Intellectual Property2019-08-19T07:31:09+00:00

Intellectual Property

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Put Their Money Where Their Mouth Is

When people think of trademarks, they typically think
of a logo or a business name, however trademarks are so much more.

Our team has extensive expertise in providing intellectual property advice that is tailored to meet the needs of any business, from small entrepreneurs to large multinational corporations. We assist clients in all types of matters, including generally advising on intellectual property, disputes, and transactional work.

A company’s rational, comprehensive and consistent handling of intellectual property rights requires that the company adopts an “IP strategy” – i.e. a strategy, which sets out how the company will respond to its own and other parties’ intellectual property rights. We have extensive experience with providing advice on and preparing IP strategies in close cooperation with our clients.

Another significant part of our team’s work relates to disputes. We prefer to commence our assistance before any disputes arise, and we work proactively to avoid disputes (e.g. agreements ready to go when handling or preparing cease and desist letters). If a dispute arises, our clients can draw on our team’s significant experience in respect of validity cases, infringement cases and other intellectual property rights law disputes.

Another but equally important aspect of the services provided by our team concerns “transactional IP”. This includes all types of agreements concerning intellectual property rights, including agreements where intellectual property law is not the primary focus point such as confidentiality agreements, license agreements, transfer agreements and R&D agreements. Furthermore, we provide assistance in respect of assessing intellectual property aspects in due diligence processes as part of M&A projects.

Expertise

  • Alliance agreements
  • Brand protection
  • Coexistence agreements
  • Commercialisation of intellectual property and know-how
  • Confidentiality agreements
  • Copyright
  • Data breach notifications
  • Data ownership and privacy issues
  • Designs
  • Digital commerce and documentation
  • Digital signature documentation
  • Disputes and infringement
  • E-Platforms
  • International portfolio management
  • IP infringement claims
  • Licensing and license agreements
  • Managing intellectual property portfolios, Australia and international
  • Manufacturing agreements
  • Ownership transfer and acquisition
  • Passing off
  • Patents
  • Plant breeder’s rights
  • Product labelling
  • Protecting and exploiting intellectual property
  • Protection of confidential information and trade secrets
  • Registrations, Australia and international
  • Sale and purchase of intellectual property rights and know-how
  • Securing and commercialisation of intellectual property rights and know-how
  • Trade marks

Examples

  • acting for a major retailer in successfully defending allegations of copyright infringement made by a competitor in the Federal Court
  • managing the worldwide IP applications, registrations and database for a national retail group
  • quickly resolving a trade mark infringement allegation that had the potential to delay the imminent launch of a major hotel
  • acting for international brewing company contractually securing their trade secrets and know how in relation to all their sub suppliers
  • managing IP portfolio for multinational renewable energy company
  • securing colour trademark for large plumbing company
  • successfully defended a multimillion dollars copyright infringement claim for a large electronics manufacturer
  • negotiating and drafting licence agreement for the Commonwealth Games logo
  • acting for major LED manufacturer in successfully defending allegations of trademark infringement in the UK
  • securing 3D trademark for international toy manufacturer
  • securing trademark of descriptive nature for large industry association
  • defending restaurant owners against unwarranted allegations of trade mark infringement concerning their restaurant name, and persuading the other party not to pursue litigation.

Our People

Andrew Sutherland

PARTNER, SYDNEY

Charlotte Nielsen

CONSULTANT, BRISBANE

Robyn Purdy

SENIOR ASSOCIATE, MELBOURNE

Bishoy Genday

SENIOR ASSOCIATE, SYDNEY

Matthew Kennett

SENIOR ASSOCIATE, SYDNEY