Overview
Our IP Litigation and dispute resolution team is a specialised team with expertise across patents, trade marks, copyright and other IP rights. We work as a team with our patent attorney and trade mark specialist colleagues; a benefit not available to any other IP litigation team in a full service commercial law firm in Australia. We also have the benefit of being part of one of Australia’s leading commercial litigation teams, so that our IP litigators also bring first rate core litigation skills to their IP practice. Teaming with these other groups ensures our strength as a formidable IP Litigation team. Our clients have come to expect the highest level of specialist skills and experience both in IP and in litigation strategy, and we enjoy having the opportunity to work with our clients to maximise their IP.
Experience
Some of our recent significant experience include:
Patents and designs
- Advising University of Melbourne and Recaldent Pty Ltd (a subsidiary of Cadbury Schweppes) in successfully enforcing patents relating to tooth remineralisation technology.
- Acting for 3M in a number of patent infringement proceedings,.
- Advising GenRX/Apotex in a number of pharmaceutical patent matters.
Trade marks
- Acting for GlaxoSmithKline in relation to enforcement of the Macleans trade mark.
- Acting for Gianni Versace Spa in proceedings concerning the unauthorised use of the Versace trade mark,.
- Advising Diageo in litigation concerning the ownership of the Stolichnaya trade marks in Australia.
Copyright and confidential information
- Acting for John Fairfax Publications in Federal Court proceedings brought against the company by a photographer seeking damages for copyright infringement.
- Acting for Telstra in relation to a copyright infringement and breach of confidence action in an IT context.
- Obtaining and enforcing Anton Pillar orders for a company against two employees.
- Obtaining an urgent ex parte injunction preventing the publication of confidential information.
Trade practices and advertising
- Acting for GlaxoSmithKline in relation to the Australian Competition and Consumer Commission (ACCC) investigation into the vitamin C content of Ribena products.
- Acting for a major food company in relation to the ACCC investigation into the fruit content of a food product,.
- Acting for GlaxoSmithKline in relation to a major comparative advertising litigation against Colgate.
Domain names
- Freehills has been involved in a large number of domain name related disputes. We develop strategies that are tailored to the particular facts and circumstances. We have resolved some of these domain name disputes for our clients by preparing and sending a letter of demand, others have been resolved through the available domain name dispute resolution procedures, and still others through a negotiated transfer.
- Freehills recently used the auDRP procedure to recover two .com.au domain names for one of our major clients, and used the same procedure to recover a .com.au domain name for a UK based company.
Working with you
The Freehills IP practice is comprised of a full service patent and trade mark practice in addition to specialist lawyers in IP commercialisation and IP litigation. The depth and breadth of the patent and trade mark practice is unlike that provided by any other commercial law firm in Australia.
We provide a full service offering, calling on the skill and expertise of the IP group’s 15 partners and approximately 60 solicitors and patent and trade mark attorneys practicing exclusively in the IP area.
We have a dedicated team of attorneys, lawyers and support staff that are highly trained, not only to excel in the delivery of legal services, but also to be passionate about understanding the application of the law to the real world commercial context of our clients’ businesses.
Our team prides itself on its responsiveness, commerciality and thought leadership. We are passionate about the work we do. Our objective is to deliver an outstanding result for your client that leads to an ongoing relationship.
Case study
University of Melbourne and Recaldent Pty Limited
Our client, the University of Melbourne, is one of the leading and most prestigious universities and research organisations in Australia and has a large patent portfolio.
Freehills successfully acted to enforce patents owned by the University of Melbourne in the dental health field. This was the first time the university had sought to enforce, through the courts, any of the patents in its very significant patent portfolio. Recaldent Pty Limited (a subsidiary of Cadbury Schweppes) was the registered exclusive licensee of these patents.
The technology relates to a complex which remineralises teeth and so assists in improving dental health. This technology was invented by Professor Eric Reynolds, who is head of the School of Dental Science at the University of Melbourne. His research has been recognised with many honours, including Officer of the Order of Australia.
The case mainly involved prosecuting a patent infringement action in relation to various patents and defending a patent revocation action relating to four patents.
We used a multidisciplinary team of litigators and patent attorneys with the requisite scientific experience and knowledge in Sydney and Melbourne in a seamless service which the clients considered outstanding. Within the team there was close collaboration of legal and scientific expertise, allowing for a more sophisticated understanding of the patents and the application of the law in this complicated area of science. The expert witnesses retained to provide evidence in relation to the patent infringement and patent invalidity actions were world leaders in their field and sourced from Australia and overseas.
As a result of the litigation, the court held the patents valid and infringed and orders were made by the court in favour of the university and Recaldent, including – declarations, injunctions, damages or account of profits, and delivery up of all infringing products and related materials. There was no appeal in the substantive issues.
The team was headed by Kathryn Everett of the Sydney office, and Shaun McVicar of the Melbourne office.
