Len Hickey

Special Counsel
Melbourne

Legal Expertise

Expertise

Len is an experienced intellectual property lawyer with expertise across all areas of IP. His experience includes intellectual property enforcement and litigation, trade mark registration, intellectual property commercialisation, marketing law and breach of confidence claims.

Prior to joining Cornwalls, Len worked at international law firm K&L Gates as a senior associate and also as a lawyer in a number of specialist IP firms. In addition, he worked as the internal legal counsel for the Kraft Heinz Company based in Melbourne, where he oversaw major IP and marketing law projects and litigation spanning Australia, New Zealand, China and South East Asia.

Len regularly presents to clients and industry on current legal developments affecting businesses in his areas of practice, including recent court decisions concerning IP and marketing laws. He has also conducted litigation at trial and appellate levels in the Federal Court of Australia and the Supreme Court of Victoria.

He has particular industry expertise in the fast-moving consumer goods and food and beverages industries.

Experience

Len’s recent experience includes acting for:

  • the applicant in a large and complex breach of confidence case against 13 respondents including companies in Korea

  • the owner of the iconic Corner Hotel music venue against multiple respondents in a trade mark infringement case

  • multiple parties in defending design infringement claims
  • an Australian company against an Israeli company in a complex multi-proceeding case with trade mark and breach of contract claims

  • an Australian oil technology company in enforcing patent rights against an Australian competitor

  • the appellant in a landmark patent licensing case regarding s145 of the Patents Act 1990

  • company and director respondents in a patent infringement proceeding in the Federal Court relating to window winder technology

  • a US pet toy manufacturer and its Australian subsidiary against an Australian importer of products who was infringing our client’s registered shape trade mark.

Other recent matters include:

  • advising local and foreign clients on multiple trade mark opposition and prosecution matters

  • documenting licence and support services arrangements for a client’s software as part of a major project to modernise IT systems for the NSW Police Force

  • advising a US stock market operator on a proposed licence of its stock market index and trade marks to an Australian derivatives issuer, including advice on indemnities and IP infringement risks

  • drafting, reviewing and negotiating numerous procurement and operational contracts, including goods/services supply agreements, distribution agreements, product development agreements, sponsorship agreements and software licence agreements

  • advising local and foreign clients on trade mark oppositions and non-use actions, and regularly instructing foreign agents on trade mark prosecution matters

  • defending misleading labelling claims by the ACCC, including instructing external lawyers on drafting defence documents and assisting with the preparation of extensive expert and lay witness evidence, including numerous witness interviews

  • advising on an action against a manufacturer selling counterfeit products online in China, including instructing Chinese investigators and lawyers to gather evidence for submission to Chinese authorities

  • identifying strategic opportunities to file trade mark oppositions as part of a major global brand repatriation project

  • advising on an agreement for licensing a house-brand to a third party for use on co-branded products

  • managing international trade mark portfolios for various consumer products companies and other large organisations

  • regularly advising an Australian fast fashion retailer on product clearance matters, including IP searches across multiple jurisdictions and advice on infringement risks

Memberships and Associations

  • Intellectual Property Society of Australia and New Zealand

  • Law Institute of Victoria – member

  • Royal Melbourne Golf Club (Member)

Qualifications

  • Bachelor of Laws (Honours) (the University of Melbourne)

  • Bachelor of Science (the University of Melbourne)

Jurisdictions Admitted to Practice

  • Supreme Court of Victoria

  • The High Court of Australia

‘I help clients develop clear and pragmatic IP strategies to overcome legal challenges and complement commercial goals.’