Intellectual Property

Intellectual property is a significant asset in today’s digital world, so businesses need to understand how to identify, protect, commercialise and enforce it. With extensive experience in contentious and non-contentious matters across a broad range of industries and jurisdictions, our Intellectual Property Group is geared towards anticipating and meeting our clients’ legal services needs, whether it’s advising on the registration and commercialisation of intellectual property or taking action against the infringement of intellectual property rights.

Acting for clients across a range of industries, from media and advertising, software and digital technologies, to research, manufacturing and resources, our lawyers are across the increasingly rapid growth in new technologies and the impact for clients in areas such as privacy, data security and social media.

Services

  • IP enforcement and litigation
  • Management, protection, acquisition, licensing and disposal of IP assets
  • IP structuring and commercialisation
  • Copyright and designs
  • Patents and new technologies
  • Trade marks and brand protection
  • Confidential information, privacy and data protection
  • Commercial contracts including non-disclosure and confidentiality, distribution, agency, management, joint venture, licensing, technology transfer,
    manufacturing, advertising/marketing and merchandising
  • Trade practices and competition under the Competition and Consumer Act 2010 and passing off
  • ACCC investigations, product liability and warranties, and product recalls

Experience

Anteo Diagnostics Limited (ASX:ADO)

Advising this ASX-listed global nano-technology company on intellectual property commercialisation, including trade mark advice and licensing arrangements.

Attune Hearing

Attune is Australia’s largest privately owned audiology company. Advising on the acquisition of intellectual property for remote diagnosis of hearing deficiencies, against a contentious background and dispute regarding ownership of the technology.

Australian Floorstyle

Advising on intellectual property issues arising on restructure of the client’s business to a Co-Operative. Conducting trade mark applications and contentious trade mark opposition proceedings.

Barbeques Galore (Aust) Pty Ltd

Managing a large, international trademark portfolio, including advising on applications, oppositions, and contentious matters.

Gerard Lighting Group

Sale of the client’s Diginet intellectual property, including a suite of brands and patents, to an internationally-backed private concern. Separately, advising on licensing agreements for Internet-of-Things technology for application in major street lighting infrastructure projects.

JCDecaux Australia

Advising on complex intellectual property ownership and licensing issues in the context of large infrastructure and services contracts with government, public transport providers and listed corporations. Protection of trade marks in Australia. Advising on a whole-of-business data audit and related privacy, security and data protection issues.

Jobadder Pty Limited

Advising this specialised software company on software licensing, sale of business assets, expansion into the United States, corporate restructuring, privacy and social media risks, and recent capital injection by Seek Limited to take up a substantial equity position in the Jobadder group.

Pacific Magazines Pty Limited

Managing a large, international trademark portfolio for the second largest magazine publisher in Australia, and advising on online and digital publishing issues.

Sorterra Pty Ltd

End-to-end advice on the financing, licensing, commercialisation, ownership, and development of intellectual property for modular dry coal processing plants and the development of an x-ray module and other related technologies.

Yahoo!7

Branding and trade mark protection advice for Yahoo7!’s TV streaming and content delivery projects, including specific name availability and infringement advice.

Insights

ClarkeKann Lawyers Sydney sharpens commercial focus

ClarkeKann Lawyers Sydney sharpens commercial focus

ClarkeKann’s commitment to delivering solution-based outcomes for our clients remains at the centre of our offering. Providing qualified, trustworthy, bespoke legal advice with a particular focus across our core areas of expertise; Agribusiness, Intellectual Property...

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Bang for your buck: trade marks and domain names

Bang for your buck: trade marks and domain names

By Ruby Mackenzie-Harris and Brad Vinning Have you thought about whether you need to register your business’ domain name as a trade mark? Depending on your circumstances, this may or may not be a necessary step to protect your intellectual property (“IP”). Getting...

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