My work with clients involves the entire IP life cycle from the initial innovation stage, IP protection and commercialisation and enforcement of rights. My areas of expertise also encompass privacy, technology and Australian Consumer Law issues.
My practice covers both contentious and non-contentious IP matters. I assist clients to enforce their IP rights by acting in opposition proceedings before IP Australia and in Federal Court proceedings.
On the commercial side, I work with clients to identify and protect their IP and increasingly clients require assistance with IP transactions with a cross border element. I also carry out advertising compliance reviews for advertising campaigns.
In the privacy area, I have extensive experience with privacy projects and aiding clients with privacy compliance procedures and policies, as well as advising on data breach issues and reporting obligations.
Prior to joining Addisons in October 2017, Donna was a partner at Henry Davis York and the practice leader of the Intellectual Property team.
Rankings:
- Donna is ranked in the Chambers Global Guide 2019 and 2018 for Intellectual Property: Trade Mark & Copyright and is noted for her extensive experience. One client reported to Chambers that “I feel her knowledge around intellectual property is excellent and that she provided exceptional advice in managing our risk.”
- Donna is ranked in the Chambers Asia-Pacific Guide 2019, 2018 and 2017 and is well regarded for trade mark registration, enforcement, commercialisation and brand management. An interviewee described her as “very knowledgeable in IP legal matters. She communicates very well and keeps us in the loop with regards to all relevant matters. She is also easy to deal with, very professional and courteous.'
- Ranked as a Leading Trade Mark Professional for Prosecution and Strategy in The World's Leading Trademark Practitioners 2019
- Listed as a Recommended Lawyer in the Legal 500 Asia-Pacific for Intellectual Property 2018 and 2017
- Listed as a Leading Commercial IP Lawyer in Doyles 2017 and as a Recommended Lawyer in Doyles Guide 2016 for Leading Commercialisation & IP Transaction Lawyers
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Qualifications
BEcon LLB – Macquarie University
Member of the International Trade Mark Association (INTA)
Committee member of the INTA Enforcement Committee
Member of the Copyright Society of Australia
Member of the Intellectual Property Society of Australia and New Zealand (IPSANZ)
Latest Knowledge
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Advised in relation to the redevelopment of the Eastwood Shopping Centre including advising on the clause 4.6 objection and the letter of offer and Voluntary Planning Agreement.
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Dexus
Advised Dexus on its retail podium redevelopment at Gateway, Circular Quay. Penny’s role included advising on the heritage floor space controls, securing heritage floor space transfers, obtaining access to Council’s land for construction purposes and negotiating a voluntary planning agreement with Council.
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Mirvac
Penny is advising Mirvac on its redevelopment of the ground plane and podium for 275 Kent Street, Sydney. This site has complicated titling and planning approvals and required a VPA and agreements with RMS in relation to the Western Distributor.
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