Saturday, 23 February 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
Yuhu
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.
MORE INFORMATION
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.
MORE INFORMATION
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.
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
Yuhu
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.
MORE INFORMATION
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.
MORE INFORMATION
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.
MORE INFORMATION
 

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
Yuhu
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.
MORE INFORMATION
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.
MORE INFORMATION
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.
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
Yuhu
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.
MORE INFORMATION
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.
MORE INFORMATION
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.
MORE INFORMATION