Intellectual Property

Our firm

Our firm is a leading provider of legal advice to clients in Australia and one of the largest leading law firms in Asia. As a full service commercial law firm, we provide significant intellectual property legal services to many of the largest organisations in Australia. For more information on our firm, click here

Our intellectual property practice

Intellectual property is more than just copyright, patents and trade marks, it is often the foundation for building a strong business in today’s market. Across all businesses technology and globalisation is impacting on businesses’ competitive advantage. Companies should have global strategies implemented locally for the protection and use of their intellectual property.

Our expertise

Rated as Highly Recommended by Managing Intellectual Property in an independent survey of law firms, our Intellectual Property Group is a rapidly growing force in the Australian IP scene. The group are well qualified, front and back end practitioners with broad and diverse expertise. We have been at the forefront of the commercialisation of intellectual property through mergers and acquisitions, licensing and franchising, having represented numerous international companies in their international expansion throughout Asia Pacific.

We advise all types of businesses from start-ups, public and private businesses to multinationals. And the range of industries we are involved with is extensive, from biotechnology, textiles, clothing and footwear, IT, franchising/ retail, insurance, government, telecommunications to pharmaceuticals.

Our key areas of expertise in intellectual property include:

• trade marks
• copyright
• trade dress/get-up
• designs
• patents
• competition law and intellectual property issues
• passing off
• confidential information
• licensing and commercial exploitation
• trade and product promotions
• intellectual property audits
• domain name, website, and other on-line intellectual property issues

In the know

When changes occur in intellectual property law, we will often be among the very first to know the details and to grasp the legal and commercial impacts on our clients. Many of our senior practitioners are involved with bodies responsible for formulating cutting-edge developments in intellectual property and technology law. Members of our team are both active participants and committee members of the following associations:

• American Bar Association
• Australian Information Security Association
• Law Society of New South Wales
• Law Society of Western Australia
• Law Institute of Victoria
• Law Council of Australia
• Queensland Law Society
• INTA (Committee members)
• Copyright Society
• IPSANZ (National Committee member)

Our experience

The following matters are some examples of the experience our team has.

• Acting for a global pharmaceutical company in relation to the protection of highly confidential production methodology for the extraction of illicit opiates from legally grown poppies. This is a significant piece of Supreme Court litigation, and the unique nature of this industry presents unique issues regarding the protection of trade secrets being put before the Court when the matter is on for trial in 2007.
• Acting as international adviser and manager of a major clothing and footwear retailer’s significant and extensive trade mark portfolio.
• Maintaining an international trade mark portfolio for an international coffee outlet franchise. We continue to provide this client with advice in relation to trade name disputes. We have registered marks in many different countries, and in some cases directed oppositions in various countries including Russia.
• Negotiating a $100million plus deal involving an exclusive global collaboration agreement between one of the world’s leading medical research centres and a California-based biotech company to discover, develop, manufacture and commercialise a new class of broad spectrum cancer therapeutics.
• Acting for an international automobile manufacturer in relation to trade dress and copyright issues in Australia and New Zealand. Dealing with significant counterfeit issues arising out of the People’s Republic of China and complex issues of copyright infringement in New Zealand

• Legal update: Intellectual Property Principles for Australian Government Agencies: What are the Implications?

  On 1 July 2008, Australian Government agencies covered by the Financial Management and Accountability Act 1997 (Cth) became individually responsible for the implementation of the Attorney-General's Statement of Intellectual Property Principles for Australian Government agencies (IP Principles). It is foreseeable that the changes will bring about the integration of intellectual property (IP) management into the broader governance framework of agencies and thereby benefit the Australian community as a whole.

  29 Jul 08 Rosemary Crowley , Grace Do

• Legal update: Going Alfresco? Judge says only in Seattle

  Project home companies will now find it increasingly difficult to incorporate certain design features of other project home companies following the Full Federal Court decision in Metricon Homes Pty Ltd v Barrett Property Group Pty Ltd

  23 Jul 08 Susan Spicer

• Legal update: Domain name gold rush on the horizon

  Internet Corporation for Assigned Names and Numbers (ICANN), the body responsible for the internet domain name system, has recently approved draft proposals that would see the biggest ever expansion of domain name choice.

  11 Jul 08 Michael Park

• Legal update: New .au Domain Name Transfer Policy from 1 June 2008

  In last month’s Legal Update on Upcoming Changes to .au Domain Name Transfer Policy we noted that the Australian domain name administrator (auDA) had approved an implementation plan for a new policy on the transfer on .au domain name licences. auDA has now confirmed that the new policy will take effect on 1 June 2008.

  18 Apr 08 Michael Park

• Legal update: Upcoming changes to .au domain name transfer policy

  The Australian domain name administrator (auDA) recently announced that it has approved an implementation plan for a new policy on the transfer of .au domain names licences. (It is the exclusive licence to use the domain name that is transferred, rather than ownership of the domain name itself.) This announcement follows auDA’s earlier acceptance of the recommendation from the 2007 Names Policy Panel that the current policy be relaxed to allow a registrant to transfer its domain names for any reason.

  27 Mar 08 Michael Park , Ka-Chi Cheung

• Legal update: When must the Crown pay to use copyright material for the services of the State?

  Government and copyright owners alike will await with interest on the outcome of an appeal to the High Court of Australia, Australia’s highest Court, regarding whether the New South Wales Land Titles Office may continue to freely deal with surveyors’ plans lodged with it for State purposes, or whether that government agency should pay surveyors royalties for these subsequent dealings.

  1 Feb 08 Marie Wong

• Legal update: Parallel Importation of Trade-Marked Goods

  A recent decision of Justice Tamberlin in the Federal Court of Australia has again raised the problematic issue of parallel importation of trade-marked goods. That case is Brother Industries Ltd v Dynamic Supplies Pty Ltd [2007] FCA 1490.

  14 Nov 07 Andrew McRobert

• Legal update: Proposed guidelines for issuing copyright infringement notices released

  In December 2006 the Copyright Act was amended to introduce new enforcement provisions, including strict-liability criminal offences for copyright infringement. At the time, the Government indicated that it would prepare guidelines as to the circumstances in which infringement notices should be issued. Proposed guidelines were recently released for public comment.

  9 Oct 07 Stephen Clune, David Wilson

• Legal update: Introducing...New Moral Rights for Performers

  New moral rights provisions for performers have now come into effect. In accordance with the announcement in the Government Gazette dated 6 June 2007, the WIPO Performances and Phonograms Treaty came into force for Australia late July 2007. The operation of amendments to Part IX of the Copyright Act, enacted as part of the US Free Trade Agreement Implementation Act 2004, was dependent on the WIPO Performances and Phonograms Treaty coming into force. The amendments to Part IX of the Copyright Act that have now come into effect contain provisions relating to moral rights for performers whose performances are captured on sound recordings.

  8 Oct 07 Andrew McRobert , Alison Westcott

• Newsletter: Franchising Focus - September 2007

  Welcome to the September edition of Franchising Focus. Deacons Client Activities – FCA National Convention Over 800 delegates are expected to attend the Franchise Council of Australia Convention in Melbourne between Thursday October 11 and Sunday October 14. Deacons will be running a series of client activities concurrently with the Conference.

  14 Sep 07 Stephen Clune, Stephen Giles, Dylan McKimmie, Marcus O'Brien