Intellectual property in Australia

Allens

Allens stands out for its ability to act for household names in handling complex contentious and non-contentious issues at both national and international levels. Led by practice head Miriam Stiel, the group has a particular strength in sectors such as life sciences, healthcare and pharmaceuticals. Also notable is the team’s specialist patent work in the area of IT and engineering. Tim Golder is recommended for ‘his calm and rational approach to legal advice’. Andrew Wiseman offers over three decades of trade mark and patent expertise in areas as diverse as media and entertainment and pharmaceuticals. Melbourne-based Sarah Matheson and senior patent counsel Philip Kerr are also key figures in the team.

Practice head(s):

Miriam Stiel

Testimonials

Very friendly, approachable and pragmatic

Nothing is too much trouble for the team at Allens

Lawyers on the team are all very easy to work with

Tim Golder is the voice of reason due to his calm and rational approach to legal advice; he is a great sounding board too

Key clients

Australia and New Zealand Banking Group

Beam Suntory

Beiersdorf

Biomerics

Bristol-Myers Squibb

Gilead Sciences

Hesta

Infosys

Merck, Sharp & Dohme

Mine Site Technologies

Music Rights Australia

Nichia

Pfizer

Precision Tracking

Sanofi

Redbubble

SsangYong Motor

Teva Pharmaceutical Industries

Vaxiion Therapeutics

Visit Victoria

Wesfarmers

Work highlights

  • Advising the Australia and New Zealand Banking Group on the IP aspects of the agreement on the divestment of ANZ’s wealth management arm to IOOF Holdings, as well as on the divestment of ANZ’s life and consumer credit insurance business to Zurich Financial Services Australia.
  • Handling Beam Suntory’s brand portfolio; work included the successful opposition to trade mark applications filed by a Townsville car fleet owner.
  • Defending Beiersdorf against a deceptive conduct claim brought by competitor Unilever before the Federal Court; the claim concerns Beiersdorf’s antiperspirant deodorant products.
  • Acting for Bristol-Myers Squibb and Otsuka Pharmaceutical against a claim for damages by Generic Health relating to the drug aripiprazole.
  • Representing Infosys in a copyright-related dispute with Qudos Mutual.

Baker McKenzie

Baker McKenzie’s IP team handles the full scope of issues relating to the protection, enforcement and exploitation of IP rights for its clients. The group is led from Sydney; Andrew Stewart and Richard Gough are the joint practice heads and the department also functions as an integral part of the global network. On the contentious side, team members are noted for some precedent-setting work; Stewart led a team on an online content protection case brought pursuant to the Copyright Act. Elisabeth White leads the firm’s national healthcare group, the firm has a notable presence in the healthcare sector. It also has deep expertise in industries such as TMT and consumer goods. Robert Arnold, Jonathan Flintoft, Byron Angelopulo and senior associate Chantal Savage are also noted.

Practice head(s):

Richard Gough; Andrew Stewart

Testimonials

Baker McKenzie’s IP lawyers are not only very competent, but also aware of the background and the various nuances of trends on the legal market

The team is adept at handling complex transactions involving IP rights

Key clients

Television Broadcasts (TVB)

Meltwater Australia Pty

Lion

Unichi Holdings

Network 10

In-N-Out Burger

Work highlights

  • Acting for a group of Australian universities on an application brought by the Copyright Agency Ltd before the Copyright Tribunal of Australia.
  • Successfully assisting broadcasting company Television Broadcasts (TVB) with bringing proceedings regarding the unauthorized use of TVB’s content before the Federal Court.
  • Assisting Meltwater Australia Pty with commencing proceedings in the Copyright Tribunal aiming at determining a fair licensing scheme for the media monitoring industry.
  • Assisting Unichi Holdings with bringing action against companies and individuals importing and selling Unichi Forty Fathoms skin care products, thereby infringing the client’s rights.
  • Defending Network 10 in trade mark infringement proceedings initiated by Fairfax, alleging that Network 10’s use of 10 Boss as a digital channel name infringed Fairfax’s trade mark rights.

Clayton Utz

The IP and technology team at Clayton Utz stands out for its ability to handle national and cross-border matters for clients in a broad range of industries, including pharmaceuticals, biotechnology, TMT, financial services, manufacturing, retail, energy, and the public sector. The team has particular strength in handling disputes relating to all types of IP, which is complemented by the fact that a number of the lawyers hold dual qualifications. Sydney-based John Collins heads the practice and combines expertise in all aspects of IP together with technology. Also on the east coast, Timothy Webb  attracts praise for ‘his ability to achieve a commercial and practical outcome for his clients’. In Melbourne Chris McLeod has a reputation for his work in relation to trade mark litigation and special counsels James Neil and the recently promoted Dean Gerakiteys are also noted.

Practice head(s):

John Collins

Testimonials

In advising clients, the team develops a very good understanding of their business, which strengthens the relationship and facilitates a more efficient protection of the clients’ commercial interests

Timothy Webb is smart and focused on developing an efficient strategy for the client

Key clients

2XU Pty

Hill & Smith Holdings PLC/ Hill & Smith Pty

Isentia Group

Monash University

Novartis Pharma AG/ Novartis Pharmaceuticals Australia Pty

PDP Capital Pty/ PDP Fine Foods Pty

Racing Victoria

Sandoz Pty

Swancom Pty

Toyota Motor Corporation Australia

Work highlights

  • Representing Isentia Group in proceedings before the Copyright Tribunal regarding the licensing arrangements offered by the Copyright Agency Limited.
  • Acting for Swancom Pty, the operator of The Corner Hotel, on its high-profile trade mark dispute with McDonald’s Australia.
  • Acting for Toyota Motor Corporation Australia on significant anti-counterfeiting and trade mark enforcement matters.
  • Representing Sandoz Pty in long-running patent infringement proceedings brought by Lundbeck in relation to the depression treatment Lexapro.
  • Acting for Novartis Pharma AG and Novartis Pharmaceuticals Australia Pty on patent enforcement issues regarding the clients’ multiple sclerosis drug Gilenya.

Gilbert + Tobin

Lawyers on Gilbert + Tobin’s IP team utilise ‘their great strategic thinking skills and exceptional work ethic’ in providing partner-led advice to clients regarding contentious and non-contentious issues concerning all types of IP rights. With a strong reputation in the patent litigation space, the team continued to score success in cross-border cases; of particular note, a team led by the ‘impressiveJohn Lee represented the BASF Group in high-profile, long-running  proceedings brought against SNF Australia. The Sydney-based practice is led by ‘very experienced’ Michael Williams, who is notable for his recent work regarding software patentability. ‘Outstanding leaderSiabon Seet is adept at handling contentious matters relating to copyright and brand protection. Recently promoted partner Rebecca Dunn and Chris Williams are also recommended.

Practice head(s):

Michael Williams

Testimonials

The team stands out for its great expertise and its provision of high-quality legal services

Communication is great; team members are always very accessible

John Lee and his team are focused on the needs of the client to an exceptional extent; they always get the job done and meet the agreed deadlines

John Lee is an impressive lawyer who goes above and beyond to deliver results and meet the needs of his clients

Chris Williams is an excellent lawyer and a trusted business partner; he is technically excellent, and can understand his clients’ industry and the business challenges they meet

Siabon Seet leads a truly excellent team

Rebecca Dunn is highly competent and is the product of the very best qualities of the team which has trained her

Key clients

Allied Pinnacle Pty

Aristocrat Technologies

BASF Group

Bed Bath & Beyond

Caffitaly System SpA

Calico

Citigroup

Clinical Laboratories

Edgewell Personal Care

Encompass Corporation Pty

Healius

Imdex

iNova Pharmaceuitcals

Johnny Padgett and Lori Monahan

Motion Picture Association of America/ Australia New Zealand Screen Association/ Alliance for Creativity and Entertainment

Sachin Tendulkar/ SRT Sports Management Pvt

Neutron Holdings

Qudos Mutual

Red Bull

ResMed

State Street Global Advisors

Take-Two Interactive

Woolworths Holdings

Work highlights

  • Acting for Encompass and SAI Global on a high-value case regarding software patentability brought against InfoTrack, SAI Global’s main competitor.
  • Representing the BASF Group in a long-standing patent case brought against SNF Australia.
  • Advising State Street Global Advisers on its high-profile case over the promotion in Australia of a replica of SSGA’s Fearless Girl statue that sits outside the New York Stock Exchange.
  • Advising former Indian cricket captain Tendulkar and SRT Sports Management Pvt on a false endorsement and sponsorship dispute with global sports equipment and clothing supplier Spartan.
  • Advising subsidiaries of Imdex, Australian Mud Company and Reflex, on successfully conducting a patent enforcement program concerning mineral exploration technologies.

Herbert Smith Freehills

Herbert Smith Freehills’ team is acclaimed for ‘the strength of expertise of lawyers across all levels of the firm’s structure’. The group has a well recognised reputation for its handling of significant transactions and high-profile litigation - it has had a role in many of the leading cases in the pharmaceuticals and technology arenas. This is in addition to its ability to handle multi-jurisdictional cases and it also has a substantial number of patent and trade mark attorneys in the department. ‘Market leader beyond doubtSue Gilchrist heads the practice and is leading a team representing Motorola Solutions in patent and copyright infringement proceedings brought against Hytera before the Federal Court of Australia. Dual-qualified Rebekah Gay  is ‘a force to be reckoned with’ in the pharmaceuticals space, where she is the lead acting for Ariosa Diagnostics in patent infringement proceedings relating to the client’s non-invasive prenatal test. Kristin Stammer is noted for her expertise in all types of IP- and technology-related transactions. Highly visible in the litigation arena, the ‘exceptionalShaun McVicar, Patrick Sands and senior associate Emma Iles are recommended for their ability to handle complex contentious matters. Celia Davies departed from private practice in June 2019.

Practice head(s):

Sue Gilchrist

Testimonials

Definitely leaders on the Australian IP market

Apart from the fact that all team members have exceptional knowledge of IP law and its practical implications, they are also delightful to work with

Herbert Smith Freehills provides great commercially driven advice to clients – the team is great not only at handling disputes, but also at avoiding them, where possible

Shaun McVicar and his team are incredibly knowledgeable on all matters relating to patent litigation, and are able to balance the unique demands posed by Australia-based litigation with the needs of clients litigating around the rest of the world

The firm’s IP practice in Melbourne is one of the strongest teams in Australia: partners and senior lawyers alike are experienced, knowledgeable and commercially astute

Shaun McVicar is very attentive to his clients, personable, and has built a great team around himself

Patrick Sands and Shaun McVicar adopt a hands-on approach to handling cases

Emma Iles is a fantastic associate who has proven the high level of her skills time and time again

Sue Gilchrist is a brilliant IP litigator, who provides pragmatic advice focused on achieving solutions

Kristin Stammer provides great front-end IP advice

Kristin Stammer is an amazing lawyer who always makes herself available for clients; Kristin combines great intellect with practicality and pleasant manners

Senior associate Tess Mierendorff is highly skilled in patent licensing work

Key clients

Ariosa Diagnostics

Motorola

Hanwha Q Cells

Apotex

Seven West Media

Anchorage

Tabula Rasa HealthCare

Caltex Australia

Polarcus

Lorna Jane

Treasury Wine Estates

Work highlights

  • Acting for Ariosa Diagnostics on patent infringement proceedings in the Federal Court of Australia; the case concerns the client’s “Harmony” non-invasive prenatal test.
  • Representing Motorola Solutions in  patent and copyright infringement proceedings brought against Hytera.
  • Acting for Hanwha Q Cells on patent infringement proceedings against three global competitors – JinkoSolar, Longi Solar, and REC Group.
  • Advised Caltex Australia on the negotiation of its long-term strategic alliance and associated arrangements with leading Australian retailer Woolworths; work included advice on various related trade mark licences, among other matters.
  • Representing retail company Lorna Jane in Federal Court proceedings initiated by patentees in relation to an activewear range.

King & Wood Mallesons

King & Wood Mallesons handles contentious and non-contentious issues across a wide range of sectors, such as technology, retail, consumer goods, life sciences and pharmaceuticals, and agribusiness. The team has handled a number of key mandates in the health and pharmaceuticals industries; of particular note in the patent litigation space is the work of Melbourne-based practice head Matthew Swinn and Sydney-based Kim O’Connell. The group has represented Sigma Company and Alphapharm Pty in long-running patent litigation regarding an antidepressant medication. Also significantly contributing to the strength of the IP practice is the firm’s office in Brisbane, where John Swinson is a name to note. The group is equally adept at handling IP-focused transactions; Sydney-based Scott Bouvier leads the commercialisation practice and has attracted praise from clients for his ‘highly practical approach’ to resolving issues. Also noted are Katrina Rathie, Cate Nagy and special counsel Caroline Ryan.

Practice head(s):

Matthew Swinn

Testimonials

Outstanding performance, coupled with deep expertise and high-quality services which are second to none; the practice is great at handling critical matters even of truly niche nature

Team members have in-depth knowledge of intellectual property law and adopt a very practical approach to reaching resolutions to IP disputes

Scott Bouvier is known as a leader in the IP law field, but is also a delight to deal with at a personal level

Scott Bouvier is an outstanding commercial and IP lawyer with a very pragmatic approach and great focus on the needs of his clients

Senior associates Vineetha Veerakumar and Melissa Anderson are all outstanding lawyers who pay high attention to detail

Cate Nagy and Luke Hawthorne are great at handling trade mark disputes

Key clients

Telstra Corporation

Nestlé / Nespresso

LG Electronics

Microsoft Corporation

The University of Sydney

eBay/ PayPal

WoolWorths

Procter & Gamble

The Commonwealth Scientific and Industrial Research Organisation (CSIRO)

Arnott’s / The Campbell Soup Company

Work highlights

  • Represented Sigma Company and Alphapharm Pty in patent infringement litigation relating to a patent owned by Wyeth.
  • Representing The University of Sydney in litigation concerning patent licences and allegations of copyright infringement relating to innovative technology aiming at detecting glaucoma and multiple sclerosis.
  • Acting for Spirits International B.V. on a case concerning ownership of the Stolichnaya vodka trade mark.
  • Represented Sandoz Pty in unprecedented patent litigation regarding secondary medical use of patents for biologic therapy.
  • Representing Arrow Electronics Australia Pty in a Full Court case regarding patent validity and the general patentability requirement for an inventive step and non-obviousness of the invention.

Ashurst

Led by the ‘simply amazingLisa Ritson, the IP department at Ashurst handles a wide-ranging spectrum of both contentious and non-contentious matters. The group advises on issues concerning anti-counterfeiting, advertising and brand ownership and protection, food labelling and regulation, regulation of therapeutic goods, cosmetics and devices. The team has a noteworthy reputation in the life sciences and biotechnology sectors. Kellech Smith and counsel Joanna Lawrence are singled out by clients for being ‘prominent figures on the IP litigation scene in Melbourne’. Also recommended for ‘the high quality of his market-leading IP work’ is recently promoted partner Stuart D’Aloisio, whose practice encompasses both litigation and transactional work. The Sydney office has bolstered its capabilities in the contentious IP space with Nina Fitzgerald, who joined from Deacons in Hong Kong. The team has however undergone changes: Mary Padbury retired from the partnership,  Grant Fisher and Andrew Rankine departed to Corrs Chambers Westgarth and Jones Day, respectively.

Practice head(s):

Lisa Ritson

Testimonials

The strength of the team lies in its cohesiveness, which is combined with team members’ top-notch legal skills and experience

The team is highly skilled in handling complex appeal proceedings – there are barely any surprises when it comes to the hearing stage

Ashurst’s IP team actively works closely with clients to achieve the best outcome for their business; everyone on the team is honest, hardworking, experienced and very capable

The team produces top-quality documentation

Anita Cade is a standout: she has a fantastic combination of excellent legal skills, management skills, understanding of clients’ needs, which are all coupled with an unwavering drive to work hard to achieve the best results for her clients

Kellech Smith is incredibly quick at researching matters and assessing critical evidence; she also makes sure to keep her clients involved and up-to-date

Joanna Lawrence is the go-to person for all trade mark matters; she also uses her years of experience in the field to provide carefully considered and well-researched advice

Key clients

Apotex

Combe International

Condé Nast Publications

The Kellogg Company

KitchenAid

Merisant

Moroccanoil Israel

The Government of New South Wales

PGS Australia

Samsung Bioepis

Sun Pharma ANZ

The Goodyear Tire & Rubber Company

Work highlights

  • Acted for The Goodyear Tire & Rubber Company on its trade mark opposition and infringement case brought against UK company Dunlop Aircraft Tyres.
  • Acting for The Kellogg Company on a number of trade mark opposition matters.
  • Represented Moroccanoil Israel in the first instance hearing and in an appeal hearing before the Federal Court of Australia; the case concerned the registrability of a number of the client’s trade marks and the misleading and deceptive conduct by Aldi in relation to copycat products.
  • Representing Sun Pharma ANZ in complex patent litigation before Australia’s Federal Court relating to the cholesterol-lowering drug Lipidil.
  • Acting for Samsung Bioepis on proceedings before the Federal Court of Australia and the High Court of Australia relating to Pfizer’s biological drug Enbrel (etanercept) .

Corrs Chambers Westgarth

The ‘pragmatic’ team at Corrs Chambers Westgarth is singled out for its ‘excellence across all areas of IP law’ and its ability to handle complex cross-border mandates. Sector-specific expertise include life sciences, technology, luxury and consumer goods. The national group is headed by Kate Hay, who stands out for her significant experience in patents, trade marks and copyright litigation. Hay is jointly leading a Melbourne-based team with the ‘fantasticStephen Stern acting for Danish pharmaceutical company Lundbeck on a long-running pharmaceutical patent dispute. The ‘dependable and strategically savvyOdette Gourley stands out for her work in the pharmaceutical and sports industries. The team has been growing; of particular note is the arrival of Grant Fisher, who joined from Ashurst in November 2018. Fisher is part of the team led by Gourley, acting for Merck Sharp & Dohme Corp and MSD Australia Pty on a significant cross-border challenge to patents rights held by Wyeth relating to pneumococcal vaccines. Eugenia Kolivos and Jürgen Bebber are also recommended.

Practice head(s):

Kate Hay

Testimonials

The team is approachable, quick and is always on point with its excellent advice’

Corrs Chambers Westgarth is great at handling trade mark registrations globally; apart from the team’s own expertise, its referral network is also helpful

Corrs Chambers Westgarth’s IP team has capabilities across all IP matters; the group is generally pragmatic in its advice and flexible in its approach to legal services

Stephen Stern is a brilliant operator

The exceptional Odette Gourley provides technical and commercial advice of unparalleled quality

Odette Gourley is the absolute standout when it comes to solid legal and highly technical IP advice; she understands the demands of multinational organisations as well as the international legal issues which they encounter

Eugenia Kolivos is a strong lawyer who understands the commercial drivers of the client’s business

Jürgen Bebber has proven instrumental in managing his clients’ global trade mark registration; his advice is timely, accurate and commercially minded

Jürgen Bebber is very pragmatic and gives considered and commercial advice on trade mark matters; he is very efficient in focusing on the core legal issues at hand

Kate Hay is a strong advocate and has outstanding IP knowledge’

Kate Hay and Jürgen Bebber make a great team

Key clients

JinkoSolar

Major League Baseball

Merck Sharp & Dohme Corp./ MSD Australia Pty

Tasmanian Alkaloids

Cipla

AFT Pharmaceuticals

Sportsbet

Mirvac

Lacoste

Caterpillar Inc.

Cartier

Christian Dior Couture

Louis Vuitton

LVMH Perfumes and Cosmetics

Ferrari

Hermès

Versace

Prada

Lundbeck

Cargill

REA Group

7-Eleven

Work highlights

  • Acting for Merck Sharp & Dohme Corp and MSD Australia Pty on challenging patents of Wyeth (owned by Pfizer) relating to pneumococcal vaccines.
  • Acting for Major League Baseball Properties on a trade mark dispute with Philip Morris International.
  • Acting for Danish pharmaceutical company Lundbeck on a patent dispute involving multiple other pharmaceutical companies.
  • Assisting 7-Eleven with issues concerning the enforcement of its trade marks rights across Australia.
  • Representing Jinko in patent infringement and validity proceedings regarding the supply of PERC solar cells.

Griffith Hack

Griffith Hack fields a specialist practice solely dedicated to IP work which is spread across its offices in Melbourne, Sydney and Perth. Clients are assisted  with all matters relating to trade marks, including clearance, registration, enforcement, and contentious issues. It handles international portfolio management including filing and prosecuting trade marks. The group also provides expertise on patents and patent analytics, designs, and domain names. Key figures on the team for contentious IP work are Brisbane-based Kellie Stonier and Sydney-based Derek Baigent, who jointly heads the team with Anne Makrigiorgos from Melbourne. Nicola Scheepers is a key contact for strategic trade mark advice. On team changes,  in July 2018, Andrew Goatcher returned to the Melbourne office after three years at Cornwall Stodart and is now the principal of the law and trade marks group and in November 2018 Susan O’Connor left to accept an appointment at the Federal Court of Australia.

Practice head(s):

Derek Baigent; Anne Makrigiorgos

Key clients

Aristocrat Technologies Australia Pty

Virgin Australia

BASF SE

Bayer Aktiengesellschaft

Sanrio Co.

Suntory

Rio Tinto

CSR Building Products

Sony Interactive Entertainment

Work highlights

  • Defending Sony Interactive Entertainment in high-profile patent litigation proceedings before the Federal Court.
  • Assisting BASF SE with its appeal against a decision of the Australian Patent Office to allow an amendment to The Lubrizol Corporation’s patent during opposition proceedings.
  • Acts for pharmaceutical company Allergan on brand enforcement and trade mark issues; work includes trade mark infringement proceedings brought against Selfcare IP Holdings before the Federal Court.
  • Acting for CSR Building Products in Federal Court patent infringement proceedings initiated against Steadiform Pty.
  • Representing Security Communication Solutions International Pty Ltd in patent infringement proceedings commenced by Sure Technologies Pty.

Minter Ellison

Minter Ellison’s national IP group is recommended by clients for ‘its proactive approach and clear communication’. In addition to taking on IP litigation, the team also handles patent and trade mark registrations and IP commercialisation matters. The group is led by Melbourne-based Robert Cooper, who is singled out  for his ‘remarkable case management and strategy-developing skills’. The team members have experience across a number of areas; Sydney-based John Fairbairn is recommended for his work concerning privacy-related and copyright matters, especially in the media and entertainment sectors, while Wayne McMaster is of particular prominence in the life sciences sector. Also in the life sciences and pharmaceuticals area, ‘top-class operatorSimone Mitchell and Nigel Lokan joined the Sydney office from K&L Gates in spring 2019. Recently promoted partner Jonathan Kelp and Shyama Jayaswal are also key figures on the team in Melbourne.

Practice head(s):

Robert Cooper

Testimonials

The team provides strategic and commercial advice, and is also great at anticipating and proactively mitigating risks associated with a certain course of action

Team members are responsive and easy to work with; they think out of the box and are willing to come up with creative legal arguments

The team is knowledgeable, experienced, and hardworking; it is also proactive both in terms of helping to drive the litigation process on the client’s side and in terms of adopting a particular legal strategy

Communication is always clear, regular, and relevant

Everyone on the team is dedicated, articulate, and highly professional

John Fairbairn is an expert advisor on copyright and privacy matters and has a deep knowledge of the media and entertainment industry, including fair dealing, licensing, collecting societies and brand protection

Senior associate Jaimie Wolbers is a name to watch in the future

Senior associate Amy Surkis is proactive, clear, and a pleasure to work with; she takes the time to explain what needs an explanation and does a very good job at keeping clients in the loop

Key clients

Bristol-Myers Squibb

Foxtel

Bayer HealthCare LLC

Armani

Qantas

Singtel Optus Pty

Copyright Agency

The Australian Government

Mylan

Hospira / Pfizer

Rio Tinto

Thales

Free TV

Work highlights

  • Representing Hytera Communications and Hytera Australia Pty in patent and copyright infringement proceedings initiated by Motorola Solutions in relation to Motorola’s source code.
  • Represented Calidad Group in bet-the-company litigation concerning patent infringement claims brought by Japanese conglomerate Seiko Epson Corporation.
  • Represented Alphapharm Pty in successfully resisting an interlocutory injunction application brought before the Federal Court by Sanofi-Aventis Australia and Sanofi-Aventis Deutschland in relation to the launch of Alphapharm’s insulin glargine injector pen product.
  • Representing Pfizer Australia Pty as an exclusive licensee and Hospira as a patentee in asserting a patent relating to a drug against InterPharma Pty in the Federal Court.
  • Represented Foxtel in proceedings in the Federal Court, which led to the nationwide blocking of pirate websites The Pirate Bay, Torrentz, TorrentHound and isoHunt.

Norton Rose Fulbright

As part of the firm’s global IP group, Norton Rose Fulbright's IP team in Australia is appreciated for its ‘high-quality commercial advice’. Teams in Sydney and Melbourne are recommended by clients for their ability to handle complex, cross-border work of a contentious or advisory nature. The ‘truly impressiveFrances Drummond specialises in trade mark law, handling all issues regarding portfolio management, enforcement and exploitation. Drummond jointly heads the national practice with Cameron Harvey, who takes the lead on contentious matters. Other key contacts include Georgina Hay, who assists clients with brand and other IP asset management, and Jackie O’Brien, who often assumes a managing role in litigation, most recently leading a team representing Aldi Foods Pty and Aldi Pty in a trade mark case against Moroccanoil Israel. Senior associate Alyson Poole is also noted.

Practice head(s):

Frances Drummond; Cameron Harvey

Other key lawyers:

Georgina Hay; Jackie O’Brien; Alyson Poole

Testimonials

Frances Drummond and Georgina Hey are very impressive and great to work with; Frances’ ability to provide direct and commercial legal advice tailored to the client’s business and risk profile is extremely useful; Georgina’s detailed and methodical approach to legal issues is much appreciated

Key clients

Accolade Wines

Aldi

Australia Post

Caltex

Carnival plc

Morphe

Country Road

GlaxoSmithKline Beecham

Luxottica Retail Australia

Koch Industries

Murray Goulburn Co-operative

Nando’s

Royal Bank of Canada

Target

Quay Australia

Reflector Entertainment

Qantas Airways

Goodman Fielder Pty

Work highlights

  • Representing Aldi Foods Pty and Aldi Pty in a trade mark dispute with claimant Moroccanoil Israel.
  • Acted for Qantas Airways on a trade mark opposition and a subsequent appeal filed by Ingeus Australia Pty and Ingeus Pty in relation to the client’s trade mark for Qantas Assure.
  • Acting for Sarb Management Group Pty on an appeal to the Federal Court, brought by a competitor in relation to the competitor’s opposition to the grant of Sarb’s patent application relating to a vehicle overstay detection method, system and product.
  • Providing global portfolio management advice to Goodman Fielder Pty.
  • Advised Hammons Holdings Pty on the IP aspects of its successful tender with RMS to operate the Sydney Harbour Bridge ‘BridgeClimb’ tourism activities.

Addisons

The team at Addisons has a focus on trade mark prosecution and protection together with IP commercialisation projects and copyright disputes. Practice co-head Donna Short comes in for praise for her ‘meticulous eye for detail’ and ‘valuable commercial advice’. Jointly spearheading the team, Karen Anne Hayne handles a varied range of IP issues for a client base including notable household names, such as Nintendo and Virgin Enterprises. The team is especially experienced in relation to consumer goods and services and consumer protection issues.

Practice head(s):

Karen Anne Hayne; Donna Short

Testimonials

The team stands out for the high quality of its legal services; this includes the speed of communication and the proactive approach which the team adopts in achieving a favourable outcome for its clients

The practice truly specialises in IP law and has up-to-date expertise in the field

Donna Short is exceptional across multiple IP areas; she is personable and highly skilled, and demonstrates a high level of expertise in delivering high-quality results

Donna Short has a sharp mind and demonstrates creativity during negotiations of complex agreements concerning IP issues

Key clients

Challenger Group Holdings

Blue Diamond Growers

Medisam Pty

FLK IT Over Pty

Fin Control Systems Pty Ltd

OFX Group

Nintendo of America

Virgin Enterprises

Hivita Pty

Playboy Enterprises International

Monash IVF Group

William Inglis and Sons

CyberKnife Australia

IPLA Trademark Law

Formula One

The Hollard Insurance Company Pty

Mulpha Group

Selekta Games Pty

Bega Cheese

Stockland Development Pty

ClearView Wealth

Work highlights

  • Acting for Fin Control Systems Pty on patent and design infringement proceedings in the Federal Court.
  • Acted for Bega Cheese in a Federal Court dispute with The Kraft Heinz Company relating to a peanut butter product and the use of various trade marks and trade dress by each company.
  • Handling trade mark prosecution proceedings for Australian Ethical Investment.
  • Assisting Virgin Enterprises with all IP issues arising as a result of its activities in Australia.
  • Advising Challenger Wealth Limited on matters regarding its trade mark portfolio.

Banki Haddock Fiora

Banki Haddock Fiora’s boutique practice demonstrates excellence across a wide range of areas covering contentious issues, transactional work, registration matters and portfolio management. The ‘highly competent’ Kate Haddock offers many years of experience in copyright law and Margaret Shearer is adept at handling complex issues in the trade mark protection space. Julie Robb takes the lead on the contentious IP side and Simon Kneebone has developed a niche expertise in design laws. The group assists clients in an array of sectors among which are publishing, food and beverages, fast-moving consumer goods, pharmaceuticals and music.

Practice head(s):

Kate Haddock; Julie Robb; Margaret Shearer

Other key lawyers:

Simon Kneebone

Testimonials

The team at Banki Haddock Fiora is enthusiastic, committed and hardworking

The team is great at developing deep relationships with clients and at understanding the clients’ particular needs

Kate Haddock has incredible knowledge and understanding of her clients’ business and their commercial priorities; Kate is one of Australia’s premier copyright lawyers

Key clients

Copyright Agency

Pfizer/ Zoetis

Smartair Diffusion Pty/ Fusion HVAC Pty

Hanesbrands

AgriFutures Australia

Pi Design

Kerry Hallihan

Thomas Duncan-Watt

Work highlights

  • Representing the Copyright Agency in proceedings in the Copyright Tribunal of Australia.
  • Acting for Pfizer and Zoetis on trade mark issues in Australia.
  • Represented fashion photographer Kerry Hallihan in pursuing a copyright infringement claim brought against a number of parties before the Federal Circuit Court of Australia.
  • Advising Smartair Diffusion Pty and Fusion HVAC Pty on issues regarding trade mark and design prosecution, portfolio management, IP licensing and commercialisation.
  • Handling a varied scope of trade mark-related issues for Hanesbrands across Australia.

Bird & Bird

A particular strength of Bird & Bird’s IP team lies in its capacity to handle complex litigation — a space in which the team has scored recent success for clients such as GlaxoSmithKline and Novartis. In addition, the department is praised for its ability to provide effective cross-border advice due to the firm’s strong global presence. The team members have experience across a variety of sectors, such as retail, life sciences, pharmaceuticals, healthcare, consumer goods, education and technology. Patent litigator Jane Owen heads up the practice and the 'highly experiencedLynne Lewis is noted along with Shehana Wijesena and senior associate Rebecca Currey.

Practice head(s):

Jane Owen

Testimonials

Good practical advice provided at all times

Bird & Bird’s IP team brings a strong mix of lawyers, all of whom have the intellectual firepower to handle large and complex IP matters

A good strategic thinker, Jane Owen is known for her sensible and savvy advice; she is well supported by counsel Shehana Wijesena and senior associate Rebecca Currey

Key clients

GlaxoSmithKline

Garvan Institute of Medical Research/ Australian Genomic Cancer Medicine Centre

Global Blue/ First Currency Choice

Take-Two Interactive

Mattel

Teva Pharmaceutical Australia Pty/ Teva Pharmaceutical Industries

Elixinol Global

Howden Group

Gram Engineering Pty

Mink Pink Fashion Group Pty

University of Wollongong

University of New South Wales

Shimano Australia

Generic Health Pty/ Lupin

Council of the City of Sydney

Alembic Pharmaceuticals

Jubilant Pharmaceuticals

Dongkuk Steel

Target Brands

De Beers UK

Macquarie University

Abbey Laboratories Pty

Medacta Australia Pty

Hetero Australia Pty

IPC Global Pty

AUB Group

Tilray

Qube Bulk Pty

Real Estate Institute of New South Wales

Work highlights

  • Acted for GlaxoSmithKline and Novartis Consumer Healthcare on proceedings commenced by the Australian Competition and Consumer Commission relating to representations concerning the advertising and marketing of two sub-brands of Voltaren pain relief products.
  • Acting for Dongkuk Steel on a patent infringement dispute with BlueScope regarding patents owned by BlueScope Steel in relation to its rolled steel products.
  • Acted for IPC Global Pty on a copyright and breach of confidentiality case brought against Pavetest Pty before the Federal Court in relation to computer source code’s coverage by copyright protection.
  • Acted for Gram Engineering Pty on patent infringement proceedings in the Federal Court regarding the client’s fence plinth product.
  • Handling cross-border matters relating to Elixinol Global’s trade mark portfolio across a number of jurisdictions.

DLA Piper

In Sydney, the ‘exceptional’ practice head Melinda Upton leads DLA Piper's IP and technology department which has ‘a true global reach like no other firm on the market’. The group can operate with ease across multiple jurisdictions, which is evidenced in its IP work for high-profile brands such as Fitbit, for which the team is currently handling a number of issues relating to trade mark infringement, counterfeiting and parallel imports. The department is equally well-versed in acting on contentious as well as transactional issues. In the contentious space, Nicholas Tyacke is a key figure who successfully led a team acting for Wyeth and Wyeth Australia on a patent dispute in the life sciences space. In Melbourne, ‘remarkable’ IP litigator Robynne Sanders’ notable client base consists of those in the medical devices, engineering and technology sectors, among others. Sydney-based senior associate Jessie Buchan is ‘very knowledgeable on brand protection and IP enforcement matters’.

Practice head(s):

Melinda Upton

Testimonials

The team is always responsive and quick, and always meets deadlines

Team members have a thorough understanding of their clients’ business objectives and provide pragmatic advice, keeping those business goals in mind at all times

Lawyers on the team are very hardworking, strategically focused, and meticulous in terms of attention to detail and preparation

Melinda Upton is a highly trusted business partner and collaborator. While working with Melinda, I have always found her to be a highly efficient and with excellent client skills. She always puts the client first and provides commercial and pragmatic advice

Senior associate Jessie Buchan has provided excellent advice in regard to branding strategies and IP portfolio management. She is very responsive and easy to work with, and goes above and beyond to ensure that clients’ needs are understood, often in the face of very tight deadlines

Nicholas Tyacke is very focused, completely committed to achieving his clients’ objectives, and examines closely the details of the case. He leads a very hardworking and highly skilled team that works tirelessly

Key clients

Pfizer/ Pfizer Ireland/ Pfizer Australia

ResMed

Wyeth/ Wyeth Australia

Neurim Pharmaceuticals (1991)

Spin Master

Newell Rubbermaid

Asos

Awayco

Fitbit

Gucci

Hilton International Asia Pacific Pte

Work highlights

  • Acted for Wyeth and Wyeth Australia on a number of high-profile patent cases in the pharmaceutical space.
  • Acting for Pfizer on a biosimilar patent litigation concerning the client’s patents relating to the process of producing biopharmaceutical etanercept.
  • Acting for Neurim Pharmaceuticals (1991) on patent amendment, infringement and revocation proceedings relating to the client’s patent covering its prolonged-release melatonin product.
  • Acting for ResMed on the Australian aspects of its multi-jurisdictional dispute with Fisher & Paykel Healthcare relating to humidifier technology.
  • Representing Spin Master in the Australia-based case forming part of its multi-jurisdictional dispute with Mattel over the client’s Bakugan product.

Jones Day

Forming a fully integrated part of the firm’s global IP group, Jones Day’s practice in Australia is headed up by Lisa Taliadoros, who is based in the firm’s Melbourne office and handles highly technical patent disputes for clients. Also adept at handling complex patent litigation working from Sydney, of counsel Anthony Muratore, ‘certainly a superstar in the area of IP law’, stands out for his decades-long experience and strong reputation. The group has a particular strength in the pharmaceutical and life sciences space, where the Sydney-based team has been bolstered through the addition of patent litigator Andrew J. Rankine, who joined from Ashurst in February 2019. In addition to pharmaceuticals, team members have sector-specific expertise in biotechnology, mining, building and construction. Associate Stephanie Wang is also a noted team member.

Practice head(s):

Lisa Taliadoros

Testimonials

The team is highly focused and with exceptional skills in pharmaceuticals and life sciences

Lisa Taliadoros and Tony Muratore are exceedingly experienced and highly skilled from a legal and scientific perspective. They are not afraid to challenge the known legal boundaries in the pursuit of their clients’ best interests, and do so with great skill and dedication

Key clients

Merck & Co.

ToolGen

Zoetis UK

Celgene Corporation

BioMarin Pharmaceutical

Work highlights

  • Acting for global biotechnology company ToolGen on issues arising in relation to the patent application process for its cutting-edge genome editing technology.
  • Acting for pharmaceutical company Merck & Co. on matters regarding the validity of a patent for compounds for the treatment of hepatitis C.

Maddocks

The ‘technically astuteBrendan Coady heads up Maddocks’ IP team from Sydney. The department acts on both disputes and advisory work regarding all types of IP, which includes patent litigation, trade mark portfolio management, licensing, and advertising. Team members handle not only complex issues in more traditionally strong industries such as retail, healthcare, life sciences and TMT, but also deal with education sector-focused IP commercialisation work. Of note is the team’s continued expansion of government-driven IP projects in industries such as defence, health, and services. Ben Miller joined the Sydney office from Ashurst in February 2019; Miller has particular expertise in life sciences. Canberra-based Anthony Willis and Melbourne-based Robert Gregory are also noted.

Practice head(s):

Brendan Coady

Testimonials

The team provides a unique combination of technical excellence with commercial pragmatism

Team members are IP experts which take the time to genuinely understand their clients’ commercial and strategic objectives so that they can provide IP advice in line with these

Brendan Coady is a pleasure to deal with

Key clients

IP Australia

Aristocrat Technologies

Commonwealth Department of Defence (including the Defence Science and Technology Group)

Sydney Airport

Commonwealth Department of Human Services

Abbott Laboratories

Commonwealth Department of Health

Digital Transformation Agency

Netcomm Wireless Limited

Arrow Pharmaceuticals

ResMed

Alkem Laboratories

Pharmacor

Besins Healthcare

Norbrook Laboratories

E-Chem Technologies

Concrete Preservation Technologies

Garvan Institute of Medical Research

The Charlie Teo Foundation

Juno Pharma

St Vincent’s Hospital Sydney

Work highlights

  • Advising the Commonwealth Department of Defence on its Core Simulation Capability Acquisition (CSimC).
  • Assisting Black Dog Institute with trade mark advice concerning the client’s multiple innovative programmes, strategies, apps and e-mental health programmes.
  • Acted for Pharmacor, the Australian subsidiary of global generics business Alkem Laboratories, on the launch of its rasagiline mesylate products in Australia for the treatment of Parkinson’s disease.
  • Advised the Digital Transformation Agency on the Commonwealth Government’s whole-of-government agreement with IBM for a range of hardware, software, cloud solutions and other services.
  • Advising Arrow Pharmaceuticals Pty on its defence of an appeal by Novartis AG to the Federal Court of Australia against the refusal by the Commissioner of Patents to grant a patent for formulations of fingolimod, sold by Novartis as its multiple sclerosis drug Gilenya.

McCullough Robertson

McCullough Robertson attracts an ever-increasing volume of referrals for internationally focused work, in part due to its independent status. Brisbane-based department head Belinda Breakspear and her team are recommended for handling matters on the trade mark front in particular -  the team operates a significant trade marks practice, particularly trade mark portfolio management. Litigation work is an area of expertise for Tim Case and Peter Stokes and the team members are well versed in advising clients in industries such as pharmaceuticals, agriculture, TMT, and the public sector. On the team front; in Sydney, commercial lawyer Alison Walshe joined from Norton Rose Fulbright and the Brisbane office welcomed special counsel Jake Grant, formerly an in-house counsel and Michelle Betschart from Spruson & Ferguson Lawyers.

Practice head(s):

Belinda Breakspear

Testimonials

The team is great at building solid relationships with its clients, which is complemented by its good understanding of what companies need from a business and legal perspective. Everyone is very responsive and accessible, and provides reliable guidance and support quickly

McCullough Robertson combines a great reputation in the IP field, which is coupled with high-quality service and personable approach to clients’ issues and interests

Belinda Breakspear and her team are extremely helpful. I find it very easy to pick up the phone if I am having any issues or IP-related questions. Another thing I value most about my relationship with the firm, and Belinda Breakspear in particular, is the high level of honesty in providing legal advice.  I always feel Belinda has her clients’ best interest at heart

It is always a delight to deal with John Kettle, who is one of the most approachable lawyers one could find; his experience in Europe and Australia allows him to cover a very broad range of matters.

Key clients

Flight Centre Travel Group

Ausco Modular Pty

Australian Agricultural Company

Russell Mineral Equipment Pty

Une Piece Pty

Queensland Gastroenterology Pty

Wagners Holding Company

TechnologyOne

Work highlights

  • Advising Flight Centre Travel Group on issues relating to its trade mark portfolio worldwide.
  • Acting for construction company Ausco Modular Pty on trade mark portfolio management issues in Australia and New Zealand.
  • Advising Australian Agricultural Company on IP-focused strategy worldwide.
  • Acting for Ms Claire Dunne, the owner of women’s magazine Graziher, on a dispute with opponent Mondadori International, the company which has rights over the Gratzia magazine title in Australia.
  • Acting for Queensland Gastroenterology Pty on a complex IP infringement matter.

Piper Alderman

Split between the firm’s three offices across Sydney, Melbourne and Adelaide, Piper Alderman’s IP team attracts commendation from clients for its ‘seamless integration and high-quality legal analysis’. The department’s client roster is varied and includes public and private companies, government departments, public-sector research organisations, not-for-profit organisations, and individuals. The group is handling an increasing number of mandates in the fintech sector, as well as in other innovation-reliant industries. Led by practice co-head Tim O’Callaghan, the Adelaide-based team focuses on the food and beverage industry and ‘thrives from the strong leadership and knowledge of O’Callaghan’. In Melbourne, ‘very experienced’ department co-head Tim Clark has developed a niche in IT and telecoms, life sciences and biotechnology, and the IP aspects of social media. Sarah Johnson in the Sydney office is developing the firm's cross-practice, not-for-profit sector group.

Practice head(s):

Tim Clark; Tim O’Callaghan

Other key lawyers:

Sarah Johnson

Testimonials

Piper Alderman’s team thinks outside the box and comes up with creative solutions

The team has access to a range of experts at multiple levels, which is extremely beneficial, as it allows a quick turnaround, regardless of whether the issue is of a more general or specific nature

The quality of work from the team is very consistent among its members.  The team is very responsive, acts timely, and provides practical advice

The knowledge and various skill sets of individuals on the team are very impressive, which creates a sense of trust in the work that they handle for clients

Tim O’Callaghan is an excellent strategist who thinks several moves ahead, and provides clear and direct advice rather than sitting on the fence

The team thrives from the strong leadership and knowledge of Tim O’Callaghan.  His ability to evaluate problems and to see the bigger picture is a standout quality

Key clients

Arneg Oceania Pty

Australian Digital Health Agency

Best Practice Software

Blackmagic Design Pty

EasyFlower

Fantech

Melbourne Health

Redarc Electronics Pty

Work highlights

  • Acting for Arneg Oceania Pty on obtaining an interim injunction and subsequent permanent orders against Hussmann Australia Pty; this action aimed at preventing a disclosure of the client’s proprietary information.
  • Successfully represented Easyflowers in a domain name dispute with a competing internet florist.
  • Acting for Fantech on issues regarding the protection, exploitation and enforcement of its IP rights; work included advising the client on a dispute with Systemair AB in New Zealand.
  • Assisted the Australian Digital Health Agency with the prosecution of its ‘My Health Record’ trade mark in Australia.
  • Advising Best Practice Software Pty on matters concerning trade mark protection and trade mark prosecution.

Simpsons Solicitors

Simpsons Solicitors is singled out by clients for its ‘incredibly knowledgeable’ lawyers’ strong skills in copyright litigation. The practice acts for a number of high-profile clients including Australian and international brand owners and blue-chip clients and governmental institutions. The group is equally well versed in handling trade mark-related issues. The ‘exceptionalIan McDonald is a standout name for his strong reputation in copyright law and his niche expertise in the national museums and galleries sector. The ‘simply excellentAdam Simpson has received praise for his work in the entertainment industry and other team members also have similar sector-specific backgrounds in the arts, film and TV industries. Simpson jointly leads the practice with the ‘well-connected and trustworthyJules Munro and Mark Bamford, who are all based in Sydney.

Practice head(s):

Adam Simpson; Jules Munro; Mark Bamford

Other key lawyers:

Ian McDonald

Testimonials

The team has proven great at handling plagiarism cases and providing general advice concerning author rights and contracts

The team stands out for its great work on copyright litigation, but it also combines these skills with a highly commercial approach and a focus on the long-term interests of its clients

The group is adept at assessing legal risk and risk mitigation in the IP sphere. It also communicates efficiently

This outstanding practice is unique in its breadth and depth of knowledge in the media, entertainment and arts sectors which means they deliver tailored advice to our business needs

I have always valued Adam Simpson’s knowledge, communication skills and manner. He does not speak in legal jargon, but always explains things in a manner that is easy to understand but also demonstrates the depth of his own understanding

Adam Simpson is an excellent copyright lawyer., who is also commercially minded

Certainly our key trusted adviser, Adam Simpson is one of the few specialist publishing lawyers in the country

Ian McDonald is leading copyright and defamation lawyers, who is encyclopaedic in his knowledge and a pleasure to work with.  He delivers outstanding advice in a clear and practical way that is highly valued by our team

Jules Munro is easy to deal with and provides sound commercial advice. He continues to be equally engaged with the client during all stages at all levels of the process

Adam Simpson and Jules Munro are a pleasure to deal with

Key clients

Allen & Unwin

Anindilyakwa Land Council

Australian Publishers Association

De Bono Global Pty Ltd

Frost*collective

Hachette Australia

Kobalt Music Publishing Pty

Macmillan Publishers

Macmillan Publishers Australia

Manfredi Enterprises

Maurice Blackburn Lawyers

Murdoch Books

National Film and Sound Archive of Australia

National Gallery of Australia

National Gallery of Victoria

Pearson

Riot Games

Simon & Schuster

Songs of Universal

Spiral Foods

The Intermedia Group

Universal Music Australia

Universal Music New Zealand

Verlagsgruppe Random House GmbH

Warner Chappell Music Australia

Work highlights

  • Advised members of the Pearson Group of publishing and education companies on trade mark prosecution issues.
  • Acted for health food distributor Spiral Foods Pty on issues relating to IP licensing in foreign markets and misleading advertising by competitors.
  • Assisted an Australian aboriginal land council with the protection of indigenous cultural and intellectual property.
  • Representing an Australian law firm in a high-profile dispute with a US financial services company relating to the acquisition and display of a replica of the “Fearless Girl” statue.

Spruson & Ferguson Lawyers

Split between Sydney and Melbourne, Spruson & Ferguson Lawyers ‘stands out for its professionalism, high responsiveness and quick availability’ in handling matters for clients across the world. The firm specialises in IP matters exclusively and acts on a wide spectrum of IP issues concerning trade marks, patents, designs and copyrights. On the contentious front, work includes acting for clients in proceedings concerning infringement, invalidity, passing off and misleading and deceptive conduct; IP litigation is a field of focus for Sydney-based practice head Khajaque Kortian. The team also advises on IP development and commercialisation, licensing, and audits. The group receives a large volume of referrals in sectors such as IT, telecoms, mining, medical devices, pharmaceuticals, biotechnology, and consumer products. Tim Allen and Peter Hallett are key contacts at the office in Melbourne.

Practice head(s):

Khajaque Kortian

Other key lawyers:

Tim Allen; Peter Hallett

Testimonials

Spruson & Ferguson Lawyers’s team is very thorough, practical, and takes the time to get to know and understand the client’s business.

Team members’ exceptional reputation and skills in trade mark matters put them head and shoulders above other firms.

Leadership in advising on IP for business with sophisticated and practical lens for operating companies to optimise client’s shareholder wealth.

Work highlights

  • Representing an American group of food companies in IP litigation concerning packaging, breaches of contract, and misleading advertising.

Arnold Bloch Leibler

At Arnold Bloch Leibler, ‘highly skilled strategistZaven Mardirossian leads the Melbourne-based IP department, where clients also recommend Matthew Lees, who is ‘fully across every detail of the cases he is running’. Acting for a roster consisting of both national and international clients, the team has carved out a strong reputation in IP litigation, particularly infringement matters. Team members have sector-specific expertise across industries such as retail, technology, manufacturing, life sciences, and telecoms. It also takes an integrated approach -  bringing together the expertise of lawyers from the commercial, taxation and litigation teams. In March 2019, David Robbins departed to KHQ Lawyers.

Practice head(s):

Zaven Mardirossian

Other key lawyers:

Matthew Lees

Testimonials

Arnold Bloch Leibler is a leading boutique commercial litigation firm.  Its contentious IP team is experienced and agile

Matthew Lees works 24 hours a day to ensure he gets the best results for his client.  He works around the clock to ensure that the work is completed to the highest standard, and no request is ever too much

Zaven Mardirossian is highly experienced, commercially astute, and very committed to achieving the best outcome for his clients

Key clients

Namatjira Legacy Trust

TPI Enterprises

Cygnett Pty

Fonterra Australia

BetEasy Pty/ TSG Australia Wagering Pty

Kogan.com/ Kogan Group

Peter Alexander

United Super Pty

Colman Education Foundation

Work highlights

  • Successfully acted for the Namatjira Legacy Trust in resolving Australia’s longest running intellectual property dispute concerning the copyright in the lifetime artistic works of Australian artist Albert Namatjira.
  • Representing TPI Enterprises (TPI) in Federal Court proceedings commenced by Tasmanian Alkaloids Pty, in which Tasmanian Alkaloids Pty alleges that TPI has infringed its world-first patent over a variety of “high-codeine poppies”.
  • Acted for Cygnett Pty on Federal Court proceedings in relation to Cygnett’s alleged infringement of Yes Distribution’s PowerFlo trade mark.
  • Acting for dairy nutrition company Fonterra on a large trade mark licensing dispute in the Supreme Court of Victoria against Bega Cheese.
  • Representing BetEasy Pty and TSG Australia Wagering Pty in proceedings commenced by Sportsbet Pty in the Federal Court of Australia.

Dentons

Melbourne-based Joy Atacador heads up Dentons’ IP team, which handles contentious and commercial issues relating to trade marks, patents, copyright, designs, as well as issues around social media and confidential information. The team has an impressive client base in the life sciences, hotel, leisure and retail sectors, but also advises clients across industries such as technology, media, energy, and construction. Special counsel Scott Sloan works from Sydney, and is praised for the depth of his experience, as well as for ‘his commercial and highly practical advice’. Working closely with Sloan is associate Thomas Johnston, who is also singled out.

Practice head(s):

Joy Atacador

Other key lawyers:

Scott Sloan; Thomas Johnston

Testimonials

Scott Sloan has been around for a very long time and is known for his commercially and practical savvy advice

Thomas Johnston is up-and-coming

Key clients

Bauer Media Group

Generic Partners

Starwood Capital Group

Avis Budget Group

Hilton

LG Electronics

Anya Hindmarch

Sussan Group

Windsor Smith

Work highlights

  • Acting for Generic Partners on proceedings alleging a patent infringement brought by Neurim Pharmaceuticals.
  • Acting for Bauer Media in Federal Court appeal proceedings relating to a decision by the Registrar regarding Evergreen Television Pty’s application for a trade mark.
  • Advising on all aspects involved in the commercialisation of Rapid Response Revival’s patented mini automatic external defibrillator.
  • Advising KKR and Upfield on the acquisition of an extensive patent, trade mark, design rights and copyright portfolio.
  • Advising Starwood Capital on market entry, licensing brand protection and other IP-related issues.

Gadens Lawyers

The IP and technology department at Gadens Lawyers has built a reputation for handling complex, contentious matters. The team acts with the same level of ease for all types of domestic and international clients, including start-up companies as well as high-profile brand owners. The team is equally well versed in advising on non-contentious matters such as IP commercialisation. In Melbourne, Adam Walker jointly heads the practice with Brisbane-based Michael Owens. Also noted are Rachel Sciascia in Brisbane and the recently promoted Kerry Awerbuch in Melbourne, who comes in for praise from clients for her willingness to ‘explore creative approaches to running and resourcing litigation’. April 2019 saw Hazel McDwyer join the Sydney-based office from Addisons.

Practice head(s):

Adam Walker; Michael Owens

Testimonials

The practice excels in trade mark and copyright work, particularly in relation to the fashion industry, and has a stable of well-known clients

Kerry Awerbuch is a highly engaged partner, who genuinely cares about her clients, and brings a creative approach to the management of litigation

Key clients

QUT / Medtech and Pharma Growth Centre

Down Under Enterprises International Pty/ Bush Pharmacy Pty/ New Directions Australia Pty

Chuchka Pty

Cotton On Group

Foreo/ Filip Sedic

Ironman 4×4 Pty

Thankyou Group Pty

World Expeditions Travel Group Pty

Bounce Australia Pty

Green Eco Technologies Pty

Gange Group

Work highlights

  • Acting for clients Down Under Enterprises International Pty, Bush Pharmacy Pty, and New Directions Australia Pty on proceedings concerning patent and trade mark infringements, as well as misleading and deceptive conduct.
  • Representing Chuchka Pty in copyright infringement proceedings concerning whether a handbag constitutes a “work of artistic craftsmanship” under the Copyright Act.
  • Acted for the Cotton On Group on matters concerning the management of its global trade mark portfolio.
  • Acting for Ironman 4×4 Pty on matters regarding its global trade mark portfolio across 35 jurisdictions.

HWL Ebsworth

The team at HWL Ebsworth ‘provides excellent advice’ and handles IP matters for both national and international clients looking to start operating in Australia. Key sectors of focus for the department include the public sector, media, technology, financial services, telecoms, energy, and health where it advises clients on enforcement and contentious issues. Non-contentious work includes handling trade mark and domain name registration, trade mark portfolio matters, and IP commercialisation advice. In Brisbane, Bill Singleton is recommended by clients for being ‘extremely knowledgeable and commercially astute’, while Adelaide-based Luke Dale is ‘responsive and proactive’. Matthew Craven and Jennifer Huby are other key names to note.

Practice head(s):

Luke Dale

Testimonials

HWL Ebsworth provides excellent practical advice. Everyone on the team is extremely responsive and supportive during contract negotiations in particular

Quick turnaround of advice with the necessary level of detail

Bill Singleton is a pleasure to work with

K&L Gates

K&L Gates comes in for praise by clients for its ‘commercial, pragmatic and timely advice’. The group’s lawyers and patent attorneys act in a fully integrated manner globally, which makes the firm a suitable destination for clients seeking assistance across multiple jurisdictions. The team handles a wide range of issues of non-contentious nature including portfolio management and IP filings, as well as contentious work. Fashion is one area of specialism for the group and it has also built an equally solid reputation in sectors such as life sciences, technology, sport and construction. Melbourne-based Jonathan Feder leads the team and is singled out for his ability to manage complex litigation. Also noted from Melbourne is the ‘experienced, calm and very knowledgeableSavannah Hardingham, who was recently promoted. In spring 2019, Simone Mitchell and Nigel Lokan departed to Minter Ellison, while Steven Wulff left for Mills Oakley. At the same time, the team has also recruited two senior associates — Stephen Worthley and Chris Vindurampulle. Tony Watson and Chris Round are also noted.

Practice head(s):

Jonathan Feder

Testimonials

An IP practice with both front- and back-end experience: the group’s litigation experience enable a more sound approach to portfolio management

The practice takes a refreshingly commercial and pragmatic approach to IP issues. The team is exceedingly responsive and comprehensive in the scope of its responses

Key clients

Alexander McQueen

Australian Football League

Carlisle Homes

Factory X Pty Ltd

GM Holden Ltd

Magi Enterprises Pty

R. M. Williams Pty

Seafolly Pty

SNF (Australia) Pty

Tennis Australia

Work highlights

  • Advising SNF Australia Pty on patent opposition matters in the Australian Patents Office, and patent invalidity and patent infringement proceedings in the Federal and High Court.
  • Acting for Magi Enterprises Pty on a Federal Court case brought against Luvalot Clothing Pty regarding a claim of infringement of a registered design.
  • Advising the Australian Football League on matters regarding its global brand portfolio.
  • Advised Factory X Pty on a trade mark infringement claim in the Federal Court of Australia brought against CupoNation GmbH.

Mills Oakley

Teresa Nicoletti heads up Mills Oakley’s IP, health and life sciences department, which handles both contentious and non-contentious IP matters. The practice has a well-established reputation in the healthcare and life sciences industries, in which it assists its clients with end-to-end advice. Other sectors of focus include retail, fashion, manufacturing, cosmetics, and food and beverage. Sydney-based James Lawrence is recommended for his ‘brilliant’ patent litigation skills. Also in Sydney, Melissa McGrath stands out for her experience in IP commercialisation work. Also of note, the team has experienced growth nationally. March 2019 saw Malcolm McBratney arrive at the Melbourne office from Macpherson Kelley and in April 2019, Steven Wulff joined the Brisbane office from K&L Gates.

Practice head(s):

Teresa Nicoletti

Testimonials

Mills Oakley has a dynamic IP team, which is highly responsive and provides commercially astute advice to clients

Mills Oakley’s team of excellent IP practitioners comes up with very smart and practical solutions to issues

The confident and extremely capable James Lawrence lives for IP law

James Lawrence is an exceptional IP lawyer, particularly in the area of IT and computer-related invention technology

Julian Grover is approachable and effective

Melissa McGrath is an experienced IP commercialisation lawyer

James Lawrence is brilliant at litigation and IP counselling, cutting right through to the heart of issues and suggesting very practical and intelligent solutions

Steven Wulff brings great skill to tech start-ups and is adept at addressing their particular issues — he does a great job ensuring that new and growing companies get the sort of advice that give them a real chance of success

Malcolm McBratney is a great lawyer when it comes to IP transactions — he gets deals done very smoothly

Key clients

Rokt Pte

Zetco Valves Pty

Phoenix Eagle Company Pty

The Institute of Patent & Trade Mark Attorneys Australia

Horizons (Asia) Pty Ltd

Universal Music Australia Pty/ Sony Music Australia Pty/ Warner Music Australia Pty

Mr Sandless, LLC

Wavetrain Systems AS/ Wavetrain Systems Australia Pty

MGC Pharmaceuticals

Work highlights

  • Acting for Rokt Pte on patent eligibility proceedings against a decision of the Commissioner of Patents to re-examine and then refuse registration of a computer-implemented invention for an improved advertising method.
  • Representing Zetco Valves Pty in patent infringement and revocation proceedings regarding a mechanical plumbing valve.
  • Acting for Phoenix Eagle Company Pty on proceedings concerning a breach of confidence and a breach of fiduciary duties in the Supreme Court of Western Australia.
  • Acted for Eaglestone in Federal Court of Australia proceedings alleging copyright infringements, a breach of confidence and a breach of fiduciary duties.
  • Assisting MGC Pharmaceuticals with the commercialisation of its medicinal cannabis product, CannEpil, in Australia and globally.

Shelston IP

Shelston IP advises national and international clients on all types of IP assets including patents, trade marks and designs. It advises on the commercialisation of IP and is active in litigation matters; Katrina Crooks and Mark Vincent are key contacts in this space and are leading a team acting for Hytera Communication Corporation on a copyright and misuse of information case against Motorola Solutions. Team members have expertise in sectors including consumer products, agribusiness, pharmaceuticals, life sciences and biotechnology, IT, and mining and resources.  Jacinta Flattery-O’Brien has left the team and  Jack Redfern has retired. In September 2019, foreign-qualified lawyer Alex May departed to Jones Day’s office in Melbourne. Senior associate Adrian Richards joined from boutique firm Halfords IP. Heading the wider commercial law group, Chris Bevitt is also noted.

Practice head(s):

Chris Bevitt

Testimonials

The firm has a solid reputation in the IP litigation space in Sydney

Key clients

Hytera

InfoTrack

Fuchs Lubricants (Australasia) Pty

Dyno Nobel

FLSmidth

Rimfrost

Reckitt Benckiser

Fernbrew Pty

AdiraMedica

National Ports Pty

Work highlights

  • Acting for Hytera Communication Corporation on a copyright and misuse of information case against Motorola Solutions.
  • Acting for InfoTrack Pty on Encompass Corporation Pty Ltd v InfoTrack Pty, a case concerning the patentability of computer-implemented methods.
  • Representing Fuchs Lubricants (Australasia) Pty in a patent infringement case brought by Quaker Chemical (Australasia) Pty.
  • Acted for FLSmidth A/S & Anor on a patent dispute with Weir Minerals relating to FLSmidth’s patent covering a centrifuge machine used in coal mining.
  • Acted for Fernbrew Pty and successfully defended an opposition to registration of ‘The Pirate Bay Company’ by Patron Spirits.

Sparke Helmore Lawyers

The IP and technology department at Sparke Helmore Lawyers is led by practice head Shannon Platt, who has particular expertise in patent litigation. Apart from contentious matters, the practice also advises national and international clients on matters of a non-contentious nature, such as IP audits, structuring, commercialisation, enforcement, and portfolio management. The group is active across industries such as pharmaceuticals, fast-moving consumer goods, IT, hospitality, and the public sector. Associates Vienna Jones and Tina Guan are also noted.

Practice head(s):

Shannon Platt

Other key lawyers:

Vienna Jones; Tina Guan

Key clients

Allnex Resins Australia Pty Ltd

APT Advanced Polymer Technology

Coal Services

Community First Credit Union

Craveable Brands

Crocs

The Australian Army

Electrolux Home Products

Greencross/ Petbarn / Animates

Lidl Stiftung & Co. KG

Maggie Sottero

Merck KGaA

Sandhills Publishing

Shellharbour City Council

US Government

Yarra Valley Water

Liverpool City Council

City of Parramatta Council

NSW Office of Emergency Management

Work highlights

  • Advised the Australian Department of Veterans’ Affairs on a trade mark objection relating to the word ‘repatriation’.
  • Assisted fashion retailer Maggie Sottero Designs with negotiating and finalising a trade mark coexistence agreement concerning the client’s ‘Rebecca Ingram’ brand.
  • Advised the City of Parramatta Council on its trade mark protection strategy.
  • Represented the Shellharbour City Council in a trade mark opposition case against Bright Events Pty.

Thomson Geer

Lawyers on Thomson Geer’s IP, technology and regulatory team have well-honed experience of trade mark portfolio management, franchising and patent litigation. The department’s client come from industries such as manufacturing, technology, biotechnology and life sciences, media, retail, and the public sector. Tony Conaghan from the Brisbane office stands out for his decades-long, internationally focused experience advising on commercial agreements and disputes relating to IP. Sydney-based Peter Le Guay attracts commendation from clients for his ‘great project management skills and deep knowledge of trade mark law’. In March 2019, Paul Noonan departed to Keypoint Law.

Other key lawyers:

Tony Conaghan; Peter Le Guay

Testimonials

The team is quick and a pleasure to work with

Team members are technically competent and responsive

Peter Le Guay is highly experienced and competent

Work highlights

  • Advised Dr August Wolff GmbH & Co KG Arzneimittel on an appeal in the Federal Court from a decision of the Registrar to uphold the opposition to registration of the trade mark ‘Vagisan’ by Combe International.
  • Acted for the Garvan Institute of Medical Research on a commercial transaction involving patents, copyrights and confidential information.
  • Handling matters relating to the extensive trade mark portfolio of Reckitt Benckiser.
  • Advising Harcourts International on matters relating to its trade mark portfolio.
  • Acted for trade mark applicant Cinkciarz.pl on matters regarding a trade mark opposition by MasterCard.