Australia

To the delight of practitioners, IP Australia – an agency which is part of the Department of Industry, Innovation and Science – is becoming more tech-savvy; it has rolled out a new interface for trademark revision and its improved search system has won warm praise for becoming more user friendly. Although industry insiders have been highlighting a shift from courtroom litigation to office actions, there has been no shortage of landmark rulings establishing important legal principles. For example, Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd asserted that meta tag use in a website’s source code can constitute trademark use and therefore, potentially, infringement. The government – in response to the Productivity Commission’s IP Arrangements report – is now supporting three important recommendations: shortening the current five-year grace period by two years; requiring trademark applicants to indicate ‘intending to use’ or ‘using’ on applications; and ensuring that parallel imports of genuine goods do not infringe Australian trademarks. Recent years have seen significant changes in the law firm market; a large number of firms have become constituents of IPH Limited, QANTM Intellectual Property Limited and Xenith IP Group.

Firms: enforcement and litigation

1
Allens
Ashurst LLP
Baker McKenzie
Corrs Chambers Westgarth
King & Wood Mallesons
2
Gilbert + Tobin
Griffith Hack
Herbert Smith Freehills LLP
K&L Gates
Norton Rose Fulbright LLP
3
Addisons
Banki Haddock Fiora
Bird & Bird
Clayton Utz
DibbsBarker
Minter Ellison
Phillips Ormonde Fitzpatrick
Shelston IP Pty Ltd
Spruson & Ferguson
Watermark

Firms: prosecution and strategy

Highly recommended
98
Ashurst LLP
Baker McKenzie
FB Rice
Gilbert + Tobin
Griffith Hack
Herbert Smith Freehills LLP
King & Wood Mallesons
Phillips Ormonde Fitzpatrick
Spruson & Ferguson
Recommended
H
Allens
Banki Haddock Fiora
Bird & Bird
Clayton Utz
Corrs Chambers Westgarth
DibbsBarker
DLA Piper LLP
HopgoodGanim Lawyers
Madderns
McCullough Robertson
Norton Rose Fulbright LLP
Shelston IP Pty Ltd
Watermark
Wrays
Addisons
Realising how high the stakes can be for consumer-facing entities, the Addisons lawyers work around the clock to support them. Their hands-on, uniquely personalised service has won the firm a slew of fans in the consumer goods, media and publishing and gaming and gambling sectors. Recently the “very highly regarded” practice leader Karen Anne Hayne has been turning heads with prosecution work for Virgin and Playboy, as well as anti-counterfeiting support for Nintendo. She is comfortable explaining complex technical concepts and is not one to shy away from a fight. Her teammate Tim Clarke knows the mechanics of IP Australia proceedings like the back of his hand having previously worked as a trademarks examiner; his applications always meet the gold standard.
Allens
The trademark pros at Allens keep their noses to the grindstone to help a “strong base of big-ticket multinationals” achieve their aims as swiftly and cost-effectively as possible. Because they operate within a full-service offering, the Allens practitioners are never more than a few strides away from a second opinion from their banking and finance and tax colleagues. Wearing the captain’s armband, Miriam Stiel is “particularly strong in litigation; her expertise in that regard is second to none and she has an unstinting commitment to her clients”. Her recent workload includes acting for RedBubble in significant proceedings commenced in the Federal Court of Australia by Hells Angels, concerning complex issues around the liability of an online marketplace for the actions of its users, something that has never been tested before under Australian law. Another contentious heavyweight is Philip Kerr, who pulls out all the stops in touch-and-go cases. One recent highlight saw him acting for Aloe Vera of America on a notable Federal Court appeal. With over 25 years of experience, Andrew Wiseman is a dazzling litigator. Yahoo7 wisely called on him to assist on a significant trademark dispute with Medibank concerning the launch of its online entertainment and lifestyle platform. Wiseman’s practice has a particular focus on the creative and media sectors; he is a member of the board of directors of the Arts Law Centre of Australia. Although he is no longer a partner, Jim Dwyer remains a sagacious consultant. Finally, the “excellent” Tim Golder is a transactional maven who could sew up a licensing contract while blindfolded. “He’s reliable, very organised, responsive and realistic. His keen eye for detail, wisdom and experience are invaluable.”
Ashurst LLP
“Ashurst is packed with well-known partners who act for world-famous brands.” Prosecution, transaction and enforcement instructions are all carried out expertly by this forward-looking and multi-talented team. Lately it has been assisting Rolex, Lindt & Sprüngli and Coca-Cola on a wealth of portfolio management issues, as well as representing Goodyear Tire & Rubber on Federal Court litigation concerning its Dunlop trademark. For non-contentious issues, companies make a beeline for Mary Padbury and Peter Chalk. Padbury is a “terrific” practitioner who knows how to take a portfolio to the next level through shrewd filing and the negotiation of favourable licensing contracts; while Chalk is a “top-notch, client-friendly all-rounder” who brings a “practical attitude and fine business sense” to the table. “He has the skill set and judgement to provide fantastic strategic counselling, but can also successfully handle infringement matters” and regularly exchanges ideas and insights with double-dyed litigators Lisa Ritson and Anita Cade. “Pre-eminent across the spectrum of intellectual property”, Ritson is an “excellent team leader” and a cogent choice for all manner of briefs. “She has the experience to accurately gauge what is achievable for her clients and what is unrealistic.” Kellogg relies on the counsel of Cade for disputes concerning its Nutri-Grain and Special K products. “She has a keen appreciation of the commercial imperatives for clients; they have great confidence in her.”
Baker McKenzie
Backed by an expansive international network comprising 77 offices, Baker McKenzie’s Australian cadre furnishes brand owners with a cradle-to-grave trademark service, from clearance searches all the way up to courtroom representation. Bespoke internal software ensures that everything is handled cost-effectively and with minimal fuss; its IP asset management tool GIPM enables clients to monitor their portfolio 24/7, while MAPS provides a simple way of tracking customs seizures as well as global counterfeiting trends. Leading the practice, Richard Gough is a prominent enforcer in the fight against fakes. “He has a lot of experience delivering commercially sound, strategic advice and is fantastic when it comes to IP enforcement.” Robert Arnold is another individual who has seized and destroyed multiple shipments of counterfeit goods in his time. He is a hard-hitting infringement expert who “always satisfies his clients” and lets nothing get away from him. Having previously served in the firm’s Hong Kong office, Arnold is a popular choice among Asian entities. Elisabeth White recently flexed her own enforcement muscles acting for Lion in Federal Court proceedings commenced by the a2 Milk Company. On the non-contentious side, Byron Angelopulo is a strategic sage who manages portfolios artfully and is always looking for novel ways to monetise rights, while Jonathan Flintoft uses his business nous and interpersonal skills to help clients walk away from negotiations with lucrative contracts. Ross McLean complements his robust prosecution practice with impressive competition law knowledge.
Banki Haddock Fiora
Banki Haddock Fiora is a sure-footed commercial law firm that has built up a refined IP practice with experience across the board. Applications for complex non-traditional marks are filed with flair and finesse and courtroom proceedings are handled with a laser focus on clients’ overall commercial objectives. The heart and soul of the practice, Margaret Shearer is “bright, enthusiastic, creative and strategic in everything she does, contentious or non-contentious. She isn’t intimidated by adversaries and always keeps a level head even when they are being completely unreasonable. Her willingness to push back is something clients really welcome”. Julie Robb recently teamed up with Shearer to secure a significant win for Clipsal in a dispute concerning its so-called ‘dolly’ light switch – her pleadings are a sight to behold. Simon Kneebone has been helping Velcro to enforce its world-famous mark in order to prevent generic use. “Deep knowledge of trademark law in both Australia and New Zealand allows him to give excellent counsel in a practical and responsive manner.”
Bird & Bird
While Bird & Bird has expanded dramatically since its establishment in 1846, its passion for intellectual property persists. The firm’s outward-looking, inventive and ever-accessible trademark whizzes immerse themselves in their clients’ industries so that they can provide well-grounded advice on even the most unusual matters. They also work closely with their colleagues in other jurisdictions when cross-border infringement trouble flares up. A recent recruit, Lynne Lewis has brought fresh thinking to the team – alongside extensive portfolios from Qantas, American Express and Penguin Random House. Filing a watertight application for a crucial new mark at IP Australia and litigating before a federal court is all in a day’s work for her. She joins enforcement expert Jane Owen, who has been showing off her razor-sharp skills representing the University of Wollongong in a case concerning a descriptive mark. Her pellucid lines of reasoning are impossible to ignore.
Clayton Utz
The “wonderful” trademark team at Clayton Utz wins considerable praise for its “incredible” responsiveness and understanding of the pressures brand owners face on a daily basis. “It treats in-house counsels as the knowledgeable lawyers they are – that’s the secret of the successful, collaborative relationships it forms.” This humble, respectful and attentive ethos has attracted entities of all stripes, including public bodies such as Tourism and Events Queensland, educational institutes such as Monash University and household names such as Toyota. Chris McLeod recently assisted the latter on a significant Federal Court proceeding against Wishart Auto Tech. “He’s a perennial source of clear, practical and commercial advice; on top of sound legal knowledge, he has a thorough understanding of clients’ businesses and the sort of risks they are willing to take.” Another “consummate litigator highly knowledgeable in trademark law” is the “fantastic” Timothy Webb. “You know he will be available whenever you have an urgent question – and will be able to deliver a top-quality answer in a timely manner.” Brett Doyle and Mary Still have 25 and 30 years of experience to their names, respectively, and are loyal allies for companies dealing with convoluted contentious or non-contentious problems. “Great with clients, Doyle provides counsel that is second to none in Australia.” Even adversaries applaud Still’s exceptional command of case law; there are few judges who would be willing to challenge her on a point of fact.
Corrs Chambers Westgarth
Given the premium it places on customer satisfaction, it is little surprise that “Corrs Chambers Westgarth constantly hits the mark in key performance indicators such as responsiveness, reliability, accountability, lawyer accessibility and commercialism of advice. Its lawyers advocate passionately for their clients’ best interests, working in partnership with them rather than simply representing them.” Practice leader Stephen Stern perfectly embodies the firm’s client-centred modus operandi. Having protected the Champagne appellation of origin in Australia since the late 1980s, he is a font of knowledge when it comes to wine and geographical indications. His recent activities include helping the LVMH business Moët Hennessy defend its Yellow Label trademark. “He has prodigious knowledge of IP law and is really tenacious.” Someone else who can always find the back of the net is Odette Gourley. With “a wealth of experience, fantastic attention to detail and a great attitude”, she routinely comes up with novel solutions to save clients in hot water. Passionate about all things brands-related, Kate Hay is a client’s dream; she recently put in a sublime performance for the Conversation Media Group on an urgent situation concerning the launch of a programme that included the entity’s registered trademarks. She joined the firm from Griffith Hack in 2015. In 2017 Jürgen Bebber followed in Hay’s footsteps. Internet issues – from cybersquatting to cyber fraud – see him at his best. Finally, crack portfolio manager Eugenia Kolivos breaks into the WTR 1000 this year on the back of a tidal wave of positive feedback. “She’s technically excellent, commercially pragmatic, supportive of our interests and remarkably solutions-driven. Plus, she’s always willing to give ad hoc advice over the phone.” For non-contentious trademark support, no one can hold a candle to Davies Collison Cave. Its team of seven dedicated prosecution specialists repeatedly file more applications in Australia than any other firm and provide creative, commercially astute brand management that always strikes the right chord with clients. Spearheading the practice, Adam Sears is as good as it gets. He has successfully overseen countless international registrations via the Madrid Protocol and, at home in the online world, is entrusted by some of the world’s biggest social media players. With “outstanding IP knowledge and real business sense” Nick Holmes makes a sound ally for any brand. Holmes and Michael Wolnizer are both dedicated members of the IP community and active in International Trademark Association (INTA) committees. “Wolnizer is an excellent negotiator who has in-depth legal knowledge and can explain challenging matters with crystal clarity.” Getting a signature on the bottom line of a lucrative licensing contract is the sort of challenge he lives for. “Unfailingly bright, responsive, and results-oriented” Ian Drew “cuts to the chase to find solutions” that work for his clients. He is a dab hand at registering marks abroad in New Zealand, the Pacific Islands and the European Union. Having singular expertise in plain packaging issues, Marion Heathcote is the go-to lawyer for tobacco issues. “She is a great example of a professional and measured practitioner who fights extremely hard for her clients but keeps things cordial and doesn’t take undue advantage of the other side.” The energetic and enthusiastic Fiona Brittain is blazing a trail in the non-traditional marks space with cutting-edge work involving shapes and colours. Like many other lawyers in the country, she looks up to luminary Trevor Stevens, who enjoys “an extensive practice and reputation” on the back of “his efficient service and long-term involvement with INTA”. Working hand in hand with sister firm Davies Collison Cave, the versatile team is also able to guide clients through thorny courtroom proceedings. Three decades at the IP coalface have forged Chris Jordan into a redoubtable litigator who is fazed by nothing. He co-chairs the International Bar Association’s IP and entertainment law committee, which is indicative of the respect he commands among his peers. Fellow contentious sharpshooter John Hannebery has been busy assisting Australian Pharmaceutical Industries on a federal court proceeding against eos Products, and Burberry on its tussle with Hunter Leisure and Woolworths. With such a diverse range of firepower in its arsenal, the firm is equipped to handle any issue that might arise throughout the lifecycle of a brand. The firm’s representative on the transactions table is Rodney De Boos, a licensing and franchising guru with broad and deep IP commercialisation expertise.
DibbsBarker
Never content with simply going by the book, DibbsBarker’s trademark masters work around the clock and think outside the box to ensure that their clients get the maximum possible return from their investment when protecting their brands. This ethos has helped to build longstanding relationships with the likes of Breville, while the firm’s new office in Melbourne looks set to attract plenty more local businesses keen to conquer the world. Stuart Green and Scott Sloan form the backbone of the practice. “Green is a man of high integrity who always delivers impeccable work while being good humoured and a joy to work with. He has a broad understanding of a wide variety of industries and knows how to add value at every stage of the process. His dedication to intellectual property and his clients is unwavering.” While creative portfolio management is Green’s metier, Sloan burns brightest on the contentious side. He was recently out to bat for Bauer Media on a complex case against Evergreen Television concerning non-use applications and barriers to use.
Gilbert + Tobin
Anybody familiar with the legal landscape in Australia will know the name Gilbert + Tobin – the full-service powerhouse lights up every instruction in which it is involved. Flanked by a thriving corporate practice, the IP team routinely advises on high-value transactions. For example, it recently analysed a portfolio of more than 500 registered trademarks for Pacific Equity Partners and the Carlyle Group in relation to its $930 million joint venture purchase of iNova pharmaceuticals. This was handled by the “very intelligent and commercially minded” Lisa Lennon who considers issues from every angle and then produces short, succinct summaries that can be easily absorbed by time-pressed business executives. When things turn contentious, clients make a beeline for Siabon Seet – “formidable” litigator, she has the experience to know exactly what will and will not fly in the courtroom.
Griffith Hack
Although best known for its formidable patent practice, Griffith Hack is also home to an “excellent” trademark prosecution practice, which boasts a sophisticated online filing platform, Amplia, which lets brand owners effectively monitor and manage their portfolios in real time. With 57,000 marks under its care, the team maintains a healthy workload, but never compromises on customer service; emails are always responded to at lightning speed and unique commercialisation opportunities are enthusiastically sought out. The first female president of the Institute of Patent and Trademark Attorneys of Australia, Anne Makrigiorgos is an “astute strategist” and a true role model in the industry. She has been conducting worldwide searches for South 32, a spin-off company of BHP Billiton. Chris Sgourakis’ speciality lies in the fast-moving consumer goods sphere: “He’s an exceptionally knowledgeable, efficient and responsive lawyer” and is trusted by the likes of Asahi. A reliable source of “sound and responsive advice”, Nicola Scheepers has a fantastic track record in office actions. She recently fended off an opposition filed by Red Bull against the registration of Hip Hop Beverage Corporation’s Pit Bull mark. “Kellie Stonier develops clear, precise portfolio management strategies that pre-empt every move an opposing party might make. Her technical knowledge is really excellent and she has a profound understanding of clients practical and commercial needs.”
Herbert Smith Freehills LLP
Herbert Smith Freehills matches impeccable technical knowledge with an unwavering commitment to clients’ overall business objectives, a formula that has been winning it mandates left, right and centre. Liaising with their banking and finance and tax counterparts for second opinions, the Herbert Smith trademark stars map out robust portfolio management strategies and doggedly pursue infringers. The “highly respected” Celia Davies leads the trademark practice with a steady hand. Having spent eight years working in Hong Kong, she has singular experience managing East Asian brands for multinationals; her “stellar” clientele always receives “top-tier” support. A “superb” commercial lawyer, Kristin Stammer has been overseeing lucrative rights transfers for more than two decades. Sue Gilchrist is a key contact to call on for contentious matters. She has the ability to turn even the most intricate legal wrangles into compelling courtroom theatre and as chair of the IP committee of the Law Council of Australia is an eminent figure in the IP community.
K&L Gates
With a global footprint spanning five continents, K&L Gates handles international product launches, multi-party rights transfers and cross-border infringement tussles superbly. Its tactically astute, cooperative IP sages readily devise all-encompassing master plans, share them with colleagues abroad via bespoke online software and then execute them expertly. A “guru” of the fashion industry, Tony Watson provides bulletproof branding counsel to a dazzling array of clients. Having been in the game for 25 years, he knows exactly what it takes to build a brand from scratch. Renowned for her go-getting attitude, Melissa McGrath never gives up. She prosecutes with composure and pursues infringers mercilessly.
King & Wood Mallesons
“Occupying the top end of the market, King & Wood Mallesons is the best choice for brand owners that need a firm with international capabilities.” The side is in its element when advising on complex cases that extend across Australia and China; the longstanding ties between the firm’s offices in these two countries have been reinforced by the relocation of a senior IP consultant from Beijing to Sydney. Highlights from the firm’s current workload include assisting Woolworths on proceedings that stopped a first-to-file Chinese company from unlawfully exploiting Dan Murphy’s in China and acting for Spirits International on tricky federal court litigation concerning ownership of the STOLICHNAYA trademark; these proceedings form part of a global dispute with related cases in several foreign countries. Banding together for the latter, Cate Nagy and John Swinson are redoubtable litigators who let nothing ruffle their feathers. The “very knowledgeable and personable” Nagy comes up with creative legal pleadings that always impress. She and Melbourne’s Matthew Swinn are at the forefront of IP infringement-related website blocking cases in Australia. With an eye for commercial considerations, Swinson always asks himself what an option would mean for his clients’ long-term business interests; he understands that winning a courtroom battle means nothing if the overall war is lost. Katrina Rathie is another “formidable” enforcement expert, whose scorecard includes successfully defending Procter & Gamble against an interlocutory injunction from Energizer. Such is her standing in the community that she was also recently selected by IP Australia to help develop its website for IP protection in China. She undertook this important task with Scott Bouvier, who has a multitude of experience in navigating clients through private equity led deals. “An unbelievably bright guy who knows all the intricacies of the law,” Bill Ladas rounds off the set with style. “He’s a font of knowledge about Australian and European trademark practice.”
Minter Ellison
Minter Ellison is a formidable force in trademark portfolio management. Its brand-smart lawyers work intimately with clients to construct incisive strategies that will not come unstuck in bad weather. However, they are no strangers to the courtroom and never fail to ride to the rescue when infringement trouble is brewing. Robert Cooper has extensive experience in proceedings before both IP Australia and federal courts. When the temperature rises, his ceaseless persuasiveness is routinely the differentiator; he has a particular penchant for computing and software matters.
Norton Rose Fulbright LLP
With Norton Rose Fulbright’s seamless portfolio management service and tip-top record in cross-border cases, it is no surprise that the likes of Target, Royal Bank of Canada, GlaxoSmithKline and Aldi have all come calling for its one-stop service. Recently it has been assisting Nando’s on proceedings issued against it by Ozan Venture in the Supreme Court of Victoria and Fairfax Media on an opposition against a trademark application for ‘realestate.com.au’ filed by REA Group. “Extremely experienced” in trademark prosecution, Frances Drummond scrutinises materials with painstaking care before putting pen to paper; having spent almost nine years working in Hong Kong, she has many loyal fans in Asia. Georgina Hey conducts pre and post-acquisition due diligence of intellectual property with consummate skill. Frequently exchanging insights with Drummond and Hey, the “very talented, commercially savvy” Jackie O’Brien is a dazzling litigator who knows the jurisprudence inside out.
Phillips Ormonde Fitzpatrick
“Phillips Ormonde Fitzpatrick is a very strong firm in all areas of intellectual property with professional and accommodating lawyers and a clientele to die for.” Thanks to the firm’s sophisticated Asia Direct Filing Model programme, it can effortlessly manage portfolios across the region, while membership of React gives it the upper hand when pursuing infringers. Having worked in-house for the anti-counterfeiting group Union Des Fabricants and as the anti-counterfeiting area manager for Société Bic, Marine Guillou is a loyal ally in the fight against fakes; thick with the customs authorities, she organises seizures in double-quick time. Fellow enforcement ace Greg Chambers has been assisting The Coca-Cola Company on a significant opposition against Frucor concerning claims that a particular shade of green was distinctive to Frucor’s V energy drinks. Michael O’Donnell burns brightest on the non-contentious side. “He always delivers effective strategies and solutions in a friendly and clear manner and is great value for money.” While best known for his patent practice, Russell Waters also operates a thriving soft IP practice. He routinely finds a way to register even the most problematic marks. Debuting in the WTR 1000 for 2018, Helen Kavadias is widely celebrated for her “responsive, proactive and commercially rigorous” counsel. “She takes the time to properly learn about her clients’ businesses so that she can devise tailor-made strategies that add real value.”
Shelston IP Pty Ltd
Shelston IP’s “excellent and ever-reliable” trademark squad has been turning heads in Australia with first-class trademark support on both sides of the contentious/non-contentious divide. Established in 1859, it has honed and refined its services; rigour, responsiveness and a resolutely commercial focus are the firm’s hallmarks. Two lawyers who always go the extra mile for their clients are Gerard Skelly and Sean McManis. Skelly’s “professional and thorough” counselling reaps fantastic long-term results, while McManis comes into his own in the courtroom, finding creative solutions to even the most puzzling problems. With two former examiners on board who understand exactly what a watertight application looks like, Sparke Helmore is a top choice for IP Australia proceedings. Moreover, being one of only two firms in the country to be registered as an official trademark clearinghouse agent, it is superbly positioned to assist on issues surrounding generic top-level domains. Shannon Platt is the first choice for many companies. Operating at the vanguard of intellectual property, she is completely at home working with non-traditional rights and recently succeeded in registering two three-dimensional shape marks for Crocs.
Spruson & Ferguson
The widely acclaimed Spruson & Ferguson leverages the resources of its sprawling Asia-Pacific network to manage multi-jurisdictional trademark portfolios with a deft touch and hunt out novel monetisation opportunities. In Australia, the team has been busy assisting Levi Strauss on an opposition to Yugen Kaisha Shimura’s registration of a stitched pocket design trademark; Khajaque Kortian’s nifty footwork secured a successful ruling of deceptive similarity. He is a familiar face in IP Australia proceedings and, like John Afaras, maintains an ever-burgeoning anti-counterfeiting practice – both lawyers cause infringers to quake in their boots. Based in the firm’s new Melbourne office, Tim Allen is the go-to lawyer for a host of multinationals. “His advice is always meticulously researched, thorough, accurate and straight to the point – he never hedges it in legal jargon.” Spearheading the practice, Tracey Berger was instrumental in bringing Allen to the firm. “She’s a true trademark expert; her clear, concise communication makes IP law easily understandable for non-lawyers. On top of that, she’s incredibly responsive and commercially astute.” Finally, Ken Hamilton is a technically sharp lawyer who threads together applications that will not crumble under pressure.
Watermark
Watermark combines extensive local knowledge – it has offices in New South Wales, Victoria and Western Australia – with a modern, cosmopolitan outlook and an emphasis on holistic thinking. Offering an A-to-Z suite of services, it can be relied on for “top-quality, pragmatic” prosecution, as well as steadfast support in the courtroom. Joy Atacador embodies the firm’s versatility. She provides all-encompassing trademark support to a range of high-profile consumer goods companies.
DLA Piper LLP
DLA Piper’s expansive network, stretching across 40 countries, sets it apart from the crowd; international product launches are handled effortlessly and multi-jurisdictional cases are fought fervently – all of which is overseen and coordinated from the firm’s central headquarters. The Australia cadre has a striking amount of experience when it comes to litigating IP disputes in the United States, something that is prized by clients such as Freedom Foods. Melinda Upton navigates the contentious/non-contentious divide with poise, she is a sublime lawyer with a seemingly bottomless toolbox. She recently saved the day with her nifty footwork for Qudos Bank in a Federal Court case concerning the company’s new house mark logo.
FB Rice
Home to lawyers qualified in Australia, New Zealand, North America, South Africa, the United Kingdom and from across Asia, FB Rice is well equipped for the ever-increasing globalisation of IP rights. It understands the way in which issues can extend across international borders and the importance of a watertight worldwide strategy. Proceedings before IP Australia are a real speciality; the team are familiar faces in the office. Of late the side has notably been assisting LG Electronics on a matter against the heavy metal band Metallica; other beneficiaries of its opposition skills are M&G, Fuji Television and Penguin Books. Representing LG Electronics, Michael Seifried makes his much deserved debut in the WTR 1000 for 2018. His knowledge of trademark law really is top-notch. He always comes up with cost-effective strategies.” The outward-looking Joanne Martin knows the ins and outs of the trademark filing process in China, South Korea and across the Association of Southeast Asian Nations as well as anyone. She is a discerning portfolio manager who lets nothing escape her eagle eye.
HopgoodGanim Lawyers
Business law firm HopgoodGamin strikes oil for clients time and time again thanks to the reservoir of transactional expertise on which it draws; its pragmatic IP lawyers have a nose for commercialisation opportunities and the interpersonal skills to get contracts signed with minimal fuss. “Professional and responsive” to the last, Hayden Delaney furnishes clients with “sound, pragmatic” support across the contentious/non-contentious schism. As well as managing Forbes’ Australian trademark portfolio and assisting Cyros on its acquisition of IP assets from the Commonwealth Scientific and Industrial Research Organisation, he has also been representing Calico Global on Federal Court proceedings against Calico LLC, an offshoot of Google.
Madderns
With nearly half a century of experience to its name, Madderns has what it takes to escort clients out of labyrinthine portfolio management mazes and through tricky courtroom proceedings. The firm has a particularly flourishing domestic practice and a lock on the wine industry – although the presence of its dedicated Asia business development group points towards its ambitions to attract more business from abroad. Louise Emmett is the driving force behind the trademark practice. She takes a creative but cost-effective business-conscious approach to the expansion of portfolios. Megan Ryder’s risk-assessment talents are the talk of the town; her foresight is “exceptionally helpful” for clients. The multi-talented Craig Vinall is as comfortable in courtrooms as backrooms and never lets anything run away from him.
McCullough Robertson
McCullough Robertson’s IP buffs have been educated in countries around the world and trade in truly global solutions. They steward over 4,000 trademarks worldwide and are the kings of international filing. Flight Centre Travel Group is one notable beneficiary of the firm’s holistic, far-reaching service, with Belinda Breakspear handling protection for the 90-plus brands in over 150 countries under the side’s care. Dual-qualified in law and international business, she understands the challenges facing brand owners today as well as anyone.
Wrays
Wrays’ December 2016 acquisition of EKM ip in Melbourne did more than boost its East Coast trademark practice; it was a statement of intent. The firm’s ultimate vision is to expand its operations Australia-wide and it is making significant progress towards realising this aim. Marie Wong and Andrew Butler form the beating heart of the practice. Wong straddles the contentious/non-contentious divide and delivers 360-degree support, while 30 years at the trademark coalface have transformed Butler into a real prosecution virtuoso.

Individuals: anti-counterfeiting

Highly recommended
Stephen Marcus Stern - Corrs Chambers Westgarth
Recommended
John Afaras - Spruson & Ferguson
Robert A Arnold - Baker McKenzie
Timothy Golder - Allens
Richard Gough - Baker McKenzie
Marine Guillou - Phillips Ormonde Fitzpatrick
Chris McLeod - Clayton Utz
Miriam Stiel - Allens
Tony Watson - K&L Gates

Luminaries

Jim W Dwyer - Allens
Trevor Stevens - Davies Collison Cave Pty Ltd

Individuals: enforcement and litigation

Peter J Chalk - Ashurst LLP
Sue Gilchrist - Herbert Smith Freehills LLP
Odette Gourley - Corrs Chambers Westgarth
Philip Kerr - Allens
Stephen Stern - Corrs Chambers Westgarth
John Afaras - Spruson & Ferguson
Robert A Arnold - Baker McKenzie
Scott Bouvier - King & Wood Mallesons
Anita Cade - Ashurst LLP
Robert Cooper - Minter Ellison
Richard Gough - Baker McKenzie
John Hannebery - Davies Collison Cave Pty Ltd
Karen Anne Hayne - Addisons
Nick Holmes - Davies Collison Cave Pty Ltd
Chris Jordan - Davies Collison Cave Pty Ltd
Cate Nagy - King & Wood Mallesons
Jackie O’Brien - Norton Rose Fulbright LLP
Mary Padbury - Ashurst LLP
Shannon Platt - Sparke Helmore Lawyers
Katrina Rathie - King & Wood Mallesons
Lisa Ritson - Ashurst LLP
Margaret Shearer - Banki Haddock Fiora
Mary Still - Clayton Utz
Matthew Swinn - King & Wood Mallesons
John Swinson - King & Wood Mallesons
Tony Watson - K&L Gates
Timothy Webb - Clayton Utz
Dianne Beer - Thomson Geer
Greg Chambers - Phillips Ormonde Fitzpatrick
Marine Guillou - Phillips Ormonde Fitzpatrick
Kate Hay - Corrs Chambers Westgarth
Khajaque Kortian - Spruson & Ferguson
Lynne Lewis - Bird & Bird
Melissa McGrath - K&L Gates
Sean McManis - Shelston IP Pty Ltd
Jane Owen - Bird & Bird
Julie Robb - Banki Haddock Fiora
Siabon Seet - Gilbert + Tobin
Michael Seifried - FB Rice
Scott Sloan - DibbsBarker
Miriam Stiel - Allens
Kellie Stonier - Griffith Hack
Elisabeth White - Baker McKenzie

Individuals: prosecution and strategy

Celia Davies - Herbert Smith Freehills LLP
Frances Drummond - Norton Rose Fulbright LLP
Timothy Golder - Allens
Bill Ladas - King & Wood Mallesons
Lisa Lennon - Gilbert + Tobin
Lisa Ritson - Ashurst LLP
Michael Wolnizer - Davies Collison Cave Pty Ltd
Tim Allen - Spruson & Ferguson
Byron Angelopulo - Baker McKenzie
Tracey Berger - Spruson & Ferguson
Peter J Chalk - Ashurst LLP
Brett Doyle - Clayton Utz
Louise Emmett - Madderns
Stuart Green - DibbsBarker
Ken Hamilton - Spruson & Ferguson
Marion Heathcote - Davies Collison Cave Pty Ltd
Nick Holmes - Davies Collison Cave Pty Ltd
Ross G McLean - Baker McKenzie
Mark Metzeling - Macpherson Kelley
Mary Padbury - Ashurst LLP
Katrina Rathie - King & Wood Mallesons
Margaret Shearer - Banki Haddock Fiora
Gerard Skelly - Shelston IP Pty Ltd
Kristin Stammer - Herbert Smith Freehills LLP
Melinda Upton - DLA Piper LLP
Russell Waters - Phillips Ormonde Fitzpatrick
Tony Watson - K&L Gates
Andrew Wiseman - Allens
Joy Atacador - Watermark
Jürgen Bebber - Corrs Chambers Westgarth
Belinda Breakspear - McCullough Robertson
Fiona Brittain - Davies Collison Cave Pty Ltd
Andrew Butler - Wrays
Andrew Clarke - Innofy Pty Ltd
Tim Clarke - Addisons
Hayden Delaney - HopgoodGanim Lawyers
Ian Drew - Davies Collison Cave Pty Ltd
Christine Ecob - Johnson Winter & Slattery
Jonathan Flintoft - Baker McKenzie
Julian Gyngell - Kepdowrie Chambers
Georgina Hey - Norton Rose Fulbright LLP
Erhan Karabardak - Cooper Mills Lawyers
Helen Kavadias - Phillips Ormonde Fitzpatrick
Simon Kneebone - Banki Haddock Fiora
Peter Le Guay - Thomson Geer
Lynne Lewis - Bird & Bird
Philip Macken - Brand Haven
Anne Makrigiorgos - Griffith Hack
Joanne Martin - FB Rice
Kate Maynard - Lesicar Maynard Andrews
Sean McManis - Shelston IP Pty Ltd
Cate Nagy - King & Wood Mallesons
Victor Ng - Cooper Mills Lawyers
Tim O’Callaghan - Piper Alderman
Michael O’Donnell - Phillips Ormonde Fitzpatrick
Jacqui Pryor - Mark My Words Trademark Services PTY LTD
Megan Ryder - Madderns
Nicola Scheepers - Griffith Hack
Lance Scott - Getstalt Law
Adam Sears - Davies Collison Cave Pty Ltd
Michael Seifried - FB Rice
Chris Sgourakis - Griffith Hack
David Stewart - Williams + Hughes
Craig Vinall - Madderns
Marie Wong - Wrays

Individuals: transactions

Donna Bartlett - Macpherson Kelley
Scott Bouvier - King & Wood Mallesons
Anita Cade - Ashurst LLP
Rodney De Boos - Davies Collison Cave Pty Ltd
Jonathan Flintoft - Baker McKenzie
Timothy Golder - Allens
Karen Anne Hayne - Addisons
Georgina Hey - Norton Rose Fulbright LLP
Eugenia Kolivos - Corrs Chambers Westgarth
Jane Owen - Bird & Bird
Shannon Platt - Sparke Helmore Lawyers
Kristin Stammer - Herbert Smith Freehills LLP
Stephen Stern - Corrs Chambers Westgarth
Timothy Webb - Clayton Utz

Australia: The Bar

Sets

1
Nigel Bowen Chambers
2
5 Wentworth Chambers
Aickin Chambers
Owen Dixon Chambers
Tenth Floor Chambers
5 Wentworth Chambers

When infringers are running riot, Andrew Fox is a “superb” ally on which to call. Phoebe Arcus complements her “deep” trademark practice with wide-ranging competition law knowledge. Having participated in the Apple v Samsung litigation, Julian Cooke is a key port of call for high-stakes enforcement.

Aickin Chambers

The distinguished Bruce Caine QC and Benjamin Fitzpatrick are both highly adept in disputes across the spectrum of intellectual property. Andrew Maryniak QC is a font of knowledge when it comes to product liability cases.

Nigel Bowen Chambers

Renowned names David Catterns QC and Christian Dimitriadis SC are among the most highly acclaimed IP barristers in the country. Richard Cobden SC’s forte lies at the point where intellectual property intersects with the music business and entertainment law. Likewise, former BBC World Service in-house counsel Michael Hall SC has overseen a number of landmark matters in this arena, for example, he worked on APRA v Apple. Founding member of the set, Sophie Goddard SC is as hard hitting as they come; she is a veritable encyclopaedia on trademark law. Hamish Bevan’s far-ranging IP practice benefits from a wealth of administrative law knowledge. Justine Beaumont and Chris Burgess have developed finely tuned senses for what will swing a cliff-edge case. Fluent Italian speaker Gabriella Rubagotti’s broad practice extends beyond intellectual property into constitution, banking and media law.

Owen Dixon Chambers

“David Shavin QC has been around for a long time and is highly respected for the efficient and effective way he runs cases.” The same can be said for Adrian Ryan SC, who brings notable administrative law expertise to the table. Also proficient in competition and regulatory law, Will Houghton QC is not afraid to dive head first into the nitty-gritty details of a case. Colin Golvan QC’s never-say-die attitude has saved the day for countless brand owners. Ian Horak is best known for his redoubtable patent practice, but he is also eminently capable when it comes to soft IP matters. Simply passionate about brands and innovation, Siobhan Ryan is more than willing to burn the midnight oil for her clients. Meticulous, committed and creative are three adjectives that characterise Louise Duncan’s practice. An arbitrator with the Asian Domain Name Dispute Resolution Centre, Andrew Sykes has a passion for all things relating to the online world. Finally, vice president of the IP Society of Australia and New Zealand, Luke Merrick is a lodestar for the community.

Tenth Floor Chambers

The razor-sharp Tony Bannon SC recently acted for the Australian Olympic Committee against Telstra in a momentous dispute, while John Hennessy SC adeptly represents a diverse range of clients – from manufacturers to publishers. Brands looking for someone who can draft a bulletproof submission should go straight to Angus Lang, while alternative dispute resolution is the metier of the perspicacious negotiator Neil Murray.

Other recommended experts
Media maven Clarissa Amato of Banco Chambers routinely hits home runs in entertainment cases. New Chambers’ Julia Baird SC’s impeccable lines of reasoning are impossible to ignore. Carmen Champion at Four St James has unique franchising knowledge. Castan Chambers’ Tom Cordiner QC and Chancery Chambers’ Ed Heerey QC are both extremely clever IP masters who immediately get to the heart of the matter at hand. Stephen Rebikoff of Douglas Menzies Chambers’ has a sixth sense for what will move a judge in hard-fought brand battles. Four St James’ Dauid Sibtain is a courtroom celebrity with his finger firmly on the pulse of IP and media law.

Senior counsel

Bruce Caine QC - Aickin Chambers
David Catterns QC - Nigel Bowen Chambers
Richard Cobden SC - Nigel Bowen Chambers
Tony Bannon SC - Tenth Floor Chambers
Christian Dimitriadis SC - Nigel Bowen Chambers
Sophie Goddard SC - Nigel Bowen Chambers
Michael Hall SC - Nigel Bowen Chambers
John Hennessy SC - Tenth Floor Chambers
David Shavin QC - Owen Dixon Chambers
Julia Baird SC - New Chambers
Tom Cordiner QC - Castan Chambers
Colin D Golvan QC - Owen Dixon Chambers
Ed Heerey QC - Chancery Chambers
Will Houghton QC - Owen Dixon Chambers
Andrew J Maryniak QC - Aickin Chambers
Adrian J Ryan SC - Owen Dixon Chambers

Junior counsel

Hamish Bevan - Nigel Bowen Chambers
Julian Cooke - 5 Wentworth Chambers
Benjamin J Fitzpatrick - Aickin Chambers
Andrew Fox - 5 Wentworth Chambers
Angus Lang - Tenth Floor Chambers
Luke Merrick - Owen Dixon Chambers
Neil Murray - Tenth Floor Chambers
Andrew Sykes - Owen Dixon Chambers
Clarissa Amato - Banco Chambers
Phoebe Arcus - 5 Wentworth Chambers
Justine Beaumont - Nigel Bowen Chambers
Chris Burgess - Nigel Bowen Chambers
Carmen Champion - Four St James
Louise Duncan - Owen Dixon Chambers
Ian P Horak - Owen Dixon Chambers
Stephen Rebikoff - Douglas Menzies Chambers
Gabriella Rubagotti - Nigel Bowen Chambers
Siobhan Ryan - Owen Dixon Chambers
Dauid Sibtain - Four St James
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Issue 71