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

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

Firms: prosecution and strategy

  • Highly recommended
  • Ashurst
  • Baker McKenzie
  • Davies Collison Cave Pty Ltd 
  • FB Rice
  • Gilbert + Tobin
  • Griffith Hack
  • Herbert Smith Freehills LLP
  • King & Wood Mallesons
  • Phillips Ormonde Fitzpatrick
  • Spruson & Ferguson
  • Recommended
  • Allens
  • Banki Haddock Fiora
  • Bird & Bird
  • Clayton Utz
  • Corrs Chambers Westgarth
  • DLA Piper LLP
  • HopgoodGanim Lawyers
  • Madderns
  • McCullough Robertson
  • Norton Rose Fulbright LLP
  • Shelston IP Pty Ltd
  • Sparke Helmore Lawyers 
  • 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

“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.”

Davies Collison Cave Pty Ltd 

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.

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.

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.

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.

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.”

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.

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.

Sparke Helmore Lawyers 

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.

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.

Other recommended experts

Macpherson Kelley’s Donna Bartlett’s pragmatism and flexibility in meeting the needs of a diverse client list earn her a place in the WTR 1000 this year, while Dianne Beer of Thomson Geer is lauded for her “astute and prompt business-minded support” in rights transfers. A trans-Tasman trademark attorney, Innofy’s Andrew Clarke prosecutes with aplomb and has particular expertise in the biotechnology sector. Christine Ecob at Johnson Winter & Slattery is a pharmaceuticals pro who complements her stellar trademark practice with notable packaging and labelling expertise. Julian Gyngell at Kepdowrie Chambers has advised on scores of high-value international transactions with substantial trademark elements. The “really outstanding” Erhan Karabardak of Cooper Mills is a “preeminent” domain names lawyer. Thomson Geer’s Peter Le Guay delivers “exceptional portfolio management support characterised by swift responsiveness and a practical focus on clients’ business goals”. Former Halfords IP partner Philip Macken recently established the Brand Haven consultancy. As an international trademark portfolio manager he demonstrates a deft touch; he also shines in IP commercialisation. Kate Maynard at Lesicar Maynard Andrews is the portfolio manager of many clients’ dreams; she always keeps them in the loop with her crystal clear and concise communication skills. Mark Metzeling “saves clients money with comprehensive knowledge of the nuances of Australian trademark law. He’s very professional and generous with his time too”. He recently joined Macpherson Kelley. A “highly knowledgeable and personable” lawyer, Victor Ng at Cooper Mills provides “concise, sensible and commercial strategic support at a competitive price point”. Piper Alderman’s whip-smart prosecution pro Tim O’Callaghan completes projects on budget on and on time. The founder of Mark My Words Trademark Services, Jacqui Pryor is “extremely skilled in trademark clearance searches. She knows how to interpret the results in a way that will provide immense value for budding enterprises.” Lance Scott at Gestalt Law shows a “keen eye for detail” with his perspicacious portfolio management counsel; he has an eye for separating the trademark wheat from the chaff. Williams + Hughes’ David Stewart is a “much-respected practitioner who excels in trademark oppositions”.

Individuals: anti-counterfeiting

  • Stephen Stern - Corrs Chambers Westgarth
  • 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

Individuals: enforcement and litigation

  • Peter J Chalk - Ashurst
  • 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
  • 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
  • Shannon Platt - Sparke Helmore Lawyers
  • Katrina Rathie - King & Wood Mallesons
  • Lisa Ritson - Ashurst
  • 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 - Dentons
  • 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
  • Michael Wolnizer - Davies Collison Cave Pty Ltd
  • Tim Allen - Spruson & Ferguson
  • Byron Angelopulo - Baker McKenzie
  • Tracey Berger - Spruson & Ferguson
  • Peter J Chalk - Ashurst
  • Brett Doyle - Clayton Utz
  • Louise Emmett - Madderns
  • Stuart Green - Davies Collison Cave Pty Ltd
  • 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
  • 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 - Dentons
  • 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
  • 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

Luminaries

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

Australia: The Bar

Sets

  • Nigel Bowen Chambers
  • 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.

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

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