Intellectual Property
Intellectual property and its protection can be a significant issue for many organisations.
Ensuring that intellectual property (IP) rights are appropriately protected and commercialised – and that any infringement disputes are dealt with effectively and efficiently – can be the key to gaining and maintaining a commercial advantage.
Our firm has expertise in a variety of sectors including fashion, sport and entertainment, agribusiness, retail, food and beverage, horticulture, government, fitness and automotive sectors.
How we can help
Our IP lawyers work with companies from all sectors to secure and defend their intellectual property, including patents and trade marks. We identify and implement legal solutions that help our clients maximise and protect the value of their IP.
We advise on:
- trade mark portfolio management, prosecutions, registrations and oppositions.
- commercialisation and licensing of IP, including trademarks, patents and plant breeders’ rights, and related commercial arrangements such as joint ventures and other commercialisation structures.
- disputes, including both enforcing and defending IP infringements and related actions.
Our senior IP lawyers often work with other experts in the firm, including dispute resolution, tax, corporate and commercial and employment specialists, to provide a multidisciplinary approach that delivers seamless commercial solutions when required.
‘Hall & Wilcox are very knowledgeable in the IP arena. They are very good to work with.’
Chambers Asia Pacific Guide 2024
IP commercialisation and licensing
With technological advancements in all sectors facilitating a rapid rate of innovation, commercialisation is happening at a fast pace.
To maximise the return on the development investment and transform an invention into a profitable venture, it is critical to take a practical and commercial approach to IP commercialisation and licensing.
We work in partnership with our clients to help them make the most of their IP and develop tailored commercialisation strategies for a range of IP, including trade marks, patents and plant varieties (in which we have particular expertise). We draw on our significant commercial expertise to ensure the right structures are in place.
IP litigation and dispute resolution
Intellectual property violations ideally need to be investigated as soon as they’re noticed to reduce the potential for loss, reputation or brand damage. Although IP litigation and related disputes can be an unwanted distraction for any business, enforcing your rights as the IP owner or defending infringement claims can be important.
We work with our clients to assess the risks and rewards of pursuing all actions at the outset, weighing up the commercial benefits, the chance of success and the financial impact of any dispute.
We have expertise across all areas of IP litigation, including enforcing and defending copyright, design, patent and trade mark infringements and related claims under the Competition and Consumer Act 2010 (Cth). We also work with our litigation lawyers who have IP disputes experience to complement our core IP team.
Trade marks
The effective management of trade mark portfolios can be an important part of maintaining competitiveness in the market.
Implementing a strategic approach to managing trade marks, monitoring for infringements and enforcing rights is vital. We manage trade mark portfolios for numerous clients, which includes a trade mark search to provide brand protection advice on trade mark availability, infringement and registrability both nationally and internationally, and preparing evidence and submissions to IP Australia.
- Acting for the owner of a well-known trade mark on several matters including: defending a non-use trade mark claim, licensing trade marks internationally including in Brazil, Argentina, the EU, South Africa and New Zealand, advising on trade mark proprietorship issues, and trade mark infringement and enforcement matters.
- Advising a funds management company on potential passing off and trade mark infringement claims.
- Defending a well-known importer and distributor in relation to misleading and deceptive conduct claims and copyright infringement, in Australia and New Zealand.
- Acting for Apple and Pear Australia Limited (APAL) in the Supreme Court of Australia, and successfully appealing the original decision in the Court of Appeal and then successfully denying special leave to appeal to the High Court, to enforce rights in a trade mark licence over registered marks in Chile to a US based company.
- Advising a supplier of rural data and analytics services that allows their clients to predict and manage agriculture investment and commerce. We advised on technology agreements with the CSIRO, which included various IP agreements and the commercialisation of the data and data analytics tools developed by CSIRO.
- Acting for a major financial services organisation on identifying and evaluating substantial copyright assets for the purposes of claiming significant tax deductions. The work involved assessing complex copyright law matters such as subsistence and ownership matters and rights in databases, logos and various documents and liaising and negotiating with the ATO.
- Advising several prominent rights/content owners as part of the Australia Law Reform Commission review of the Copyright Act.
- Advising a State Government agency on the applicability of the ‘crown use’ provisions of the Copyright Act 1968 (Cth) in respect of a business-critical database. The context of the advice was whether the transfer of the database, which was currently used in software programs licensed from an IT supplier to a new system, would have infringed copyright of the IT supplier.
- Acting for a statutory water corporation on a Victorian Government funded research and IP commercialisation project. Part of the brief involved advising on the applicability of the Victorian Government’s framework for the ownership and management of its IP.
- Acting for Note Printing Australia Limited (NPA), a wholly owned subsidiary of the Reserve Bank in relation to various IP licence agreements and moral rights consents relating to images on banknotes and passports produced by NPA. NPA contracts with DFAT to produce Australian passports.
- Acting for a peak industry body on complex trade mark proprietorship issues, trade mark infringement and enforcement matters, and trade mark licences in numerous foreign markets such as Japan, the EU, Brazil, Uruguay, Argentina, Chile, New Zealand, South Africa and Canada.
- Acting for various professional sporting organisations in relation to negotiating licenses for live music performances with APRA (OneMusic), including in respect of lodging a successful collective bargaining notification with the ACCC.
- Advising various clients on the commercialisation of new plant varieties (PBR) and related IP rights (trade marks), including acting on behalf of a plant variety rights owner in the licensing of new table-grape varieties and related IP rights (predominantly plant breeders’ rights) in relation to outbound licensing of new varieties and inbound licensing of new varieties from a US company.
- Advising a joint venture company, formed between the Australian and New Zealand apple and pear industries, to globally commercialise new plant varieties.
- Advising a Chinese solar company in respect of licensing patented technology from an Australian company and its related commercial arrangements.
- Acting in respect of numerous trade mark, copyright, design and patent infringement matters.
- Advising on various patent infringement matters and proceedings. Our work included assessing and advising on various patent claims, assessing infringement risks and negotiating settlements.
- Advising a complex and multi-jurisdictional trade mark dispute concerning a client’s well known and valuable registered trade marks in Chile.
- Acting for a Hong Kong based global logistics service supplier in respect of trade mark infringement, passing off and misleading and deceptive conduct proceedings brought against it in Australia.
- Acting for a New Zealand based joint venture company in relation to enforcement of its plant breeder’s rights.
- Acting for a property fund group on an ongoing trade mark dispute around one of its funds.
- Acting for a manufacturer in high-profile design infringement proceedings and associated consumer law claims.
- Advising a national financial services group on obtaining injunctions against former licensees for trade mark infringement, misleading and deceptive conduct, and breaches of licensing agreements in the Federal Court.
