Trademarks, copyright, internet, advertising and marketing

  • Acting for one of the world’s top pharmaceutical companies and lead partner in relation to the management of its trade mark portfolio in Australia and Papua New Guinea
  • Advising local and global FS clients with a full suite of IP services including trademark registrations, domain name and infringement issues, negotiation of co-existence agreements and advising on marketing and advertising issues
  • Managing the global trademark portfolio for a large Australian investment and trustee group and assisting the client with the enforcement of its IP rights including cybersquatting matters
  • Providing IP advice to a large water management company as part of a corporate rebranding strategy. This work included: conducting clearance and registrability searches for the new brand; preparing an infringement risk assessment and advising on strategy; providing advice in relation to the new brand guidelines and brand extension issues
  • Representing Asia's leading agribusiness group in non-use removal proceedings and advising on trade mark protection issues
  • Advising one of Australia's largest FMCG companies regarding its policies and approach to intellectual property rights management, including intellectual property issues associated with product launches, food labelling, corporate rebranding strategies and the protection and enforcement of the company's trade mark portfolio (over 2,000 trademarks worldwide)
  • Advising various fashion and apparel clients including a Japanese based company engaged in the operation of a social networking service on branding, labelling, country of origin issues, parallel importation, trade mark and domain name registration and enforcement matters in Australia
  • Advising on the importation, sale and distribution of products in Australia in contravention of the Competition and Consumer Act 2010 (Cth) and passing off
  • Advising on anti-counterfeiting measures including putting in place customs watch notices in Australia and coordinating educational campaigns with Australian Customs. Drafting and negotiating a number of trademark licence, co-existence, and assignment and settlement agreements
  • Acting for a publishing company concerning the unauthorised third party use of one of its well-known brand names. The matter involved trademark, domain name and business name aspects. Federal Court proceedings were commenced, but a desirable negotiated outcome was achieved for the client prior to the hearing, whereby the third party ceased all use of the particular brand name

Corporate transactions

  • Representing a consortium led by one of Japan's largest general trading companies on its acquisition of the Australian subsidiary of a UK listed company
  • Advising on the IP aspects in relation to the acquisition by a Chinese state owned enterprise (SOE) of a large Australian sugar and renewable energy business. From an IP perspective, the matter involved a number of IP searches in Australia and other countries including France, Brazil, Thailand and the USA, reviewing the IP documents and drafting the IP sections of the due diligence and transaction documents. Had this transaction completed, it would have represented China's largest non-resources investment in Australia