- Successfully represented Universal Music Publishing and Songs of Universal in a copyright infringement claim against Clive Palmer.
- Successfully defended Maurice Blackburn Lawyers 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 Inc in Copyright Tribunal proceedings in relation to a licence scheme for the use of music in streaming services operating in Australia.
Sparke Helmore Lawyers
Sparke Helmore Lawyers' wide-ranging capabilities encompass IP protection, enforcement, and portfolio management, as well as IP commercialisation; the latter of which is a key specialism for Sydney-based practice co-chair and national IPT head Shannon Platt. Platt is also well-versed in IP litigation, with recent engagements seeing her acting for financial services entities in concurrent proceedings before the federal court. Fellow practice co-chair Dalvin Chien possesses significant experience advising on commercial issues related to technology transactions. All named lawyers are based in Sydney.
Practice head(s):
Shannon Platt; Dalvin Chien
Other key lawyers:
Vienna Jones
Key clients
Allnex Resins Australia Pty Ltd / Allnex Netherlands B.V.
APT Advanced Polymer Technology (Sport Group)
Australia’s Oyster Coast Pty Ltd
Bentleys Australia Pty Ltd
Civic Transport Services Pty Ltd
CHVL Pty Limited t/as Bistro Guillaume
Clarence Valley Anglican School Council Inc.
Coal Services Ltd
Community First Credit Union Ltd
Council of the City of Shellharbour
Craveable Brands (Red Rooster, Chicken Treat)
Crocs, Inc
Enviropacific Services Limited
Earthlok Pty Ltd
Grant Bloodstock Pty Ltd
Greencross Group (including Petbarn)
Husqvarna Group
Industrial Galvanizers Pty Ltd, “INGAL” (subsidiary of VALSPAR)
Infosys Limited
James Cumming & Sons Pty Ltd
Work highlights
- Acting for CFCU, a large community-based credit union, against Bendigo & Adelaide Bank (Bendigo Bank) in two parallel Federal Court proceedings.
- Assisted Husqvarna Aktiebolag with obtaining the registration of a number of its trade marks.
- Successfully assisted Maggie Sottero Designs, LLC with obtaining the transfer of numerous bad faith domain name registrations incorporating its “MAGGIE SOTTERO” and “ABBEY BRIDAL” trade marks.
Spruson & Ferguson Lawyers
Bolstered by its November 2021 merger with Shelston IP, Spruson & Ferguson’s breadth and depth translates to a varied client base that comprises a diverse array of household names, ranging from consumer goods manufacturers to multinational fast food chains. Practice head Chris Bevitt leads the ‘strong’ team, which clients single out for its capabilities in ‘complicated pharmaceutical litigation’. Former practice head Khajaque Kortian, who counts both major international and local corporations among his clientele, is regularly engaged for his expertise in portfolio management. All lawyers mentioned are based in Sydney.
Practice head(s):
Chris Bevitt
Other key lawyers:
Sylvie Tso; Francesca Colubriale; Khajaque Kortian
Testimonials
‘Strong team with a lot of experience in complicated pharmaceutical litigation. I find Spruson & Ferguson lawyers to be very engaged and responsive in our matters.’
Key clients
Johnson & Johnson (Janssen, DePuy, J&J Consumer)
Dyno Nobel (Incitec Pivot Limited)
Zoetis Services LLC
James Hardie
Dyson
McDonald’s
Nestle (Nestec)
Mining3 (CMTE)
Manildra Milling Corporation
Ecolab (including Nalco)
Emacity Pty Ltd
Enagic Co., Ltd
Firstmac Limited
Fuchs Lubricants (Australasia) Pty Ltd
Hytera Communications Corporation
Xiamen Huadian Switchgear Co. Ltd (Huatech)
GrainCorp Limited
Genea Ltd (previously Sydney IVF)
NSW Ports
Polaris IP
Pty Ltd and Glass Hardware Pty Ltd
Work highlights
- Acted for Intervet International BV in a high-profile Full Federal Court appeal against Boehringer Ingelheim Animal Health USA Inc.
Thomson Geer
Working across offices in Brisbane, Perth, Sydney, and Melbourne, the Thomson Geer IP team is well placed to advise a broad roster of clients on trade mark and patent matters. Notable recent engagements have seen the team representing major foreign entertainment companies and consumer goods conglomerates in patent litigation proceedings and interlocutory injunctions taken before the vrious domestic courts. Key names to note include versatile practitioners Andrew Chalet and Peytee Grusche, who assist with a full range of IP issues.
Other key lawyers:
Andrew Chalet; Peytee Grusche; Ben Coogan; Peter Le Guay; Tony Conaghan
Key clients
Reckitt
Microba Lifesciences
InterGrain
SmartSat CRC
Work highlights
- Acted for Reckitt on a successful interlocutory injunction matter in the Federal Court.
- Advising on IP management strategies for the SmartSat CRC.
- Advising InterGrain on forming a strategic collaboration with Inari, a US biotech seed company, to improve the yield potential of wheat to enhance long-term viability of crops.
Arnold Bloch Leibler
The Melbourne-based Arnold Bloch Leibler services a host of retail and telecoms clients, both domestically and internationally. The group is particularly capable on the contentious side, with practice group head Zaven Mardirossian regularly assisting clients to protect their property rights from third party infringement matters. At the senior associate level, Gabriel Sakkal is noted for his capabilities in multidisciplinary IP mandates, especially those concerning competition law.
Practice head(s):
Zaven Mardirossian
Other key lawyers:
Gabriel Sakkal
Key clients
Premier Investments
Cygnett
PLUSpak
Memories.com.au
A high-net-worth property developer, Charlie Buxton
Treat Me Snacks
CareerOne
Fonterra Brands Australia (Fonterra)
Industry Super Australia
Hostplus Pty Ltd
Wollemi Capital Group
Work highlights
- Assisting ASX-listed Premier Investments’ with contentious intellectual property matters, including trade mark and copyright disputes.
- Assists Cygnett’s Australian with its trade mark portfolio and acts for the company in relation to intellectual property disputes.
- Acting for PLUSpak Australia in relation to a major intellectual property dispute with The a2 Milk Company Ltd.
Dentons
The Dentons group is praised by clients for its ‘excellent knowledge of the retail industry’, driven in large part by the efforts of practice head Joy Atacador, who also heads up the firm’s retail-focused offering. Hotel and leisure sector matters are also core areas of expertise for the team. Newly promoted to partner in July 2022, Matthew Hennessy, who joined the team from King & Wood Mallesons in January 2022, has bolstered the group’s capabilities in commercial transactions. Other key names to note include Robyn Chatwood, who acts in all area of non-contentious licensing and technology law.
Practice head(s):
Joy Atacador
Other key lawyers:
Matthew Hennessy; Robyn Chatwood
Testimonials
‘The level of expertise, the diversity of talent to call on and the willingness of the partners and solicitors to be available for advice on short and longer term basis.’
‘Excellent knowledge of the retail industry, personable communication , excellent collaboration, Always mindful of value for money.’
‘Always provide suggestions, easy to deal with, will advise at a moments notice – always available.’
‘They understand what we need; they understand our business.’
Key clients
Rapid Response Revival
Dye & Durham
Hertz
Avis Budget Group
Hilton
Windsor Smith
Argenta
Regeneus
Starwood Capital
Gartner Australasia Pty Ltd
Work highlights
- Advised Avis Budget Group across multiple matters including drafting precedent franchise agreements, advising on competition law, advising on trade mark, advising on IP ownership and licensing arrangements, and other matters including privacy in respect of the franchised business.
- Assisted Argenta with multiple deals, including in relation to the acquisition of Argenta by KKR.
Macpherson Kelley
The deep bench at Macpherson Kelley includes Victoria-based national practice head Paul Kirton; Belinda Sigismundi, who leads the team in the Dandenong office; as well as Mark Metzeling and Stuart Gibson who head up the teams in Brisbane and Melbourne, respectively. Gibson, an experienced IP lawyer, joined the firm from Mills Oakley in May 2022 and ‘acts for many fashion brands in Australia both in a proactive and defensive capability.’
Practice head(s):
Paul Kirton
Other key lawyers:
Belinda Sigismundi; Mark Metzeling; Stuart Gibson; Nils Versemann; Libby Goad
Testimonials
‘The team are tenacious in pursuing the best outcomes for their clients in a cost efficient and effective manner.’
‘Nils Versemann provides thorough and carefully considered advice fully informed by the client’s commercial objectives. Libby Goad provides hard-headed, practical representation for clients in litigation and is tenacious in pursuing their best interests.’
‘The practice is synonymous with Stuart Gibson who has joined the firm recently from Mills Oakley, and who has been at the forefront of key IP disputes for more than 20 years. Stuart acts for many fashion brands in Australia both in a proactive and defensive capability.’
Work highlights
- Advised UK law firm and its ultimate food and beverage industry client on commencing infringement action in Australia.
- Advising Peter Champion IP on registering its IP rights, bringing court proceedings against counterfeit product importers and sellers and utilising takedown procedure.
- Acted for an international book publisher in restructuring their IP holding entities and moving all Australian and international trade marks, copyright and designs within the new structure.
Mills Oakley
Mills Oakley is regarded by clients as a team of, ‘excellent litigators and commercial negotiators in relation to patents, trade marks, and copyright.’ The team is jointly chaired by Lisa Egan and Scott Coulthart, working out of the firm’s Sydney, Melbourne and Brisbane offices respectively. Egan, who joined from K&L Gates in March 2022, and brings with her a strong advisory practice which involves the management of large trade mark and design portfolios. Former practice head James Lawrence departed in September 2023.
Practice head(s):
Lisa Egan; Scott Coulthart
Testimonials
‘Mills Oakley has an outstanding intellectual property team. They provide considered and astute legal advice within a commercial context. In particular, Mills Oakley are excellent litigators and commercial negotiators in relation to patents, trade marks, and copyright.’
‘Mills Oakley’s team is professional, intelligent and top-shelf clients absolutely love their work. Their ability to communicate with legal experts and non-lawyers is really next-level stuff.’
Key clients
Derma Pen, LLC
Mad Mex International Pty Ltd
Cashrewards Pty Ltd
Deco Australia Pty Ltd
Boody Australia Pty Ltd
eBay, Inc
Rattlejack Innovations Pty Ltd
The Institute of Patent & Trade Mark Attorneys of Australia
CoreLogic (RP Data Pty Ltd t/as CoreLogic Asia Pacific)
Ausenco Services Pty Ltd
The Salvation Army
Work highlights
- Acting for Derma Pen, LLC in trade mark proceedings in the Federal Court of Australia against Biosoft (Australia) Pty Ltd and its principal Stene Marshall.
- Acted for Deco Australia in its Federal Court of Australia patent infringement and revocation proceedings against Aliwood Pty Ltd.
- Acting for Rattlejack Innovations in defending patent infringement proceedings brought against it by Jusand Nominees in respect of the sale in Australia of Rattlejack’s unique mining safety product, the SafetySpear.
Pearce IP
The fast-growing team at IP boutique Pearce IP is reputed for its ‘in-depth understanding of the science and pharmaceutical regulatory industry’, working exclusively with a range of life sciences clients on transactional, regulatory, and litigious matters. On the contentious side, Naomi Pearce – the firm founder – and Katrina Crooks are praised for their ‘extensive experience’ and ‘sound and considered’ litigation capabilities. All named lawyers are based in Sydney.
Practice head(s):
Naomi Pearce; Katrina Crooks
Other key lawyers:
Alex May; Jenna Enmon
Testimonials
‘Naomi Pearce and Alex May are extremely through and considered in their advice. Great strategic thinkers.’
‘Naomi Pearce and Katrina Crooks have extensive experience and are sound and considered litigators.’
‘The Pearce IP team has an in depth understanding of the science and pharmaceutical regulatory industry driving many of their client’s businesses. They are passionate about achieving their client’s commercial objectives – and they are extremely hard-working and dedicated lawyers.‘
Key clients
Juno Pharmaceuticals (pharma-life sciences)
Natco Pharmaceuticals (pharma- life sciences)
Burchgrove and Luxotico (luxury homewares)
1200 Pharma LLC
2A Pharma AB
ABL Bio
Annexon Inc.
Atara Biotherapeutics
Atomic Oncology
Bayer Healthcare
Biogen Inc.
California Institute of Technology
Calithera Biosciences Inc
CRISPR Therapeutics
Demeter Fertility
Fable Holdings
Goterra Intellia Therapeutics
Intocell Inc.
Juno
La Jolla Pharmaceutical Company