Thursday, 22 August 2019
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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. 

 

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
 

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
Loot Boxes, Surprise Mechanics, and Kinder Eggs - How should loot boxes be regulated?
12 August 2019
Globally, several jurisdictions are in the process of considering, or have already considered, their regulatory regimes in respect of loot boxes and have reached differing views as to the best way to regulate them. In this focus paper, we consider Australian and international regulatory developments with respect to the regulation of loot boxes.
MORE INFORMATION
Is the ACCC losing its touch? “Flushable Wipes” and “Biodegradable Plates” cases break down in Federal Court
08 August 2019
Within one week, the ACCC has had two high-profile consumer law cases thrown out of the Federal Court – against Kimberly-Clark and Woolworths, separately.
MORE INFORMATION
Massachusetts' Wynn Decision - Analysis from an Australian perspective
01 August 2019
When reviewing a licence application, a regulator carries out a due diligence process which is a fundamental step in the procedure towards granting a licence. It is important to remember that this is only the first step – the Wynn case illustrates the necessity for there to be ongoing due diligence from the perspectives of both the regulator and the operator.
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 


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
Loot Boxes, Surprise Mechanics, and Kinder Eggs - How should loot boxes be regulated?
12 August 2019
Globally, several jurisdictions are in the process of considering, or have already considered, their regulatory regimes in respect of loot boxes and have reached differing views as to the best way to regulate them. In this focus paper, we consider Australian and international regulatory developments with respect to the regulation of loot boxes.
MORE INFORMATION
Is the ACCC losing its touch? “Flushable Wipes” and “Biodegradable Plates” cases break down in Federal Court
08 August 2019
Within one week, the ACCC has had two high-profile consumer law cases thrown out of the Federal Court – against Kimberly-Clark and Woolworths, separately.
MORE INFORMATION
Massachusetts' Wynn Decision - Analysis from an Australian perspective
01 August 2019
When reviewing a licence application, a regulator carries out a due diligence process which is a fundamental step in the procedure towards granting a licence. It is important to remember that this is only the first step – the Wynn case illustrates the necessity for there to be ongoing due diligence from the perspectives of both the regulator and the operator.
MORE INFORMATION
Baiada
Provided strategic advice and assistance on its trade mark portfolio.
View Full Case Study
Blue diamond Growers
Advised the world’s largest almond processing company on a range of IP issues including protection of its trade marks in Australia, Fiji, Vanuatu and Samoa.
View Full Case Study
Challenger Limited
Advised on a number of IP matters including trade mark opposition proceedings against a US company seeking to register the word mark CHALLENGER in Australia and providing advertising clearance advice in respect of a national television and print media campaign.
View Full Case Study
Police Bank
Advised on various IP issues including trade mark opposition proceedings with another financial services entity including and drafting and negotiating a co-existence agreement.
View Full Case Study
A leading group of building and building supply companies
Advised on a range of issues including copyright and trade mark infringement issues relating to a third party’s imposter social media account and drafting new template privacy policies for companies in the Group.
View Full Case Study
Kyocera Document Solutions
In respect of trade mark registration and protection strategies in Australia as well as Federal Court proceedings in respect of infringement by a third party of Kyocera’s registered trade marks.
View Full Case Study
 

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
Loot Boxes, Surprise Mechanics, and Kinder Eggs - How should loot boxes be regulated?
12 August 2019
Globally, several jurisdictions are in the process of considering, or have already considered, their regulatory regimes in respect of loot boxes and have reached differing views as to the best way to regulate them. In this focus paper, we consider Australian and international regulatory developments with respect to the regulation of loot boxes.
MORE INFORMATION
Is the ACCC losing its touch? “Flushable Wipes” and “Biodegradable Plates” cases break down in Federal Court
08 August 2019
Within one week, the ACCC has had two high-profile consumer law cases thrown out of the Federal Court – against Kimberly-Clark and Woolworths, separately.
MORE INFORMATION
Massachusetts' Wynn Decision - Analysis from an Australian perspective
01 August 2019
When reviewing a licence application, a regulator carries out a due diligence process which is a fundamental step in the procedure towards granting a licence. It is important to remember that this is only the first step – the Wynn case illustrates the necessity for there to be ongoing due diligence from the perspectives of both the regulator and the operator.
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 


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
Loot Boxes, Surprise Mechanics, and Kinder Eggs - How should loot boxes be regulated?
12 August 2019
Globally, several jurisdictions are in the process of considering, or have already considered, their regulatory regimes in respect of loot boxes and have reached differing views as to the best way to regulate them. In this focus paper, we consider Australian and international regulatory developments with respect to the regulation of loot boxes.
MORE INFORMATION
Is the ACCC losing its touch? “Flushable Wipes” and “Biodegradable Plates” cases break down in Federal Court
08 August 2019
Within one week, the ACCC has had two high-profile consumer law cases thrown out of the Federal Court – against Kimberly-Clark and Woolworths, separately.
MORE INFORMATION
Massachusetts' Wynn Decision - Analysis from an Australian perspective
01 August 2019
When reviewing a licence application, a regulator carries out a due diligence process which is a fundamental step in the procedure towards granting a licence. It is important to remember that this is only the first step – the Wynn case illustrates the necessity for there to be ongoing due diligence from the perspectives of both the regulator and the operator.
MORE INFORMATION