Saturday, 22 September 2018
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Donna Short

"I strive to be commercial, strategic and responsive to achieve the best outcomes for my clients."

Telephone +61 2 8915 1061
Facsimile +61 2 8916 2000
Email Donna
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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. 

 

 

Qualifications

BEcon LLB – Macquarie University 

 

Donna has been recognised in Chambers Asia-Pacific every year from 2017 to 2012


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


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)


Prior to joining Addisons in October 2017, Donna was a partner at Henry Davis York and the practice leader of the Intellectual Property team

 

Donna is ranked in the Chamber Global Guide 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 2017 and is noted for her expertise relating to IP matters. Interviewees describe her as “extremely competent on complex and difficult issues”, remarking “She is very good at thinking on her feet, which helped us to achieve a very good outcome.”

 

Latest Knowledge
Should you be checking your termination benefit approvals?
21 September 2018
A recent unreported decision of the NSW Supreme Court should have executives rushing to their lawyers to check that their entitlements on retirement or termination from office have been properly approved by shareholders. It is not enough that shareholders have been told about an executive’s termination benefits and then given some general approval to them. For termination benefits approval to be effective, requirements as to both form and substance need to be strictly observed.
MORE INFORMATION
Australia - Parallel imports and exhaustion of trade mark rights
21 September 2018
The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) (Act) was assented to on 24 August 2018. Among other changes, it amends the Copyright Act 1968 (Cth) (Copyright Act) and the Trade Marks Act 1995 (Cth) (Trade Marks Act) to clarify the circumstances in which the parallel importation of trade marked goods does not infringe a registered trade mark.
MORE INFORMATION
Interim Heritage Orders - when can they be made and what effect do they have on development
21 August 2018
Landowners, developers and purchasers of property need to be aware of the increased use by many Sydney councils of their power to make an interim heritage order (IHO) over an item that the council considers may, on further inquiry or investigation, be found to be of local heritage significance, and is being or is likely to be harmed. The effect of the making of an IHO over a property can and often does restrict and limit development plans for the property.3
MORE INFORMATION

My work includes:

 

  • trade mark prosecution, rebranding projects and product launches
  • commercialisation and licensing of copyright, trade marks and patents
  • intellectual property litigation
  • trade mark opposition proceedings
  • domain name advice and disputes
  • advertising compliance reviews to check for IP and Australian Consumer Law issues
  • privacy advice including preparing privacy policies and consent documents, responding to access requests and preparing data breach notifications to the OAIC
  • preparing and negotiating a range of IT agreements
  • product labelling advice
  • product recalls
 

Qualifications

BEcon LLB – Macquarie University 

 

Donna has been recognised in Chambers Asia-Pacific every year from 2017 to 2012


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


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)


Prior to joining Addisons in October 2017, Donna was a partner at Henry Davis York and the practice leader of the Intellectual Property team

 

Donna is ranked in the Chamber Global Guide 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 2017 and is noted for her expertise relating to IP matters. Interviewees describe her as “extremely competent on complex and difficult issues”, remarking “She is very good at thinking on her feet, which helped us to achieve a very good outcome.”

 

Latest Knowledge
Should you be checking your termination benefit approvals?
21 September 2018
A recent unreported decision of the NSW Supreme Court should have executives rushing to their lawyers to check that their entitlements on retirement or termination from office have been properly approved by shareholders. It is not enough that shareholders have been told about an executive’s termination benefits and then given some general approval to them. For termination benefits approval to be effective, requirements as to both form and substance need to be strictly observed.
MORE INFORMATION
Australia - Parallel imports and exhaustion of trade mark rights
21 September 2018
The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) (Act) was assented to on 24 August 2018. Among other changes, it amends the Copyright Act 1968 (Cth) (Copyright Act) and the Trade Marks Act 1995 (Cth) (Trade Marks Act) to clarify the circumstances in which the parallel importation of trade marked goods does not infringe a registered trade mark.
MORE INFORMATION
Interim Heritage Orders - when can they be made and what effect do they have on development
21 August 2018
Landowners, developers and purchasers of property need to be aware of the increased use by many Sydney councils of their power to make an interim heritage order (IHO) over an item that the council considers may, on further inquiry or investigation, be found to be of local heritage significance, and is being or is likely to be harmed. The effect of the making of an IHO over a property can and often does restrict and limit development plans for the property.3
MORE INFORMATION
 

Qualifications

BEcon LLB – Macquarie University 

 

Donna has been recognised in Chambers Asia-Pacific every year from 2017 to 2012


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


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)


Prior to joining Addisons in October 2017, Donna was a partner at Henry Davis York and the practice leader of the Intellectual Property team

 

Donna is ranked in the Chamber Global Guide 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 2017 and is noted for her expertise relating to IP matters. Interviewees describe her as “extremely competent on complex and difficult issues”, remarking “She is very good at thinking on her feet, which helped us to achieve a very good outcome.”

 

Latest Knowledge
Should you be checking your termination benefit approvals?
21 September 2018
A recent unreported decision of the NSW Supreme Court should have executives rushing to their lawyers to check that their entitlements on retirement or termination from office have been properly approved by shareholders. It is not enough that shareholders have been told about an executive’s termination benefits and then given some general approval to them. For termination benefits approval to be effective, requirements as to both form and substance need to be strictly observed.
MORE INFORMATION
Australia - Parallel imports and exhaustion of trade mark rights
21 September 2018
The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) (Act) was assented to on 24 August 2018. Among other changes, it amends the Copyright Act 1968 (Cth) (Copyright Act) and the Trade Marks Act 1995 (Cth) (Trade Marks Act) to clarify the circumstances in which the parallel importation of trade marked goods does not infringe a registered trade mark.
MORE INFORMATION
Interim Heritage Orders - when can they be made and what effect do they have on development
21 August 2018
Landowners, developers and purchasers of property need to be aware of the increased use by many Sydney councils of their power to make an interim heritage order (IHO) over an item that the council considers may, on further inquiry or investigation, be found to be of local heritage significance, and is being or is likely to be harmed. The effect of the making of an IHO over a property can and often does restrict and limit development plans for the property.3
MORE INFORMATION
Australia - Parallel imports and exhaustion of trade mark rights
21/9/2018
The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) (Act) was assented to on 24 August 2018. Among other changes, it amends the Copyright Act 1968 (Cth) (Copyright Act) and the Trade Marks Act 1995 (Cth) (Trade Marks Act) to clarify the circumstances in which the parallel importation of trade marked goods does not infringe a registered trade mark.
View Full Focus Paper
How the EU General Data Protection Regulation (GDPR) will impact Australian business?
23/4/2018
The GDPR will overhaul data protection throughout the EU and enters into force on 25 May 2018. It has exterritorial reach beyond the EU, which could affect a large number of Australian businesses.
View Full Focus Paper
 

Qualifications

BEcon LLB – Macquarie University 

 

Donna has been recognised in Chambers Asia-Pacific every year from 2017 to 2012


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


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)


Prior to joining Addisons in October 2017, Donna was a partner at Henry Davis York and the practice leader of the Intellectual Property team

 

Donna is ranked in the Chamber Global Guide 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 2017 and is noted for her expertise relating to IP matters. Interviewees describe her as “extremely competent on complex and difficult issues”, remarking “She is very good at thinking on her feet, which helped us to achieve a very good outcome.”

 

Latest Knowledge
Should you be checking your termination benefit approvals?
21 September 2018
A recent unreported decision of the NSW Supreme Court should have executives rushing to their lawyers to check that their entitlements on retirement or termination from office have been properly approved by shareholders. It is not enough that shareholders have been told about an executive’s termination benefits and then given some general approval to them. For termination benefits approval to be effective, requirements as to both form and substance need to be strictly observed.
MORE INFORMATION
Australia - Parallel imports and exhaustion of trade mark rights
21 September 2018
The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) (Act) was assented to on 24 August 2018. Among other changes, it amends the Copyright Act 1968 (Cth) (Copyright Act) and the Trade Marks Act 1995 (Cth) (Trade Marks Act) to clarify the circumstances in which the parallel importation of trade marked goods does not infringe a registered trade mark.
MORE INFORMATION
Interim Heritage Orders - when can they be made and what effect do they have on development
21 August 2018
Landowners, developers and purchasers of property need to be aware of the increased use by many Sydney councils of their power to make an interim heritage order (IHO) over an item that the council considers may, on further inquiry or investigation, be found to be of local heritage significance, and is being or is likely to be harmed. The effect of the making of an IHO over a property can and often does restrict and limit development plans for the property.3
MORE INFORMATION