“Addisons is proof that bigger is not necessarily better. The personal touch and attention that it gives are very noticeable.” The commercial outfit provides accessible, practical advice to a host of globally recognised brands, especially those from the consumer goods and media and publishing sectors. Its “superb and experienced” practitioners are led by Karen Anne Hayne
, a true jack and master of all trades. She assists major household names such as Virgin, Playboy and MasterCard with everything from overarching strategy and litigation to domain name and anti-counterfeiting guidance. WTR 1000
newcomer Tim Clarke
provides vital support on these briefs; he is well equipped to handle all facets of trademark law before the Australian trademark office and is intimately familiar with design registrations and labelling requirements.
Sitting within the larger structure of this premier commercial firm, Allens’ tenacious band of IP practitioners offers a highly personalised service and can summon the resources needed for heavy-duty litigation at a moment’s notice. A long-time favourite of blue-chips, the set has also drawn in a number of start-ups over the past year, in no small part thanks to Allens Accelerate – a legal practice exclusively devoted to providing cost-effective assistance to budding businesses. A roster of prominent clients – including The PepsiCo Group and Sony – rely on Philip Kerr
’s erudite counsel. He is a force to be reckoned with in the courtroom; as is Miriam Stiel
, who additionally possesses a wealth of know-how in the anti-counterfeiting arena. Having liaised with government officials on IP policy, she is a positive force in the community. Timothy Golder
has a firm grasp of prosecution matters; “extremely experienced and reliable”, he takes the lead on registrations. Branding veteran Jim Dwyer
is a percipient consultant for both heated disputes and long-term strategy.
At Ashurst, cutting-edge prosecution and strategy are offered in tandem with “world-class” enforcement and litigation. One commentator avers: “Law firms come and go over time, but I truly believe that Ashurst is one of the elite players in the market and here to stay – there are just so few firms that can reach its level.” Assisting the likes of Rolex on a plethora of oppositions and anti-counterfeiting campaigns is all in a day’s work for the firm. This mandate falls under the care of global vice chair Mary Padbury
, a versatile practitioner who also guides the watchmaking giant on licensing and consumer protection matters. “Excellent” Lisa Ritson
has a stellar track record for resolving tricky disputes both in and out of the courtroom. However, her wide-reaching skill set is readily apparent in her diverse work for Lego, which ranges from monitoring retail sites for fake goods to advising on marketing and R&D agreements. Last, but certainly not least, is “friendly, safe pair of hands” Peter Chalk
, a universally celebrated litigator and counsellor. “He regularly advises major companies on challenging matters and manages a team of lawyers that are top-notch due to his leadership and guidance. He understands complex issues and assesses them with a practical, constructive, business-focused approach.”
The sun never sets on Baker McKenzie’s illustrious trademark practice; with a presence in 47 countries, it offers unparalleled cross-border expertise and dispatches international mandates with finesse. Its local team of gifted practitioners has a sharp eye for home-grown branding concerns and wins special praise for its “first-class enforcement and litigation services”. Byron Angelopulo
helms the group and is the primary contact for several of the firm’s most distinguished clients. He always manages to extract maximum value from IP assets when juggling sophisticated transactions. Richard Gough
keeps a watchful eye over the IP practice; his prowess in branding disputes is complemented by a deep understanding of patent and copyright issues. Likewise, Robert Arnold
is intimately familiar with the world of copyright, which supplements his trademark savvy nicely. With “considerable experience acting for global brands”, Elisabeth White
“provides commercial strategic advice in a responsive and timely way”. Ross McLean
imparts invaluable insight, gleaned from years of handling working on every non-contentious branding matter under the sun. Fellow prosecution maven Jonathan Flintoft
– newly elected to the partnership in 2015 – heads the Australian office’s franchising practice and has abundant experience overseeing international portfolios that extend into Southeast Asia.
Banki Haddock Fiora
“Banki Haddock Fiora provides more than just legal counsel; it is a strategic business partner which focuses on the goals of its clients.” Loyal customers attest to the boutique’s bespoke and incisive services and particularly appreciate its contentious nous. “It does an outstanding job of handling difficult legal and procedural issues. On top of its strong legal knowledge and courtroom experience, its advice is practical and creative.” The dispute resolution group owes much of its commendations to “skilled straight shooter” Julie Robb
. She leads enforcement efforts with brio and can handle any infringement claim thrown at her. Trademark team head Margaret Shearer
also cuts an impressive figure in the contentious realm: “Her arguments are both extremely engaging and concrete.” Joining them in the tables this year is Simon Kneebone
, an excellent first port of call for design law and grey-market concerns.
Bird & Bird
Bird & Bird’s Australian debut in the WTR 1000
marks an exciting new option for rights holders seeking to protect and develop their intangible assets across Asia-Pacific. It entered the jurisdiction in 2014 via a merger with Truman Hoyle and has quickly made a name for itself on the local scene. One happy customer enthuses: “Its timely and well-measured advice has been instrumental in helping us to effectively manage brands and the associated risks.” Heading the IP team, Jane Owen
is a lightning rod for praise. Although patent litigation is her specialty, her guidance in trademark matters is “fast, accurate and succinct” and she “possesses qualities most appreciated by busy in-house lawyers”.
Full-service outfit Clayton Utz is a fixture of Australia’s legal landscape – including in the IP space. Its dedicated IP unit secures watertight brand protection for a raft of household names and “it is one of the few deeply rooted firms in the country that completely understands the legal and market challenges that an Australian business faces”. Leading the trademark squad is Brett Doyle
. He applies his many years of private practice and in-house experience to superb effect and performs dexterously across the contentious/non-contentious divide. With over three decades of contentious know-how to her name, Mary Still
is a gilt-edged enforcer of commercial and IP rights.
Corrs Chambers Westgarth
Corrs Chambers Westgarth masterfully handles all stages of the trademark lifecycle. Its award-winning branding unit is a reliable partner to many prominent rights holders: “Its elite team is unfettered by the red tape that you might find at larger firms; its focus is entirely on you.” “Always several steps ahead in enforcement strategy”, captain Stephen Stern
astutely escorts a number of high-profile enterprises around branding obstacles. “A highly trusted professional with a proven international outlook, he has terrific client handling skills, which guarantees full attention when needed.” Odette Gourley
is another name to bear in mind for critical disputes. As testament to her skills, she recently secured victory at the Federal Court for Winnebago Industries in a precedent-setting decision which established the award of damages on the basis of a notional licence. “One of the most pre-eminent trademark players in Australia”, Tim Allen
provides “invaluable commercial nous and has vast knowledge of both Australian and international trademark law”. Working closely with Allen, rainmaker Kate Hay
brought a slew of notable clients with her when she joined in 2015. Multifaceted cross-border cases are her key strength.
A perennial leader in the filing statistics, Davies Collison Cave nonetheless puts the emphasis squarely on quality; its heavy workload belies the attentive care that it affords to each client. Already imposing in size, it expanded further in 2015 with the launch of a Singapore office. The premier outfit shines on everything from registrations to multimillion-dollar infringement suits for some of the world’s most recognisable brands. Adam Sears spearheads the trademark practice. He is a fixture of the community, having previously chaired the International Trademark Association (INTA) Harmonisation Committee and was sub-committee chair of the Legislation and Regulation Committee for Southeast Asia. Also heavily involved with INTA is Michael Wolnizer, an authority on the confluence of trademark law and cyberspace. International portfolio management is the crux of Marion Heathcote’s practice; she is especially well attuned to issues unique to Asia-Pacific. Meanwhile, Nick Holmes is a font of knowledge on Australian and New Zealand trademark matters and draws admiration for his “sound commercial advice”. Another adaptable practitioner, Ian Drew has a flair for tackling international registrations. Chris Jordan fronts the contentious group and provides penetrating strategies for businesses defending their intangible assets. Sharp IP litigation is also John Hannebery’s metier. Talent at the firm spans across the ranks, with senior associate Fiona Brittain making waves for her non-contentious nous, while luminary Trevor Stevens brings much to the table as a judicious consultant to the team.
Laser-focused advice and cordiality are the hallmarks at DibbsBarker. Backed up by the firm’s full-service muscle, the approachable IP team always provides counsel laced with a healthy helping of commercial pragmatism. Much of its success is owed to the “readily available and extremely clear” Stuart Green
, who has captained the trademark squad since 2014. “From prosecution to oppositions and dispute resolution, he is very competent and shows impressive business acumen and industry knowledge.” Moreover, he is “a joy to deal with”. The same is true of Melissa McGrath
; armed with a science degree, McGrath has a flair for managing the rights of life sciences and biotechnology companies. Scott Sloan
is a key player on contentious briefs. “He is an excellent trademark litigator with strong technical knowledge and a practical business approach. Additionally, he is responsive, cost conscious and a pleasure to work with.”
DLA Piper LLP
Global IP titan DLA Piper’s Australian contingent has unfettered access to a deep pool of international expertise; few firms, if any, can match its extensive links to the United States. “Unlike many other smaller firms, DLA Piper has that business knowledge and specialised understanding of overseas matters, and can tend to all of your problems at once.” The leading light is Melinda Upton
, whose “reputation and outlook are both global in nature”. “She has the appetite to invest the time and energy in her clients. Many IP lawyers seem to leave it to the business to decide what it needs, but not her – she is client focused and commercially oriented.”
Nimble boutique FB Rice “offers excellent services and advice to Australian clients, and is also very fair in terms of billing”. Its shrewd counsel helps companies with ambitions of expansion to make significant inroads into Asian markets and in recent years it has further solidified its relationships with overseas contacts, especially in China, South Korea and Japan. Joanne Martin
’s contributions to these endeavours cannot be overstated. The trademark leader comes “strongly recommended”: “She is knowledgeable, helpful and confident in her counsel, and is wonderful to work with.”
Gilbert + Tobin
Gilbert + Tobin is poised at the cutting edge of IP practice, handling vanguard branding issues with verve and deploying sophisticated technologies and systems to optimise client service. It has one of the largest antipodean IP units and a star-studded client roster that includes Citigroup and Google. “A straight shooter who gives superb advice”, Lisa Lennon
acts on behalf of various blue-chips and recently advised Woolworths Holdings Limited (South Africa) on the IP aspects of its $2.15 billion acquisition of David Jones. Robust litigator Siabon Seet
provides invaluable support in contentious matters; no industry is too foreign and no case too complex for her.
One of the country’s largest filers and most prominent contentious players, Griffith Hack has long been the model of success for many contemporaries. It is also a favourite for international filings, thanks to its profound understanding of the Madrid System; it has filed more applications under Madrid than any other Australian firm. The cornerstone of its well-rounded team is Anne Makrigiorgos
, whose forte is the adroit management of local and international portfolios. Having been appointed as the first woman president of the Institute of Patent and Trademark Attorneys in 2013, she enjoys high standing among the community. Similarly, Chris Sgourakis
specialises in overseeing the development of portfolios. He knows what it takes to prevail at the trademark office in oppositions and non-use actions and has recently been helping Asahi in its opposition against Coopers’ registration of a descriptive mark. With previous experience at South African and New Zealand firms, Nicola Scheepers
has cultivated an enviable network of foreign contacts and a rare level of overseas branding expertise. By the same token, German national Jürgen Bebber
is uniquely equipped with a dual understanding of Australian and German trademark law. In addition, he is particularly well versed in domain name matters.
Herbert Smith Freehills
The name Herbert Smith Freehills has become synonymous with quality in the IP world. Its patent practice may make the most noise, but the trademark group nevertheless packs serious firepower. “Especially strong at handling big-ticket litigation cases”, the firm ascends to the gold tier in this year’s tables. Regional manager Sue Gilchrist
receives warm plaudits for her affability and formidable capabilities; the “widely respected” litigator is “among the best out there” for contentious scuffles. Qualified in Australia, Hong Kong and England and Wales, trademark leader Celia Davies
is a first port of call for sophisticated domestic and international portfolio management. Rounding off the set is Kristin Stammer
, “arguably the best transactional lawyer around”. She is “a standout among other practitioners and performs superbly on complex deals”.
One of the finest Queensland-based firms, HopgoodGanim enjoys a rapidly growing profile on the IP scene. The branding team’s guidance comes with a distinctly commercial spin, due to its close cooperation with auxiliary divisions such as regulatory, technology and corporate. Spearheading the IP practice is Hayden Delaney
, “one of Australia’s leading IP and technology lawyers, whose breadth of skill and experience is top notch”. The amiable practitioner has done much to expand the firm’s footprint in this field. “He – along with the team he supervises – is responsive, pragmatic, creative and professional; they know their stuff and deliver it in a way that suits their clients.”
With four offices throughout Australia, offices, K&L Gates “does a stellar job” in the branding domain – both locally and across borders – for its elite clientele. Consequently, the firm earns a place in the silver tier this year. It receives particularly warm applause for its commercial nous and contentious capabilities. Both of these qualities are embodied in fashion and apparel expert Tony Watson
; he possesses a nuanced understanding of the anti-counterfeiting domain and is a go-to for thorny courtroom engagements.
King & Wood Mallesons
King & Wood Mallesons boasts one of the most active and full-bodied IP groups in Asia-Pacific. “The firm’s unparalleled responsiveness and depth of legal and commercial knowledge make it a perfect match for many thriving businesses in this part of the world.” It recently notched up several significant courtroom victories for a slew of noteworthy clients, including Campari – owner of the Wild Turkey brand of bourbon whiskey – and Campbell Soup Company. These wins can be accredited to Cate Nagy
, a standout in the field and the trusted confidante of many branding heavyweights. Matthew Swinn
, who came on board in 2015, has been a boon for the Melbourne office and has likewise tackled heated disputes on behalf of many of the world’s best-known trademark owners. Bill Ladas
’ far-reaching expertise includes a sophisticated grasp of New Zealand, UK and EU trademark law; he also artfully represents clients before the trademark office. Contentious champ Katrina Rathie
is lauded as “a trump card” in the courtroom. She is also a smooth negotiator and recently aided Nestlé and Monde Nissin Corporation in various IP transactions. Scott Bouvier
shared responsibility for the latter and remains on speed dial for the Sydney Opera House. “His advice is strategically sound, business focused and practical, and he is always a trusted ally for complex issues.” Holding down the fort in Brisbane is enforcement doyen John Swinson
, who sits at the top of the food chain for branding work in Queensland. He has carved out a niche in the domain name and internet spheres.
Madderns is a guiding light for brand owners operating in South Australia. “Its team is accurate, efficient and cost effective. Its skilled and experienced practitioners always have the client in mind and can assist with any trademark issue, whether in Australia or elsewhere in the world. In addition to this, they are flexible with fee arrangements.” Fronting the troupe is Louise Emmett
, who is a magnet for local entities looking to expand overseas. Her sage counsel comes infused with keen insight on cross-border strategy. Craig Vinall
“has a vast understanding of trademark law and registration requirements on a global level”. “He takes the time to learn about your business and gives you confidence in proceeding with his clear advice.”
A dominant force in Queensland, Brisbane-based McCullough Robertson sees the whole picture when protecting and developing brands. The full-service outfit takes a commercially and internationally attuned approach when handling each of the 4,000 marks under its care. As the new head of the trademark practice, Belinda Breakspear
is the principal point of contact. With dual qualifications in law and international business, she epitomises the firm’s problem-solving prowess, devising strategic solutions for a diverse range of brand owners across the gamut of industries.
Minter Ellison’s profile on the trademark stage has been boosted in recent years by tactical lateral hires from King & Wood Mallesons. Although it is best known for its patent work, the branding practice has been gaining serious ground. Robert Cooper
is a driving force for both the soft and hard IP teams. The contentious ace has taken on many high-stakes trademark cases, including a successful defence of Sweet Rewards against multiple claims of infringement, passing off and deceptive conduct from Mars Australia.
Norton Rose Fulbright Australia
Norton Rose Fulbright’s Australian unit works in perfect sync with its overseas counterparts to provide “truly exhaustive coverage”. It regularly juggles big-ticket M&A transactions involving key IP assets alongside big-ticket litigation. The local team’s encyclopaedic legal knowledge and international outlook attract a raft of A-list global clients: most recently, it won the patronage of McLaren Racing and now manages its worldwide portfolio. The Formula One team’s key contacts in Sydney are Frances Drummond
and Georgina Hey
. Drummond has garnered universal acclaim from peers and clients for her technical acumen and acute awareness of the endgame in business transactions. Newly minted partner Hey is a another client favourite, thanks to her ability to “execute instructions without losing the commercial focus”. Jackie O’Brien
is the one to see for all enforcement and litigation needs; she has chalked up years of experience in game-changing trademark, patent and copyright battles.
Phillips Ormonde Fitzpatrick
IP powerhouse Phillips Ormonde Fitzpatrick is the trusted adviser of numerous household-name brands, but it knows how to realise the goals of businesses of all stripes – from sole proprietors to sprawling multinationals. The same can be said of trademark chief Michael O’Donnell
, whose clients all get maximum bang for their buck from his “speedy and sensible guidance”. Reflecting the ensemble’s broad talents, Russell Waters
cut his teeth on drafting and prosecuting patents, but has since shifted his focus to the management of domestic and international trademarks. Gifted practitioners are present at all levels of the firm’s hierarchy. Associate Marine Guillou
conducts searches and prosecution with verve and excels in the anti-counterfeiting sphere. Meanwhile, seasoned litigator Greg Chambers
is a font of wisdom on enforcement best practices across the IP spectrum.
Shelston IP Pty Ltd
Well-oiled prosecution machine Shelston IP ranks highly in the filing stats, but never stints on quality. Sean McManis
and Gerard Skelly
– both of whom are lawyers and registered trademark attorneys – have displayed uncompromising drive in pushing the practice forward. Distinguished counsellor and enforcer McManis also instils confidence in the domain name arena. Skelly is another adroit manager of countless trademark and domain name portfolios; his detailed understanding of all things trademark means that no stone is left unturned.
Sparke Helmore’s IP services are exhaustive; the firm has some 5,000 marks under its stewardship and extensive experience litigating in all the major venues in Australia. A string of satisfied patrons keep coming back for more, enticed by its keen commercial insight. Of Shannon Platt
, one customer states: “I would rate her performance and quality of work in the 90-100 decile range.” “She is a superior lawyer and a leader in her field. Efficient, responsive and thorough in her approach, she provides excellent service all around.”
Spruson & Ferguson
An active player in over 25 countries throughout Asia-Pacific, Spruson & Ferguson boasts unrivalled regional reach. Aggressive plans for further expansion saw it reopen its trademark practice in Singapore in late 2015 and launch a Jakarta office in 2016. However, the Sydney headquarters houses most of its key branding professionals. Tracey Berger
excels at building brands; she always keeps business considerations front and centre when tackling complex prosecution briefs. Veteran Ken Hamilton
applies wide-ranging know-how developed over 30 years to registration and enforcement briefs; non-traditional marks are his specialist subject. Berger and Hamilton’s efforts are supported by Khajaque Kortian
, who knows what it takes to secure favourable outcomes to domain name disputes and anti-counterfeiting campaigns. John Afaras
also focuses on the fight against fakes and is a go-to for contentious matters.
“Watermark is a standout in Australia. You will always get a response from it – even out of hours – and you know you can trust the advice you receive.” Practising across the gamut of trademark law, IP director Peter Hallett
can elegantly resolve all manner of branding conundrums. His credentials speak for themselves: a lawyer and registered trademark attorney, he also has a science degree and has gained invaluable insight from his time in-house.
Wrays reigns over the Western Australian trademark scene; the IP services provided from its bustling Perth office are always in high demand. The star of the show is Marie Wong
, “a standout among her peers due to her responsive, personal touch”. She is “thorough, cautious and accurate in her interpretation of the law”. The outfit also has its eyes set on expansion; it has made serious headway in this regard with the recent hire of Andrew Butler
from Allens to bolster its Melbourne presence. Butler brought with him several marquee clients, including Treasure Wine Estates, which owns Australia’s largest trademark portfolio in the wine industry.