Australia

Australia’s IP market has undergone significant structural change in recent years; mergers between law firms and the lateral movement of teams away from newly merged entities to competitors has certainly shaken things up; as has the acquisition of IP firms by IPH and QANTM Intellectual Property. Expanding on the latter point, these holding companies have been making moves overseas – IPH acquired New Zealand top-dog AJ Park and QANTM added Malaysia’s Advanz Fidelis to its roster. Independent firms are reportedly thriving in the new environment – and small boutique practices are proliferating too. It has also been an eventful year as the government has made changes in line with recommendations made in 2016 by the Productivity Commission. Parties are now free to file non-use actions three years – as opposed to five years – from the date of registration to alleviate clutter at the trademarks registry; new parallel import laws have also been enacted. Further legislative changes are expected to be forthcoming.

Firms: enforcement and litigation

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

Firms: prosecution and strategy

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

Addisons

Unlike other full-service firms that operate a supporting IP unit, Sydney outfit Addisons has a dedicated focus on intellectual property. An impressive line-up of five soft IP partners is responsible for one-quarter of Addisons overall business and the team also has additional capabilities in media, gaming and employment law to boot. Straddling the contentious/non-contentious divide with dexterity, the firm draws on a select network of foreign associates to provide the same high standards no matter where its illustrious clients need support; thus, it strikes a chord with business-to-consumer companies such as Virgin and Formula One. Wearing the captain’s armband is Karen Anne Hayne, a “highly respected” adviser, enforcer and a repository of trust among top multinationals. For 18 years she has been the eyes and ears of Virgin Enterprises down under and a guardian of its prized brands. As one respondent recounts: “Karen is immensely experienced, responsive and practical, she cooperates seamlessly with in-house teams to offer well-considered suggestions in line with the client’s budget and business priorities. Her positive working relationships with enforcement authorities and local investigators allow her to leap right into action when infringement issues spring up.” Tim Clarke frequently collaborates with Hayne on portfolio management and enforcement. Having served as a trademark examiner, he knows IP Australia proceedings like the back of his hand. The arrival of “eminent practitioner” Donna Short from Henry Davis York gave a substantial boost to the Addisons IP practice. Short comes highly recommended for her “resolutely pragmatic advice, she works in an efficient, knowledgeable and responsive manner and clients relish her problem-solving abilities”.

Allens

Positioned at the top end of the trademark market, the dynamic, all-encompassing trademark offering at Allens is a tantalising option for top multinationals and Australian entities. The firm is blessed by the presence of Philip Kerr, one of Australia’s most dedicated IP practitioners. Kerr has been a member of the firm for 46 years and expertly tends to the Australian portfolios of PepsiCo and Sony Corporation; he is equally effective in contentious settings, having recently appeared before the Federal Court to appeal against an IP Australia decision on behalf of Aloe Vera of America. Practice leader Miriam Stiel has had an impressive year, having thwarted an attempt by Taronga Conservation Society Australia to oppose Sydney Zoo’s application for an eponymous mark and having secured new client FitBit. The “warm and collegial” transactional doyen Timothy Golder earns enthusiastic plaudits for his meticulous approach: “He is a great problem solver, often carefully explaining to clients the strategic ways to better the position of their trademark portfolios.” Andrew Wiseman continues to shine in his work in the healthcare, entertainment and food and beverage sectors across the contentious/non-contentious divide, while consultant Jim Dwyer is on hand to assist in complex situations.

Ashurst Australia

Ashurst Australia is “an incredible option for enforcement and litigation, it brings deep expertise and excellent standards to dispute work, which is made possible by meticulous preparation and the peerless coordination of every component in a case”. Contentious nous aside, the firm’s seven-partner squad offers impressive depth when it comes to portfolio management. A burgeoning marketing and brand custodianship practice coupled with an all-encompassing understanding of the regulatory aspects of the pharmaceuticals, cosmetics and medical devices industries provide a dynamic dimension to the firm’s trademark offering. “A font of knowledge in trademark prosecution and IP Australia proceedings, Peter Chalk instils in every brief great pragmatism and commercial sense.” “Vastly experienced in the full range of IP matters, global IP and media practice head Lisa Ritson proffers well-balanced and tactically astute advice.” Managing partner of the Sydney office, Anita Cade is a contentious and transactional aficionado with an in-depth understanding of IP and media law.

Baker McKenzie 

For international brand owners, Baker McKenzie has all the bases covered. The firm is ranked in 12 Asia-Pacific chapters in the WTR 1000, proffering global businesses with consistently high service standards in the entire region from Beijing to Yangon through to Sydney. Most recently the firm’s geographic coverage has been extended to the Pacific Islands; coupled with its proprietary GIMP and MAPS software and a substantial back office team in Manila, Baker McKenzie is a true one-stop shop for regional portfolio management and enforcement actions. The firm has also branched out to plant variety rights, a global initiative led by Australian IP group leader Richard Gough. A formidable litigator, he is also an experienced adviser who often gets involved at the nascent stages of the life of a brand. Author of the firm’s copyright handbook, Robert Arnold understands all the peculiarities of IP law in numerous countries. Prosecuting difficult marks is his forte; he recently pushed a trademark to grant for a global technology company after a decade-long tussle with IP Australia and the Federal Court. Healthcare group captain Elisabeth White has an astute understanding of the regulatory landscape, which she recently leveraged in assisting Valeant Pharmaceuticals International in its sale of iNova Pharmaceuticals division alongside Jonathan Flintoft. He leads the set’s licensing practice and is particularly knowledgeable about securing IP rights in Southeast Asia. Trademarks head Byron Angelopulo is another accomplished brand protection adviser, while Ross McLean contributes a wealth of competition law knowledge to the side.

Banki Haddock Fiora

“Banki Haddock Fiora is a process-driven firm with an excellent collection of professionals. It is tremendously good at what it does.” The team has been expanding rapidly and it rises to the highly recommended tier in the WTR 1000 for this year. Last year, the number of trademark filings more than doubled and Alison McGinn was elevated to partner. “She is highly knowledgeable about Australian trademark practice, looks at every piece of work with a commercial outlook and is massively responsive. Her excellent service is also great value for money.” Heading up the trademark group with poise is Margaret Shearer. “She is highly recognised for her pragmatic and efficient working style and illustrious client base,” which includes Costco, Pfizer and Nestlé. Ex-Baldwins man Simon Kneebone provides “timely and pragmatic advisory support and is an authority on Trans-Tasman IP protection”. Finally, dispute resolution leader Julie Robb provides fierce firepower in the courtroom.

Bird & Bird

Bird & Bird’s sole Antipodean outpost runs the gamut when it comes to intellectual property. Although the branch in Sydney is the firm’s newest office in the Asia-Pacific region, “it has really upped its game in the last two years, especially in the enforcement space”; and with a stellar network of highly-ranked Chinese, Singaporean and European outposts, it is most renowned for its cross-jurisdictional contentious prowess – this was on full display when the set assisted the UK-based Simba Sleep in a fight over its trademark rights in Australia, New Zealand and Singapore. This worldwide dispute fell within the remit of Lynne Lewis, a prodigious litigator and portfolio manager and the former MinterEllison IP practice head. Her partner Jane Owen wears the captain’s armband, while her diverse toolkit makes her a popular consultant for domestic and foreign companies alike. Most recently she has been representing the University of Wollongong in a Federal Court appeal against the University of Sydney.

Clayton Utz

Clayton Utz operates a six-partner IP practice with nationwide coverage by virtue of its Brisbane, Melbourne, Perth and Sydney offices. “Highly knowledgeable about the law and commercial realities faced by clients, it is a highly responsive team that excels in dispensing pragmatic advice.” The firm’s willingness to become embedded within its clients’ businesses is a major draw for big brands. For example, the firm looks after the global portfolio of 2XU in over 50 countries and is running oppositions and an anti-counterfeiting programme in key markets; for Toyota Australia the set is running Federal Court proceedings in addition to maintaining its Australian portfolio and a sweeping anti-piracy campaign. These responsibilities fall on the broad shoulders of Chris McLeod, who leads the IP and technology team in addition to the trademark prosecution and brand protection groups in Melbourne. Also helming the national advertising and marketing law practice, McLeod is an end-to-end brand protection master. Melbourne trademark group manager Mark Krenzer makes his debut in the WTR 1000 this year. He is a trademark, copyright and confidential information guru with a great deal of commercialisation experience and often cooperates with McLeod. His colleague Timothy Webb is favoured by Australian Securities Exchange-listed companies and lately has been leading a Federal Court litigation on behalf of Frucor Beverages Limited against the Coca-Cola Company in relation to a colour mark registration. Frequently collaborating with Webb are veterans Brett Doyle and Mary Still. With 25 and 30 years of experience in the field respectively, the pair bring substantial contentious and non-contentious IP depth to the firm.

Cooper Mills Lawyers

A new arrival in the WTR 1000, Melbourne telecoms, technology and IP boutique Cooper Mills Lawyers is a “responsive, knowledgeable and effective brand protection partner” specialising in the full spectrum of trademark work. The firm’s two IP experts Erhan Karabardak and Victor Ng receive emphatic client feedback. “Karabardak possesses a thorough understanding of trademark and domain name laws and especially metadata. Highly strategic, his knowledge in the use of trademarks in the internet space in unparalleled. Clients can count on Ng to provide honest insight into devising and implementing a complete brand strategy that includes strategising around the registration of trademarks and defending ferocious attacks.”

Corrs Chambers Westgarth

Contentious and transactional powerhouse Corrs Chambers Westgarth truly epitomises the client-focused approach. “Always carefully considering the best solution for client problems, it is excellent in terms of strategising and executing trademark work; it also puts in considerable effort to minimise costs.” Practice leader Stephen Stern has carved out a stellar reputation for running trademark litigation for a host of household names. Sought after by the Richemont Group, Kering Group and LVMH, he is also a big name when it comes to representing luxury brands in all types of trademark instructions. “Personable, knowledgeable and pragmatic,” Odette Gourley is a “legendary” attorney who is “always available for a call”. Kate Hay is a patent, trademark and copyright maven well-known for her work in the life sciences and technology fields. She is a Griffith Hack alumnus, as is Jürgen Bebber, who is skilled in the clearance, registration, maintenance and enforcement of trademarks, his natural affinity for building and maintaining excellent working relationships with clients has won him a loyal client base. Prosecution whizz Eugenia Kolivos rounds off the Corrs squad. “Providing clients with accurate, reliable and workable solutions, she can transform instructions into tangible results in an amazingly short time span.” Clients also appreciate her ability to condense complex concepts into plain language.

Davies Collison Cave Pty Ltd 

One of the most prolific filers of trademarks in Australia, Davies Collison Cave Pty Ltd “is the gold standard for Australian firms”. Chock full of talented practitioners on either side of the contentious/non-contentious schism who are “perennially professional and easy to deal with, it provides genuinely great service and to-the-point advice”, recently it has also recruited a dedicated trademark attorney in its Brisbane office. The “knowledgeable, responsive and pragmatic” Adam Sears helms the side’s illustrious trademark practice. He has a percipient understanding of the trademark laws in Australia and New Zealand and is a dab hand at securing overseas registrations via the Madrid Protocol. Highly adaptive to clients’ needs, Nick Holmes recently took down over 50 infringing listings on Amazon on behalf of DuluxGroup (Australia). “Highly knowledgeable and client-focused, Michael Wolnizer takes the time to understand the needs of his clients and has the commercial sense to deliver the best possible outcomes.” Globally attuned adviser Ian Drew can represent brand owners directly before the Australian, European, New Zealand, Pacific Island and UK trademark offices, while Marion Heathcote is feted for her “professional, prompt, efficient and cost-effective services”. “Informed by an in-depth understanding of the nuances of Australian trademark law, she always explains available options and makes commercially minded recommendations.” “An extremely responsive and practical attorney who prioritises client interests,” Chris Jordan is a crucial ally for brand owners in must-win contentious matters. Hotshot litigator John Hannebery has recently convinced the courts to issue an injunction order against two infringers on behalf of Burberry. Meanwhile, Timothy Creek is the firm’s foremost authority on transactional mandates. Finally, the arrival of Stuart Green from DibbsBarker has given the practice extra depth, research respondents applaud his commitment to the highest standards of workmanship.

DLA Piper

Drawing on a sprawling network of offices around the world, DLA Piper makes the ideal candidate for multi-jurisdictional mandates; a case in point is the representation of Australian Wool Innovation and Fitbit in multiple countries. The practice is fronted by the highly acclaimed Melinda Upton who co-chairs the firm’s global trademark, copyright and media group. “A peerless lawyer and business partner, everything she does is rooted in the business goals of her clients. Always putting her clients first, she is a source of commercial and pragmatic advice because she truly understands the pressures faced by in-house counsel and the type of advice brands need. She is also a strong proponent of diversity and inclusion in the workplace and frequently contributes to the firm’s initiatives in these areas.”

FB Rice

The second largest patent attorney firm in Australia, FB Rice is renowned for its “deep reservoir of trademark knowledge” and its practitioner’s “admirable persistence and diligence in advancing the interests of their patrons”. In addition to taking on Antipodean instructions, the Brisbane, Melbourne, Perth and Sydney-based firm’s Association of Southeast Asian Nations filing practice is also blossoming. The dynamic Joanne Martin takes the lead at the trademark department. “Promptly responding to queries with her commercial and pragmatic answers, she is a guru in trademark prosecution and never over-complicates an issue.” With over 25 years of experience in the trade, “she has a knack for predicting the outcomes of cases” and works out of Sydney. Brands in Melbourne would do well to seek out Michael Seifried, he is the manager of the Australian portfolio of LG Corp and has recently been elevated to partnership. “Aside from giving clients rigorous explanations of Australian trademark law, he invariably lays down a multitude of pragmatic solutions because he has the vision to see the broader commercial picture.”

Gadens

A full-service law firm with outposts in Adelaide, Brisbane, Melbourne and Sydney, Gadens makes its debut in the WTR 1000 this year. While it specialises in all types of IP work – barring patent prosecution –the presence of Glenn McGowan QC makes Gadens a force to be reckoned with when it comes to dispute resolution. Donna Bartlett recently moved from Macpherson Kelley to found the Sydney IP practice. “The recommendations she gives are based on the interests of the clients rather than mere revenue considerations.” Adam Walker strikes gold time and time again with his “great depth of advice and accurate cost projections”.

Gilbert + Tobin

“Home to robust corporate, technology, copyright and trademark practices, Gilbert + Tobin is a popular port of call for large-scale litigation.” Some of the latest work highlights for the outfit include defending claims of trademark infringement, passing off and contravention of the Australian Consumer Law on behalf of Bed Bath & Beyond, representing Google-backed Calico in a Federal Court matter at the Federal Court and reaching a favourable settlement for Taronga Conservation Society Australia with Sydney Zoo following a trademark opposition. Trademarks chief Lisa Lennon is “smart, detail-orientated and responsive” prosecution maestro who earns plaudits for her ability to prevail in the registration of marks involving acquired distinctiveness. Her partner Siabon Seet comes recommended for her “deep expertise in trademark laws”. “Highly professional and skilful, she provides sometimes unconventional, yet insightful strategic advice in navigating the legal and commercial peculiarities of trademark law. She makes the effort to understand the client’s business priorities, so her advice is always commercial, and she never flinches in the face of difficult discussions around contentious issues.” Finally, IP group helmsman Michael Williams operates at the intersection between IP and technology.

Griffith Hack

Managing some 25,000 trademarks for top-flight concerns such as Asahi Beverages and Richemont, Griffth Hack is a leading filer of trademarks and trademark oppositions in Australia. A steadfast commitment to maximising value for its clients is a core value of the firm, which is manifested through its online trademark management system, Amplia. The most recent adopter of this innovative platform is Bayer AG, having transferred its Australian and New Zealand trademark portfolio to the firm’s Anne Makrigiorgos. The first female practitioner to head the Institute of Patent and Trademark Attorneys of Australia, she is a crack portfolio manager with over 25 years of experience advising and managing the portfolios of Australian and multinational companies. A worldly practitioner who has worked in trademark firms in South Africa and New Zealand, Nicola Scheepers has an astute understanding of global portfolio management issues and a stellar track record for obtaining favourable results in Australian opposition proceedings. Kellie Stonier has been collaborating with Chris Sgourakis to enforce key brands belonging to pharmaceutical company Allergan, and lately the pair have been flexing their muscles in Federal Court and opposition proceedings. Qualified as lawyers and trademark attorneys, the duo are well-positioned to offer clients 360-degree advice and expert brand protection. “Highly knowledgeable in trademarks and designs,” Sgourakis comes recommended for his “top-notch analysis of the business and competitive landscape”, which leads to “clear and pragmatic advice delivered in plain language”.

Herbert Smith Freehills LLP

Operating from its Sydney and Melbourne offices, corporate giant Herbert Smith Freehills is “a formidable force within the trademark sphere”. Specialising in the provision of highly strategic and commercial advice and services, the firm is packed to the rafters with world-class talent that consistently exceeds the expectations of clients. “A true leader in the trademark market, the pragmatic and innovative advice on portfolio management dispensed by Celia Davies is guaranteed to yield results that serve commercial goals.” A diverse selection of top brands – including the Commonwealth Bank of Australia and Seven West Media Group – consult Davies on the whole range of strategic trademark matters, from brand selection through to trademark disputes. She recently teamed up with patents sage Shaun McVicar to enforce Treasury Wine Estates’ Penfolds brand against the Chinese-based Rush Rich companies in Federal Court proceedings. “McVicar’s commercial and strategic outlook on litigation means that brands are in good hands when he is on a case.” Sue Gilchrist is another top-flight litigator. Having stepped down from the managing partnership of Asia and Australia, the IP head has been acting for ACPA Pty Ltd and Anchorage Capital Group against Anchorage Capital Partners in a trademark infringement matter before the Full Federal Court. Kristin Stammer is another eminent adviser with “terrific technical trademark knowledge”. “An excellent commercial lawyer with impeccable expertise in commercialising intellectual property, she provides strategically driven advice that never deviates from commercial objectives.”

HopgoodGanim Lawyers

“A high degree of responsiveness, great value for money and a results-driven approach” are the order of the day at Brisbane and Perth firm HopgoodGanim. The set attracts a healthy concentration of software companies and most recently it secured the entire Australian trademark portfolio of Nvidia Corporation. The full-service firm has also been enjoying rapid growth, having recruited two additional patent and trademark attorneys and experienced a marked rise in licensing work. Hayden Delaney is a source of “profoundly practical and insightful advice on matters sitting between business, law and trademarks”.

Innofy

A new entrant to the WTR 1000 located at a government-backed innovation hub in Brisbane, Innofy is a burgeoning patent and trademark firm. Since its founding in 2017, the firm has developed a loyal following among start-up companies. Biotech pro Andrew Clarke recently succeeded in registering a sign language mark for Deaf Services Limited before IP Australia.

K&L Gates

With offices in five continents, K&L Gates is the 11th largest law firm in the world and is well-positioned to tackle multi-jurisdictional trademark mandates. Research respondents report that “responsiveness is a firm-wide strength”. Tony Watson is a key contact for prosecution and contentious matters.

King & Wood Mallesons

Acing key performance indicators such as growth in revenue and team size, the “impressive” team at King & Wood Mallesons continues to go from strength to strength. Central to its success is a linear approach to trademark work in which one partner advises clients holistically across the contentious/non-contentious divide. Intimate working relationships with the outfit’s gold-ranked Chinese counterparts is another magnet for marquee brand owners. For example, Blackmores Limited recently migrated its entire Australian and Asian portfolios to the firm partly due to its consistent strength across the region. Katrina Rathie is the client relationship manager for Blackmores; she is famed for providing “insightful, strategically sound and technically reliable advice geared towards achieving business goals”. “Easy to work with and highly responsive, Rathie goes the extra mile to ensure client satisfaction”. US companies – such as Amazon, Starbucks and PayPal – put tremendous stock in Cate Nagy’s “keen eye for identifying problems and talent for producing positive outcomes”. Most recently, she successfully fended off trademark cancellation and infringement proceedings commenced by GPO Grand on behalf of the Star Entertainment Group. Personifying the firm’s multi-jurisdictional prowess is Brisbane-based John Swinson. Alongside Nagy, he has been representing Spirits International in the longest-running Federal Court litigation against the Russian Federation in relation to the STOLICHNAYA mark while coordinating parallel proceedings in Europe, South America and the United States. Swinson is also a domain name expert and the Australian WIPO arbitrator with the most number of UDRP ownership decisions to his name. While Scott Bouvier is renowned for his top-notch transactional work, “he is an all-rounder with broad and varied experience in all commercial and IP matters”. Bill Ladas is an illustrious trademark prosecution lawyer “who has been making great strides since joining the firm”; in fact, since he was appointed partner in 2017 his team size has doubled. The London transplant has a stellar track record before the IP offices in Australia, Europe, New Zealand and the United Kingdom and is as knowledgeable about trademark lawyer as any practitioner in the WTR 1000. Finally, Matthew Swinn excels in patent infringement cases but also brings the heat in trademark, copyright and trade secret matters.

Macpherson Kelley

Breaking into the WTR 1000 this year, three-partner Macpherson Kelley recently welcomed Mark Metzeling, Ken Philp and Rita Khodeir who have given a substantial boost to the trademark practice, which now manages over 5,000 marks. The Brisbane, Melbourne and Sydney firm is most renowned for the provision of a cost efficient and commercial trademark service to both Queensland-based clients and multi-national entities.

Madderns

The independently owned Madderns recently commemorated its golden jubilee. In the words of one client: “Madderns provides cost and time effective solutions and is an extension of our team.” Located in South Australia, wineries form the lion’s share of the firm’s client base; and with three Chinese-speaking attorneys in its robust China team, the set is ideally placed to assist clients with contentious and non-contentious issues that span the two countries. Megan Ryder and Louise Emmett exemplify the firm’s “astute business approach to trademark work”; they make a dynamic duo in trademark opposition proceedings. An accomplished patent, designs and trademark guru, Craig Vinall commands a 360-degree perspective on IP protection.

McCullough Robertson

With more than 4,500 trademarks under its care, Queensland firm McCullough Robertson is a cost-effective option for global portfolio management, which it does so for Flight Centre in over 150 countries. Recently, it added a major technology company to its roster and has been conducting trademark clearance searches in Australia on its behalf. Belinda Breakspear fronts the IP and trademarks practice with verve.

MinterEllison

MinterEllison is renowned for its patent work but remains a potent force in the brand protection and trademark space. Prosecution, commercialisation and litigation are all firmly within the purview of the firm; it also brandishes additional capabilities in brands and reputation management. Robert Cooper is the name to note.

Norton Rose Fulbright Australia

With offices on six continents, Norton Rose Fulbright is in pole position to serve truly global portfolios. Most recently it won the patronage of BNP Paribas and Barclays with Qantas passing more work its way. Head of intellectual property Frances Drummond has been advising the Australian flag carrier on trademark prosecution and oppositions. Having worked in Hong Kong and the United Kingdom in IP firms and a multinational company, she approaches trademark work with an all-encompassing appreciation of the sector and the region-specific challenges her clients face. Frequently partaking in large transactional deals, it recently closed a $1.58 billion acquisition of Sirtex Medical on behalf of Varian Medical Systems with Georgina Hey conducting a review of the ownership structure and trademark portfolio. She is a source of “timely and to-the-point advice”. The set also has a bustling contentious practice; recent work highlights include the successful representation of Aldi Stores against Moroccanoil Israel before the Federal Court in relation to performance claims. Highly experienced litigator Jackie O’Brien was the spearhead of this victory. A fount of technical and legal knowledge, she always keeps a cool head.

Phillips Ormonde Fitzpatrick

Phillips Ormonde Fitzpatrick – composed of a trademark and patent attorney firm, a law firm and a search and investigations company – draws on 130 years of wisdom to provide a comprehensive range of IP services. With 47 trademark attorneys based in its Adelaide, Melbourne and Sydney offices and a proprietary online docketing system, the seamless management of large-scale portfolios across Australasia and Southeast Asia falls within the remit of Michael O’Donnell. “Clever and always bearing in mind cost concerns, O’Donnell has a great track record in handling trademark oppositions”. “The sole Australian member of the React anti-counterfeiting network is the real deal in the fight against fakes representing 98 custom notices in Australia.” Hailing from the IP department of Renault in France, Marine Guillou is the firm’s anti-counterfeiting guru who is sought after by Longchamp, Louis Vuitton and Honda Australia. On the contentious side, board chairman and senior litigator Greg Chambers recently prevailed in trademark opposition for the Coca-Cola Company in relation to the distinctiveness of a stylised mark. Newly elevated to partnership and a new name in the WTR 1000, David Longmuir has been fighting tooth and nail on behalf of Bed Bath ‘N’ Table against Bed Bath & Beyond before the Federal Court over claims of trademark infringement and contraventions of the Australian Consumer Law. Finally, Russell Waters is an absolute all-rounder who advises clients across the contentious/non-contentious divide. Also new to the WTR 1000 rankings this year are Chris Schlicht and Michael Squires, who are familiar faces before IP Australia proceedings. Schlicht is the firm’s deputy managing partner while Squires has spent 30 years at the IP coalface, which has transformed him into a well-rounded adviser on all types of trademark work.

Shelston IP Pty Ltd

A formidable patent and trademark attorney firm, Shelston IP is home to 12 trademark experts offering a “solid” trademark service that runs the gamut. As “one of the largest inbound practices in Australia”, the firm is famed for its representation of Disney and Johnson & Johnson. “Highly experienced” trademark team leader Sean McManis dispenses “thorough and pragmatic advice”, while Gerard Skelly regularly features in IP Australia proceedings.

Sparke Helmore Lawyers 

“Possessing an enviable reputation as a respected and experienced IP firm in Australia, Sparke Helmore’s deep reservoir of resources and ability to argue from a position of strength makes it an attractive option for potential litigants.” Shannon Platt provides well-informed counsel in any litigious situation by combining technical dexterity with the ability to articulate complicated issues in a concise manner, a formula which yields commercially significant decisions.

Spruson & Ferguson

The April 2018 amalgamation of Fisher Adams Kelly Callinans and Cullens with Spruson & Ferguson has created the most prolific filer of trademarks in Australia. The Melbourne trademark practice – headed by Tim Allen – is relatively new but making strong progress, having enticed Peter Hallett over from Watermark. “Allen has an extraordinary depth of trademark knowledge and provides clients with articulate, considered and pragmatic advice. Going the extra mile to accommodate clients’ requests and last-minute needs, he is the guardian of numerous marquee Australian brands.” On the other hand, Hallett is a consummate contentious and transactional ace. His colleague Sylvie Tso is a fresh face in the WTR 1000 for 2019. A fluent Chinese speaker and technology and trademark licensing buff, she matches cosmopolitanism with tremendous industry experience, having worked in-house at multiple US biotech companies before joining Spruson & Ferguson. “Easy to deal with, detailed-oriented and highly responsive,” she is also an authority on IP management, having authored the IP Manual for Australian Government Agencies. Khajaque Kortian, Ken Hamilton and John Michael Afaras form a formidable trio on the contentious side. “Kortian stands out for his efficient and proactive handling of massive and valuable portfolios from procurement through to the enforcement of trademark rights. Talented at negotiating win-win solutions for infringers, he views things through a commercial lens that is rare even among top-tier practices and his assistance truly helps clients achieve commercial outcomes.” With over 25 years of experience in intellectual property, Hamilton regularly scores victories in IP Australia proceedings. Afaras recently stepped down from the partnership but remains an integral consultant to the firm. Finally, Tracey Berger provides inspiring leadership to the Asia-Pacific trademark practice and the Sydney and Melbourne offices.

Thomson Geer

Adelaide, Brisbane, Melbourne and Sydney-based commercial law firm Thomson Geer debuts in the WTR 1000 this year on the back of enthusiastic market feedback. A historic firm with origins traceable back to 1885, it is seen as a secure, cost-effective and “high-quality” option for all types of IP work. A diligent portfolio manager for Reckitt Benckiser, Peter Le Guay is a polyglot with 20 years of experience, recently he has been fighting a copyright infringement matter against Fascinatisons on behalf of Gotop International before the Federal Court. Also based in Sydney, Dianne Beer has “broad and pragmatic experience across the contentious/non-contentious divide. Of late, she acted for Guess in a settlement with Gucci over the rights to the G trademark.

Wrays

“Wrays’s stellar performance stems not just from the December 2016 acquisition of EKM ip, but also as a result of a genuinely positive working culture. Practitioners do not learn just from working but also benefit from extensive contact with peers at conferences and events.” Having recently enlisted Jennifer McEwan as a new partner, the firm does an exceptional job overseeing the offshore interests of Australian companies – such as Bunnings and Harvey Fresh – particularly in China where bad-faith registrations are rampant. In this regard, Marie Wong is an indispensable ally. Wong heads the trademark group with alacrity and shines brightest in protecting wine, pharmaceutical, construction and fashion brands.

Other recommended experts

Having departed Watermark in May 2018, Joy Atacador now wears the captain’s armband at Denton’s IP and technology practice. Fiona Brittain has departed Davies Collison Cave Pty Ltd to join Marquette IP as special counsel, while Andrew Butler has migrated from Wrays to DC Collins. A fresh face in the WTR 1000, Colin Cheung is a “tough and active player in contentious matters with a first-class reputation among barristers”. He plies his trade at Actuate IP. Christine Ecob at Johnson Winter & Slattery is an IP and IT lawyer with a specialism in privacy issues. Over at Kepdowrie Chambers, Julian Gyngell has a keen eye for identifying and capitalising on IP-rich deals. The “fantastic” Helen Kavadias comes recommended for smoothly shepherding trademark applications in Australia and New Zealand. She recently joined HWL Ebsworth. The brand protection advice dispensed by Brand Haven man Philip Macken is informed by his “excellent trademark knowledge and experience”. Diligent portfolio manager Kate Maynard operates out of Lesicar Maynard Andrews. Melissa McGrath left K&L Gates for Mills Oakley in early 2018. Piper Alderman’s Tim O’Callaghan leads the Adelaide office and has great client relationship-building skills. Mark My Words Trademark Services’ Jacqui Pryor “truly has the interests of clients in mind and offers fantastic and timely advice”. Lance Scott leads a boutique practice at Gestalt Law and has a “strong following of premium clients”. Patent and trademark wizard Scott Sloan is now with Dentons in Sydney. David Stewart recently rejoined Bennett + Co from Williams + Hughes, along with the majority of his clients.

Individuals: anti-counterfeiting

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

Individuals: prosecution and strategy

  • Tim Allen - Spruson & Ferguson
  • Celia Davies - Herbert Smith Freehills LLP
  • Frances Drummond - Norton Rose Fulbright Australia
  • Timothy Golder - Allens
  • Bill Ladas - King & Wood Mallesons
  • Lisa Lennon - Gilbert + Tobin
  • Lisa Ritson - Ashurst Australia
  • Michael Wolnizer - Davies Collison Cave Pty Ltd
  • Byron Angelopulo - Baker McKenzie
  • Tracey Berger - Spruson & Ferguson
  • Peter J Chalk - Ashurst Australia
  • 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
  • Joanne Martin - FB Rice
  • Ross G McLean - Baker McKenzie
  • Mark Metzeling - Macpherson Kelley
  • Katrina Rathie - King & Wood Mallesons
  • Margaret Shearer - Banki Haddock Fiora
  • Donna Short - Addisons
  • Gerard Skelly - Shelston IP Pty Ltd
  • Melinda Upton - DLA Piper
  • 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 - Marquette IP
  • Andrew Butler - DC Collins Pty Ltd
  • Colin Cheung - Actuate IP
  • Andrew Clarke - Innofy
  • 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 Australia
  • Erhan Karabardak - Cooper Mills Lawyers
  • Helen Kavadias - HWL Ebsworth
  • Simon Kneebone - Banki Haddock Fiora
  • Mark Krenzer - Clayton Utz
  • Peter Le Guay - Thomson Geer
  • Lynne Lewis - Bird & Bird
  • Philip Macken - Brand Haven Legal
  • Anne Makrigiorgos - Griffith Hack
  • Kate Maynard - Lesicar Maynard Andrews
  • Alison McGinn - Banki Haddock Fiora
  • Chris McLeod - Clayton Utz
  • 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 - Gestalt Law
  • Adam Sears - Davies Collison Cave Pty Ltd
  • Michael Seifried - FB Rice
  • Chris Sgourakis - Griffith Hack
  • Michael Squires - Phillips Ormonde Fitzpatrick
  • David Stewart - Bennett + Co
  • Craig Vinall - Madderns
  • Adam Walker - Gadens
  • Marie Wong - Wrays

Individuals: transactions

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

Luminaries

  • Jim W Dwyer - Allens

Australia: The Bar

Sets

  • 5 Wentworth Pty Ltd
  • Aickin Chambers
  • Nigel Bowen Chambers
  • Owen Dixon Chambers
  • Tenth Floor Chambers

5 Wentworth Pty Ltd

An erudite barrister with a knack for alternative dispute resolution, Andrew Fox has all the tools to tackle infringement. The “wonderful” Phoebe Arcus is celebrated for her patent and trademark work. Armed with a percipient understanding of all types of intellectual property, Julian Cooke often makes appearances in high-stakes litigation and oppositions. Newly minted in the WTR 1000 and a relatively new barrister, Sonia Stewart earns plaudits for her “diligent, thorough and effective approach”. A sharp patents-focused litigator, Bruce Caine QC is equally effective in brand disputes.

Aickin Chambers

The highly experienced Benjamin Fitzpatrick “has an excellent track record in trademark oppositions and patent matters”. Commercial and IP litigator Andrew Maryniak QC has carved out a niche for himself in product liability matters.

Nigel Bowen Chambers

Chris Burgess is a compelling choice for must-win litigations, having been briefed in Apple v Samsung. An IP, media, consumer and banking law maven, Gabriella Rubagotti possesses supplementary nous in constitutional law. Highly proficient in administrative, commercial and equity laws, Hamish Bevan is a top choice for any kind of trademark case. Meanwhile, Justine Beaumont “has been incredibly busy this past year” and is an ever-reliable adviser. A force to be reckoned with in patent cases, Christian Dimitriadis SC enjoys a broad IP practice, which includes copyright and trademark matters. Ed Heerey QC “is the pre-eminent trademark barrister in Australia, bar none. Practically a full-time trademarks counsel, he expends a great deal of effort to give a presentation every year that serves as a great snapshot of the year’s major matters.” “There is no question that Michael Hall SC knows trademark law inside out.” Most renowned for his work in the copyright and trademark space, Richard Cobden SC possesses additional capabilities in telecoms, broadcasting and competition law. Finally, Sophie Goddard SC is an authority on IP and consumer law.

Owen Dixon Chambers

Andrew Sykes is a pro when it comes to opposition proceedings. A dexterous barrister with a large trademark practice, he recently prevailed in defending Aardwolf Australia against Nhon Hoa Nguyen by proving abandonment. The “excellent” Ian Horak has a long list of patent and trademark victories to his name. As one respondent enthuses: “He should be hired as you would not want to have him on the other side.” President of the Intellectual Property Society of Australia and New Zealand and a specialist in IP law since her admission to the bar, Louise Duncan is a dab hand at patent, trademark, design and copyright laws. Luke Merrick is a familiar face before the courts of Adelaide, Melbourne and Sydney. Marcus Fleming breaks into the WTR 1000 on the back of rave reviews from top-ranking litigators. Siobhan Ryan “is relatively junior but leads a burgeoning trademark practice”. Interviewees report that Adrian Ryan SC “leads a bustling patent practice but also has a stellar track record in trademark cases”. The author of several leading legal texts, Colin Golvan QC possesses exceptional knowledge in IP, trade practices and defamation law. A silk with 25 years of experience at the bar, David Shavin QC is a safe pair of hands for all IP cases. Will Houghton QC leads a broad practice, which encompasses commercial, media and administrative law.

Tenth Floor Chambers

John Hennessy SC is a well-rounded IP, media, IT and telecoms litigator who sits on the Federal Court and Copyright Tribunal committees. Recently appointed as senior counsel by the New South Wales Bar Association, Neil Murray SC commands impressive sectoral and legal knowledge. Tony Bannon SC is “one of Australia’s most respected trademark and patent barristers”. “Gilt-edged” Angus Lang has a busy patent practice but is a force to be reckoned with on trademark matters too.

Other recommended experts

Banco Chambers’ Clarissa Amato is a commercial, defamation, IP and media litigator with an excellent record in both London and Sydney. Chancery Chambers’ Peter Creighton-Selvay “is a superb junior who can run matters on his own” and makes his debut in the WTR 1000 for 2019. Tom Cordiner QC “is a true trademark maestro and is one of the most sought-after counsels”. He plies his trade at Castan Chambers. Douglas Menzies Chambers’ Stephen Rebikoff is a technology buff whose niche lies at the intersection between IP and administrative law. At Level 22 Chambers Dauid Sibtain has a diverse practice ranging from defamation and media law to equity and trusts through intellectual property.

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
  • Siobhan Ryan - Owen Dixon 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 - Douglas Menzies Chambers
  • Peter Creighton-Selvay - Chancery Chambers
  • Louise Duncan - Owen Dixon Chambers
  • Marcus Fleming - Owen Dixon Chambers
  • Ian P Horak - Owen Dixon Chambers
  • Gabriella Rubagotti - Nigel Bowen Chambers
  • Dauid Sibtain - Level 22 Chambers
  • Sonia Stewart - 5 Wentworth Chambers

Senior counsel

  • Bruce Caine QC - 5 Wentworth Pty Ltd
  • Richard Cobden SC - Nigel Bowen Chambers
  • Michael Hall SC - Nigel Bowen Chambers
  • Ed Heerey QC - Nigel Bowen Chambers
  • Tony Bannon SC - Tenth Floor Chambers
  • Tom Cordiner QC - Castan Chambers
  • Christian Dimitriadis SC - Nigel Bowen Chambers
  • Sophie Goddard SC - Nigel Bowen Chambers
  • John Hennessy SC - Tenth Floor Chambers
  • David Shavin QC - Owen Dixon Chambers
  • Colin D Golvan QC - Owen Dixon Chambers
  • Will Houghton QC - Owen Dixon Chambers
  • Andrew J Maryniak QC - Aickin Chambers
  • Adrian J Ryan SC - Owen Dixon Chambers