Australia

IP STARS Reviews

Patent
Ashurst

The patent team at Ashurst continues to be a top choice for contentious matters. It specialises in the life sciences and biotechnology sectors, with clients including Actavis, Apotex, Baxter Healthcare, ResMed, Health Care Australia and Takeda Pharmaceuticals.

The group's key patent practitioners are partners Kellech Smith, Stuart D'Aloisio, Andrew Rankine, Nina Fitzgerald and consultant Peter Chalk.

The firm is representing Canadian generic pharmaceutical company Apotex in a case that will be the first time an Australian court has considered a claim made by the commonwealth government on a cross-undertaking as to damages in a pharmaceutical patent case. The team acted for the same client against Pfizer subsidiary Warner-Lambert in a patent revocation matter concerning a pain treatment method.

Fitzgerald joined last year from Deacons in Hong Kong. Partners Grant Fisher and Mary Padbury have retired.

Baker McKenzie

Although Baker McKenzie's core strengths are in soft IP, the firm has an active contentious patent offering. In a new initiative spanning the global Baker McKenzie network, the team has taken a leadership role in establishing a plant variety rights service.

Head of IP Richard Gough leads a team that includes partner Elisabeth White. Both handles patent work.

The firm represented a domestic telecommunications provider as a defendant in a patent litigation. It has also been advising a US biotechnology company on patent strategy and on a potential litigation related to the launch of a generic product.

Bird & Bird

The patent team at Bird & Bird had a busy year, working on numerous complex litigation matters. It handles issues connected to a broad spectrum of industries, and clients include GlaxoSmithKline, Nokia, University of Wollongong, Alembic Pharmaceuticals and Boehringer-Inghelheim.

Partners Jane Owen, Lynne Lewis and special counsel Shehana Wijesena are the key patent specialists in the team.

The team is acting for Generic Health against Otsuka Pharmaceuticals and Bristol Meyers Squibb in a patent dispute relating to the treatment method for the administration of a schizophrenia drug. The firm is also representing Korean manufacturer Dongkuk Steel against BlueScope Steel in a dispute over the import of certain rolled steel products.

Clayton Utz

Clayton Utz is known for its strength in the pharmaceutical sector, and for handling complex patent litigation and enforcement matters. A number of the lawyers in the group have both legal and science qualifications, with several having worked in-house at pharma companies. Clients include Novartis, Sandoz, Monsanto, Bayer Australia, and Agilent Technologies.

The key contacts for patent work are national partners John Collins, Richard Hoad and Cameron Gascoyne. Collins is the chair of the IP Committee of the Law Council of Australia.

The firm acted for GPS tracking company Navman Wireless Australia against rival Precision Tracking in connection to a feud over Domino Pizza's GPS driver tracker and two patent validity claims. The team is also representing GasApps Australia and William Shore & Specialty Gases as defendants in a patent infringement claim brought by Cytec Technology.

Davies Collison Cave

QANTM IP attorney firm Davies Collison Cave is a leading firm for patent prosecution and contentious matters. It is a top patent filer in the country and houses one of the largest technical specialist teams. It handles matters connected to the complete range of sectors including the biotechnology, pharmaceutical, materials science, software and engineering industries. Prosecution clients in the past year included Photovitreal, FICPI, Korea Institute of Energy Research and Koninklijke Douwe Egberts.

Patent group principal David Webber helms a robust team of patent specialists which includes Victor Argaet, Michael Caine, Ian Pascarl and Mark Roberts.

On the litigation side, the firm acted for Bayer Pharma and Bayer Australia, launching a patent infringement proceeding against Generic Health and Lupin Australia over its clients' patent for contraceptive products. It is also representing Sequenom in a patent infringement claim against Ariosa Diagnostics. Anthony Cowle left the firm to go to Halfords IP.

DLA Piper

The Australian IP arm of global firm DLA Piper enjoyed a number of new client wins last year. The litigation team has a strong profile in international client circles for patent issues. Key clients of the contentious practice include Pfizer and ResMed.

The partners specialising in patents at the firm are Robynne Sanders and Nicholas Tyacke.

The firm is acting for Wyeth and Wyeth Australia in one of the largest patent disputes ever, involving three separate proceedings in the federal court against eight parties, three of which are Australia's largest generic pharma players.

FB Rice

Independent IP boutique FB Rice is known for its full coverage of a broad scope of industry sectors, with patent specialists in all areas from mining to computer science. The firm recently opened new offices in Brisbane, Parramatta and Adelaide. Key clients include CSIRO, The Bionics Institute, BluGlass and Printed Energy.

Managing partner Brett Lunn helms a large team of patent specialists that includes partners Connie Merlino, Rachel Hooke, Sylvan Browne and Charles Berman. Other notable patent practitioners in the firm are engineering and ICT specialist Madeleine Kelly and Jenny Petering, a specialist in biotechnology patent work.

The firm continues to represent cellular medicine developer Mesoblast, managing its global patent strategies, portfolio and filings. It represented Sensen Networks in an infringement dispute with a large US company and continues to work with the client to draft and prosecute its patents.

FPA Patent Attorneys

QANTM firm FPA Patent Attorneys exclusively handles patents and designs. Its services encompass patent filing, prosecutions, oppositions and contested proceedings across the region. The firm has expertise in all technologies. However, it has particular strength in the biotechnology, pharmaceutical, computer, software, business processes and electrical engineering fields. It has the best track record for successful patent application examinations for biotechnology and bio-therapeutic inventions among all the key patent players in the country. The firm is closely allied with Herbert Smith Freehills for all litigation matters.

The key patent contacts at the firm include managing director James Cherry and principals Chris Bird, John Dower and Tom Gumley.

The firm is acting for Automatic Technology Australia, drafting and filing patent applications, identifying inventions, prosecuting patents in various jurisdictions and assisting with IP enforcement globally. The team also works with Baker Hughes, a GE Company, Blackmagic Design, and Caterpillar, among others, to prosecute their patents. Damian Slizys left the firm last year to set up his own patent boutique, Falkenheim Advisory. Greg Noonan retired, but remains a consultant at the firm.

Gilbert + Tobin

The patent team at Gilbert + Tobin is recognised for its strength in the contentious arena. It has extensive experience of handling large and complex patent litigation matters. It also offers patent advisory services.

For patents, the key partners are head of IP Michael Williams, John Lee and Chris Williams.

The firm is acting for gaming company Aristocrat Technologies against Japanese gaming rival Konami in two major federal court cases. The team is also representing BASF in a long-standing multi-jurisdictional patent litigation concerning technologies in the mining sector.

Griffith Hack

Recent case studies show the firm successfully represented Bio-Rad Laboratories in its complex patent prosecution for a computer-implemented invention. The team was also successful for patent applicant Tubi in an opposition by Vinidex. The firm is acting for German probiotics company Multikraft Produktions and Multikraft Probiotics Australia in a patent infringement proceeding commenced by Terragen Holdings.

In November 2019, the firm announced the integration of Watermark into its business. The firm expects the combined operations to begin on May 4 2020, with full integration in July 2020.

Halfords IP

Independent IP boutique Halfords IP prides itself on working closely with clients throughout the entire patent life cycle. Its highly-regarded patent practice was strengthened last year with three senior lateral hires. The firm, which has offices in Sydney and Parramatta, has a core focus on providing commercially-focused and strategic IP advice to its domestic clients, including inventors, start-ups and other SME businesses. It specialises in drafting, prosecuting and enforcing patents.

The senior patent specialists are partners Geoff Davidson, Keigh Borg, Anthony Cowle, Dan Berger and special counsel Catherine Chant.

The firm acts for Hedweld Engineering, drafting, prosecuting and enforcing its IP rights, and managing its global IP portfolio. Robo Helix, Cool Mine, and Safearth are other clients for patent matters.

Both Anthony Cowle and Dan Berger joined the firm from Davies Collison Cave.

Herbert Smith Freehills

The patent litigators at Herbert Smith Freehills are highly commended by the market. The team focuses on patent advisory and contentious patent matters. Key clients include Apple, Motorola Solutions, Caterpillar, Apotex, Gilead and Roche.

Sue Gilchrist leads the IP team at the firm and the other key partners for contentious patent matters are Rebekah Gay, Shaun McVicar and Patrick Sands.

The firm is acting for medical devices company Becton Dickinson in its federal court patent infringement proceedings against Braun. The team also successfully represented Gilead in a patent litigation against Merck subsidiary Idenix relating to its hepatitis C blockbuster drug.

IP Gateway

Boutique IP Gateway bolstered its patent group, in particular its electrical engineering and ICT offerings, with two senior hires. The firm is known for its expertise in the mining and mining services sector, with its roster of clients including Metso Sweden, MacDon Industries, Austin Engineering and Mining Equipment & Wear Products. The firm prides itself on working closely with its sizable domestic client base, from inventors and start-ups, to Australian companies with offshore ambitions.

The patent leaders comprise directors Wayne Slater, Jack King-Scott and Clinton Priddle, and head of life sciences Alison McMillan.

The firm is acting for domestic R&D company Myosa, drafting patents, assisting it with product development and protecting its patent rights internationally. The team also works closely with Flowbee Australia, managing its international patent portfolio. Clinton Priddle joined the firm last year from Cullens (now Spruson Ferguson). Patent principal Matthew Lord is a recent lateral hire from Fisher Adams Kelly Callinans (now Spruson Ferguson).

King & Wood Mallesons

In 2018, the firm promoted two lawyers to partner and hired two new special counsel, including Veg Tran who joined from K&L Gates. The patent team represents clients such as Alphapharm, Fisher & Paykel Healthcare, BlueScope Steel, Teva Pharmaceuticals, CSIRO, and The University of Sydney. The team acted for Sandoz in a patent litigation concerning second medical use patents. 

Madderns

Independent IP boutique Madderns has a strong domestic practice with many iconic Australian clients. Its patent practice focuses on engineering, ICT/electronics, life sciences and chemistry. In particular, the firm's ICT team has an excellent reputation and two of its principals are considered market experts. The firm has a strong China practice. Key patent leaders include IP stars Craig Vinall, Martin Pannall, Anthony Lee and Mark O'Donnell.

MinterEllison

MinterEllison has a fully integrated patent practice, with many of its lawyers having technical qualifications. Its contentious offering is well-regarded, particularly in the pharmaceuticals space. Key clients include Alphapharm/Mylan, Bayer, GlaxoSmithKline, and Hospira.

IP head and patent specialist Robert Cooper leads a team that includes partner Shyama Jayaswal and senior legal counsel Wayne McMaster.

The team is acting for mobile radio manufacturer Hytera in a patent dispute with Motorola. In another high-profile case, the firm is defending ink jet cartridge company Calidad in patent infringement claims brought by Japanese conglomerate Seiko Epson.

Norton Rose Fulbright

Global firm Norton Rose Fulbright has an active contentious patent practice. It has strength in the life sciences and healthcare, and energy sectors.

The key contacts are partners Frances Drummond, Georgina Hey and Cameron Harvey.

The team is acting for SARB Management Group in its battle with Vehicle Monitoring Systems after the latter opposed SARB's patent application for a particular vehicle detection invention. The firm is advising a global pharmaceutical company on its Australian patent enforcement strategy for one its blockbuster drugs.

Phillips Ormonde Fitzpatrick

Independent IP firm Phillips Ormonde Fitzpatrick has a deep bench of technical specialists, covering all patent needs. It is experienced in handling applications connected to a wide spectrum of areas ranging from nanotechnology, biotechnology and metallurgy to materials, physics and all the engineering disciplines. The firm's sister entity, Philips Ormonde Fitzpatrick Lawyers, deals with patent litigation.

The core patent leaders at the firm are Ross McFarlane, Chris Schlicht, Greg Chambers, Saskia Jahn, Edwin Patterson, Scott Whitmore and Ray Evans.

Lock manufacturer Assa Abloy is a key client and the firm continues to handle all its patent work. On the contentious side, the firm represented Meat & Livestock Australia and Dairy Australia in Cargill and Branhaven's opposition to its patent application. Partner and engineering specialist Karen Spark retired last year.

Shelston IP

In 2019, the firm advised the University of Sydney on the protection and management of its plant breeder’s rights portfolio. On the litigation side, the firm represented InfoTrack against Encompass Corporation in the high profile dispute concerning computer-implemented inventions.

The firm hired Adrian Richards and David Hvasanov as senior associate and associate respectively and welcomed biotechnology patent attorney Michael Christie as a principal in May 2020. Grant Shoebridge, Matthew Ford, Nicolas Lakatos and Jennifer Enmon have left the firm.

Spruson & Ferguson

IPH firm Spruson & Ferguson has wholly absorbed IP boutiques Cullens and Fisher Adams Kelly Callinans, further strengthening the firm's capacity. The firm, Australia's top PCT filer for 2018, has a regional presence with offices in Singapore, Bangkok, Jakarta, Kuala Lumpur, Hong Kong and Beijing. Its contentious practice, through Spruson & Ferguson Lawyers, had a busy year.

Director of Asia patents Kristian Robinson helms a team of patent principals that includes Adam Luxton, Simon Potter and litigation head Khajaque Kortian.

The firm continues to provide prosecution assistance to universities such as Australian National University, the University of Sydney, and the University of Queensland.

Patent principal Regan Gourley joined UK IP firm Wilson Gunn in July 2019.

Wrays

Wrays has an active patent prosecution and contentious practice. Recent clients include iCeutica, Amgen, Eli Lilly & Co, Wesfarmers, Orbital Australia and Minara Resources. The four patent leaders are Gary Cox, Todd Shand, Peter Caporn and Scott Vile. The firm is acting for Western Australian minerals project developer Neometals, handling its patent drafting, filing and prosecution. Listed biotechnology company Dimerix has entrusted the team for its IP strategy, patent drafting and prosecution.

Trade mark
Addisons

Addisons has a multi-disciplinary IP and media team, with a particular expertise in the gaming sector both domestically and abroad. The team manages thousands of trade marks, and also directly manages and prosecutes trade marks in New Zealand and Papua New Guinea. The team has five partners including IP star Karen Hayne, Donna Short, Jamie Nettleton, Justine Munsie and Martin O'Connor. During the research period in a notable opposition proceeding, the firm acted for Challenger Group Holdings to oppose the registration of a trade mark for the word "CHALLENGER". In another contentious matter, the team is representing gaming company TSG against The Star Entertainment group over the registration of the mark "STARSWALLET". Partner Donna Short and special counsel Hazel McDwyer joined the firm from Henry Davis York during the research period. Short had led HDY's IP group.

Ashurst
Ashurst has a seven strong team of partners dedicated to the complete roster of soft IP services. The firm is a trusted name for numerous multinationals and world-renowned brands including Diageo, McCain Foods, Nike, IBM, Samsung and Microsoft and is one of the few firms able to provide food regulatory and labelling advice. The group is led by global IP head Lisa Ritson and comprises noted trade mark and copyright partners Anita Cade, Kellech Smith, Stuart D'Aloisio and Robert Todd.

In an opposition and federal court litigation, the firm acted for Goodyear & Dunlop Tyres in relation to the "DUNLOP" trade mark on aircraft tyres in Australia. The outcome provided an example for all Australian trade mark owners with goods manufactured offshore by third parties to exercise adequate quality control. Kellogg entrusted the firm to assist in its recent federal court appeal to prevent the registration of its "SPECIAL K" trade mark by another party. Stuart D'Aloisio was promoted to the partnership last year and the firm hired partner elect Nina Fitzgerald from Deacons in Hong Kong. Former litigation partner Peter Chalk is now a consultant and Grant Fisher has left the firm. Mary Padbury has retired.
Baker McKenzie
Baker McKenzie has a noted soft IP practice with a particularly strong copyright offering. The team is building its industry sector expertise to follow client trends, for example it has taken the lead on three of the firm's cross-practice and cross-border key industry groups of consumer goods and retail, healthcare and TMT. The firm continues to develop its Pacific Island trade mark initiatives and provides clients with innovative IP tools leveraged from the global Baker McKenzie network. Head of the Australian IP practice is Richard Gough and the team includes trade mark and copyright partners Byron Angelopulo, Robert Arnold, Jonathan Flintoft, Andrew Stewart and Elisabeth White. Ross McLean is of counsel. In a ground-breaking copyright case, the Bakers team is acting for the Motion Picture Association of America against various local internet service providers to block access to numerous copyright infringing websites. This matter is the first litigation of its kind under the Copyright Act related to infringement in Australia. The team is also representing Australian food and beverage company, Lion in a federal court proceeding commenced by competitor, The A2 Milk Company.
Banki Haddock Fiora

Banki Haddock Fiora is a strong soft IP boutique recognised for its copyright expertise. One of its lead partners is the current chair of the Australian Copyright Council and another was its former chair. The team acts for all but one of Australia's main copyright collecting societies and it is vastly experienced in all courts and tribunals dealing with copyright issues. Its trade mark and design practice is active on both the non-contentious and contentious fronts for clients like Nestle, Porsche, Pfizer, Speedo, Samsonite, StatePlus, and Vodafone. The practice experienced a significant boon in the past year, with renewals doubling and trade mark filings increasing considerably from the previous year.

Key copyright partners include Kate Haddock and Peter Banki. Trade mark and designs specialist partners include Margaret Shearer, Julie Robb, Simon Kneebone and Alison McGinn.

During the research period the firm successfully represented a reputed local fashion photographer in a copyright infringement claim at the federal circuit court against the publisher of a magazine. Haddock is also acting for the Copyright Agency in a copyright tribunal proceeding to determine remuneration to be paid by the state of NSW under the government statutory licence.

Bird & Bird
IP is a core practice at Bird & Bird, with three dedicated partners and one special counsel. The firm's global presence across 29 international offices allows it to offer unique technology tools for its clients, including an AI-enabled brand protection tool called "Talisman". Clients of its soft IP-focused group span a broad range of industries and include Mattel, Target Brands, H&M, Invisalign, Bang & Olufsen, Next and Electrolux. Partners Jane Owen, Lynne Lewis and Troy Gurnett are the key contacts.

In a first of its kind case, the firm acted for Consorzio per la Tutela del Formaggio in opposing registration of the trade mark "SATORI ASIAGO" on geographic indication grounds. The team also successfully defended Sportsbet in a trade mark infringement proceeding in the federal court with relation to the use of trade mark "SNAKEMAN". Demonstrating the Australian team's pioneer status at Bird & Bird, it led on a global litigation case for client GlaxoSmithKline against Colgate-Palmolive and coordinated a team across seven jurisdictions. The firm hired disputes partner Sophie Dawson from Ashurst during the research period, she has strong IP and telco experience.
Clayton Utz

The IP team at Clayton Utz made several hires during the last year, demonstrating a commitment to practice growth. Its contentious practice is highly regarded for its complex trade mark and copyright disputes. It provides the full range of trade mark and brand protection services for its many clients spanning a wide range of industries. New client wins last year include Isentia Group, Booktopia, Myer, Toyota Australia and Accent Group. The firm has developed an online training app for clients called "CLE TV", allowing them to keep updated with the latest legal developments at any time they wish.

Partner John Collins leads the IP and technology group that includes noted partners Tim Webb, Chris McLeod, Cameron Gascoyne and Richard Hoad. Collins is the Chair of the IP Committee of the Law Council of Australia.

During the research period the firm acted for SingTel Optus in a landmark matter where rights holders sought injunctions to block access to online locations. This was the first case under a new section of the copyright law related to infringement. In another copyright litigation in the federal court that addresses novel IP issues, the team is defending OfficeMax Australia against copyright infringement allegations by NorvaNivel. The team is responsible for one of the country's most significant trade mark enforcement campaigns for Toyota.

The firm hired senior trade mark lawyer Catherine Cotter and IP lawyer Kent Teague.

Davies Collison Cave

QANTM IP subsidiary Davies Collison Cave is a well-known brand for prosecution work, with nine principals specialising exclusively on trade mark advice, prosecution and opposition work. The trade mark group continues to be the top filer in the country. Non-contentious clients include Kmart Australia, Liquorland, Ceres Agricultural Company, Boots and Vicinity Funds Management.

Michael Wolnizer is the firm's trade mark managing principal. He leads a sizable group of prosecution and law principals that include IP stars John Hannebery, Marion Heathcote and Adam Sears.

During the research period in a federal court proceeding that is part of a wider global dispute, the firm is acting for German pharmaceutical company Merck against Merck Sharp & Dohme Corporation. The team is also representing Monster Energy Company in two Australian Trade Marks Office appeals.

Trade mark principal Stuart Green joined from Dibbs Barker during the research period, while Craig Finlayson joined from Macpherson Kelley.

DLA Piper

DLA Piper has a thriving and active IP practice in Australia acting for global clients like Pfizer, Hyatt, Fitbit and Hilton and it is also growing its domestic client base. The firm recently launched its "Retail Thera-IP blog" to provide weekly news updates on legal advertising and marketing updates in Australia.

Melinda Upton heads the trade marks and copyright practice at the firm.

During the research period the firm acted for Neopharma Technologies advising it on the transfer of IP assets, and the filing of registrations in key and secondary markets. Hyatt International continues to work with the team in trade mark clearance projects and prosecution matters. On the contentious side, the firm is representing toy and entertainment company Spin Master in relation to a trade mark dispute with a third party over infringing toy products.

Special counsel Rohan Singh departed last year to go in-house as a senior counsel at nbn Australia.

FB Rice

Independent IP boutique FB Rice maintains a top tier trade mark prosecution practice. It recently opened new offices in Brisbane, Parramatta and Adelaide. The team services a broad range of clients in industries ranging from personal care and home products, manufacturing, retail and fashion to technology and telecommunications. The firm is one of the top five Australian trade mark filers and it offers strategic advice in the development and management of trade mark portfolios across various jurisdictions.

Brett Lunn is the managing partner and the trade mark group is helmed by partners Joanne Martin and Michael Seifried.

The team is assisting domestic fashion company Princess Polly on filing its trade mark "PRINCESS POLLY" in 33 jurisdictions. It also successfully acted for Bentley Motors in oppositions.

Gilbert + Tobin

Gilbert + Tobin excels in soft IP, with a particular forte in the copyright space and in contentious matters. It consistently acts on some of the largest and most challenging copyright cases in the jurisdiction and is at the forefront of copyright law developments. It has an active non-contentious and contentious trade mark practice, with a team of 27 dedicated IP professionals. Apart from managing the portfolios of clients like Energizer, Bank of America, DropBox, Blackstone and Red Bull, the team represents major brands in litigation and enforcement matters.

IP group head Michael Williams leads a soft IP team that includes partners Siabon Seet and Lisa Lennon and special counsel Rebecca Dunn.

The team is defending the writers of an Australian song in a leading music rights infringement case at the federal court. It is also representing video game maker Take-Two Interactive in a copyright infringement claim. On the trade mark side, the firm is acting for Bed Bath 'n Beyond against a market competitor.

Senior trade mark specialist Natalia Blecher joined the firm last year from Corrs Chambers Westgarth.

Griffith Hack
The firm advised Virgin Australia on its opposition filing proceedings against Bathurst Regional Council with respect to the mark "VELOCITY". It is also managing the trade mark portfolio and contentious matters of Lushious Products. Principal Andrew Goatcher returned to the firm from Cornwall Stodart, where he was a partner for the last three years. The firm also lost veteran principals Russell Berry and Wayne Condon, who has set up his own IP boutique Biopharmalex.
Halfords IP

Independently-owned boutique Halfords IP has an active trade marks prosecution practice. It has offices in Sydney and Parramatta, and specialises in the prosecution and enforcement of trade marks and designs.

The key contacts at the firm for trade marks are partners Geoff Davidson and Keith Borg, and special counsel Catherine Chant. Trade marks specialist Philip Macken departed for brand consultancy, Brand Haven during the research period.

Herbert Smith Freehills

Known for its litigation strength, the IP team at Herbert Smith Freehills is experienced in all non-contentious and contentious soft IP matters. Its trade mark team provides strategic advice, negotiates resolutions in trade mark conflicts and manages portfolios across the globe. Clients include Adidas, Commonwealth Bank of Australia, Treasure Wine Estates and George Weston Foods.

Head of IP Sue Gilchrist leads a sizable team alongside partners Rebekah Gay, Shaun McVicar, Patrick Sands, Kristin Stammer and Celia Davies.

The firm acted for Anchorage Capital Group and ACPA in successfully defending high court trade mark infringement proceedings started by private equity firm Anchorage Capital Partners.

In a copyright matter, the team represented Mitre 10 Australia in a federal court litigation against Natbuild.

IP Gateway

Boutique firm IP Gateway has a unique strength in the mining sector, with clients such as Metso Sweden, Schlumberger and Weatherford Technology Holdings. Due to recent hires, the firm is growing its expertise in the ICT and technology space. Directors Wayne Slater, Jack King-Scott and Clinton Priddle are the key contacts for trade marks. The firm is acting for local clothing brand Korinne Harrington in protecting its "SHOEY" trade mark. Israeli multinational pharmaceutical company Teva Pharmaceuticals trusts the firm to manage its trade mark portfolios in Australia and New Zealand. The team is acting for retail and mail order services company Brookstone in an opposition. Director Clinton Priddle joined last year from Cullens IP and former Fisher Adams Kelly Callinans principal Matthew Lord recently started at the firm. 

K&L Gates

The IP practice at K&L Gates provides a robust full IP service from portfolio management and prosecution through to litigation. The team is known for its expertise in the fashion sector. IP partners Jonathan Feder and Chris Round are the key contacts for soft IP matters. The firm represented fashion company Factory X in relation to a trade mark infringement claim in the federal court brought against CupoNation. Last year, partner Lisa Egan left the firm and special counsel Justin Lambert departed to open up his own IP boutique, Lambert Hornby. Special counsel Travis Payne went in-house at National Australia Bank.

King & Wood Mallesons

The trade mark team acts for clients such as Amazon, Tinder, Aspen, LG, PayPal and Blackmores. The team acted for Procter & Gamble in the Federal Court in an interlocutory injunction application brought by Reckitt Benckiser. The firm also represented SPI Group in a long-running dispute over the ownership of the "STOLICHNAYA" vodka trade mark. On the copyright side, the firm is acting for the University of Sydney against a former business partner ObjectiVision in a complex software dispute.

Macpherson Kelley

Last year marked a year of significant growth for the Macpherson Kelley IP practice. It brought on board three respected, senior lawyers to signal its renewed focus on IP. The team provides a wide spectrum of services, with a specialisation in trade marks, copyright, designs and trade secrets. New client wins include Allied Wheels, Bundaberg Motors, Finance King Australia, Pacific Security and Sabo Skirt.

Managing principal Paul Kirton helms a team that includes principals Belinda Sigismundi, Rita Kodeir, and special counsel Mark Metzeling and litigation specialist Ken Philp.

The firm acted for Borgo Developments in prosecution and opposition matters.

During the research period special counsel Mark Metzeling joined the firm from IP Gateway, where he was the head of its trade mark group. Seasoned litigator Ken Philp joined from Benner and Philp, where he was one of the founding partners. Rita Khodeir also joined from Coleman Greig Lawyers.

Madderns

The trade mark practice at IP boutique Madderns has four attorneys who practice exclusively in trade marks, with three of them being former lawyers. The firm has developed a strong reputation in the wine and fashion industries, and apart from prosecution work, the team is experienced in representing clients in trade mark oppositions and non-use cancellation proceedings.

The firm houses a specialist China team, one of the very few firms in the market with a specific China strategy. It provides specialist filing and prosecution services for IP in China, as well as strategic IP advice for Chinese clients into Australia.

The two trade mark partners are Louise Emmett and Megan Ryder.

McCullough Robertson

The IP group at McCullough Robertson has achieved growth in the past year with new team members and clients. It uniquely has a focused eastern service offering with offices located in Sydney, Brisbane, Newcastle and Melbourne. Clients include Telstra, Westpac, Flight Centre Travel group and Mastercard.

Head of IP Belinda Breakspear is the key contact.

The team continues to represent Flight Centre Travel Group on various trade mark prosecution and enforcement matters. It also manages the client's comprehensive trade mark portfolio around the world.

The firm added several senior professionals including veteran trade mark attorney and lawyer Michelle Betschart from Spruson and Ferguson, former in-house counsel at nbn special counsel Jake Grant, and partner Matthew McMillian who was previously at Henry Davis York for 12 years.

MinterEllison

MinterEllison boasts a sizable IP group comprising 20 partners and over 65 qualified lawyers. Its soft IP practice provides full service trade mark registration and handles all non-contentious and contentious matters.

Noted practitioners in the IP group include head of IP Robert Cooper, copyright and trade mark partners John Fairbairn and Kylie Diwell and special counsel Wayne McMaster.

The firm acted for media group Foxtel in the first federal court case in the country involving new site-blocking provisions. It is also representing the Copyright Agency in three separate Copyright Tribunal proceedings against media monitoring organisations, and representing the commercial free-to-air television sector in its dispute with the collecting society for music publishers. The firm manages trade mark portfolios for Qantas Airlines and Optus.

Norton Rose Fulbright

The soft IP practice at Norton Rose Fulbright has grown its client base during the research period and now has links with names such as Genentech, Qantas, Mattel, Barclays, BNP Paribas and Goodman Fielder. Its practice is equally balanced between front-end prosecution work, providing strategic advice and portfolio management, and commercial IP and disputes. Its sector specialties include healthcare, financial institutions, consumer markets and retail and brands. Last year, the firm rolled out two new online client solutions targeted at start-ups and companies considering rebranding.

The key IP contact is team leader and partner Frances Drummond. The team also includes partners Georgina Hey, Jackie'O Brien, Nigel Jones and Cameron Harvey.

The team represented Qantas in relation to an opposition filed against its trade mark application for "QANTAS ASSURE" by Ingeus Australia and Ingeus.

Last year, special counsel Amanda Caldwell joined the firm from Spruson & Ferguson.

Phillips Ormonde Fitzpatrick

Leading independent attorney firm Phillips Ormonde Fitzpatrick continues its reign in the top tier for trade mark prosecution. In addition to providing the complete range of soft IP services, the firm has a noted anti-counterfeiting and customs team. Clients include Louis Vuitton, Celine, Audi, Porsche, Longines, Honda, Speedo, Pernod Ricard, Samsung and Omega.

Managing partner Ross McFarlane and deputy managing partner Chris Schlicht lead a team of partners, including trade mark specialists Michael O'Donnell, Michael Squires and Russell Waters.

The firm represented Condor Cycles in a trade mark opposition hearing where it helped the client gather enough evidence to prove historical use of the trade mark in Australia. The firm's legal arm, Phillips Ormond Patrick Lawyers, is embroiled in an infringement litigation for client Bed Bath 'n Table against Bed Bath & Beyond over a trade mark registration application.

Shelston IP

The trade mark team acted for the Australian Rugby League Commission in an opposition concerning the mark “STATE OF ORIGIN”. It also defended Echo Label’s trade mark rights in an opposition filed by Amazon Technologies. Other clients that have instructed the firm include Football Federation Australia and COBOX. Special Counsel Gerard Skelly left the firm in 2019.

Spruson & Ferguson

IPH subsidiary Spruson & Ferguson is based in Australia, but has a far-reaching presence across the Asia-Pacific region from Singapore to Beijing. It has 10 offices in seven different jurisdictions. Last year, IP boutiques Fisher Adams Kelly Callinans, Cullens and Spruson & Ferguson merged to operate under the Spruson & Ferguson brand. The firm's prosecution service is highly-rated and it acts for an array of international and domestic clients in varied sectors such as manufacturing, hospitality, financial services and consumer goods.

Managing director and regional director of trade marks Tracey Berger heads up the trade mark group that comprises principals Ken Hamilton, Daniel Wilson, Tim Allen, Peter Hallett, Blake Knowles and special counsel Francesca Colubriale.

The firm is acting for entities within the Kraft Heinz group in a litigation against Bega Cheese regarding the rights to the colours and packaging being used on Kraft's peanut butter products.

Wrays

Wrays has a thriving non-contentious and contentious trade mark practice, employing an end-to-end IP solution for clients. It follows the clients through the life cycle of its IP rights, from securing the rights to commercialising and enforcing them. Clients include Amgen, Perrigo, Motorola, Samsung, Wilson Parking and Australian Wool Innovation.

The key contacts for soft IP are chairman and principal Gary Cox and trade mark and brand protection specialist Jennifer McEwan.

In the last year, the team provided trade mark portfolio management, and protection and strategy advice to Sirtx Medical, Cash Converters, Australia Made Campagin and Bunnings Group. In an opposition, the firm successfully acted for Lab Brands before the Registrar of Trade Marks in relation to two trade mark opposition proceedings.

Principal Andrew Butler departed during the research period for DC Collins.