Intellectual Property

Novartis: Acting for Novartis AG and Novartis Pharmaceuticals Australia Pty Ltd in proceedings to enforce patents and prevent the entry of generic competition for its blockbuster heart failure/hypertension drug Entresto (sacubitril/valsartan). In June 2023, Novartis commenced proceedings against generic competitor, Pharmacor, which had threatened to launch a generic fingolimod product on 1 August 2023. In July 2023, Novartis successfully obtained a preliminary injunction restraining Pharmacor's launch. A trial took place in April/May 2024 and a judgment at first instance in November 2024. The primary judge found for Novartis on the alleged lack of inventive step, but found for Pharmacor on the claim construction and related PTE/infringement issues. An appeal has been brought, and the proceedings are ongoing, with a hearing before the Full Court of the Federal Court which took place in March 2025. We continue to act for Novartis entities in connection with enforcing patents to protect various other drugs in Novartis' Australian pharmaceutical product portfolio.

Royalty Pharma Collection Trust: Engaged by US counsel, Goodwin Proctor, for RPCT to give expert evidence in US arbitration proceedings on aspects of Australian patents and competition law central to a major ongoing contractual dispute between RPCT and Gilead Sciences, Inc. This matter is significant, as multi-jurisdictional patent portfolio licence agreements are becoming increasingly common, especially in the pharmaceutical and information technology industries. The monetary value of such agreements is often substantial, and the possibility of post-expiry royalty fees raises important questions about the interface between modern competition/anti-trust law and patents law, with different approaches taken in different jurisdictions globally.

Sandoz: Representing Sandoz Pty Ltd and Sandoz International GmbH in the long-running Lundbeck escitalopram (Lexapro) patent infringement litigation. This is a claim originally for around $150 million made by Lundbeck against Sandoz for alleged infringement of a patent covering the depression treatment Lexapro. This is one of the largest patent damages claims in recent times. The case concerns patent term extensions for pharmaceutical patents, contractual interpretation of patent licences, untested provisions of the Patents Act, and the methods of assessing damages in complex counterfactual scenarios. Following many years of litigation, the parties reached a confidential settlement in February 2025. We have also successfully acted for Sandoz in defending proceedings brought by Biogen in relation to its blockbuster multiple sclerosis drug, Tecfidera (dimethyl fumarate). Biogen sought access to confidential information about Sandoz's generic dimethyl fumarate products, and threatened to commence infringement proceedings, but the matter resolved following Sandoz's successful outcome on preliminary discovery.

Apple: Acting for Apple in Copyright Tribunal proceedings commenced by Australasian Performing Right Association Limited and Australasian Mechanical Copyright Owners’ Society Limited's (together, APRA AMCOS) regarding a new licence scheme for the reproduction and communication of musical and associated literary works for subscription video on-demand (SVOD) services. The licence scheme will apply to all SVOD service providers operating in Australia. The licence scheme determined by the Tribunal will set the licence terms for the entire Australian SVOD industry for years to come.

Brisbane 2032: Advised on the intellectual property and marketing arrangements for the 2032 Olympic and Paralympics Games.

Commonwealth of Australia: Advised the Commonwealth on acquiring the copyright in the Aboriginal Flag from its indigenous creator, including negotiating directly with exclusive licensees to buy out their rights.

Komatsu: Advised on the licensing of autonomous haulage systems and other technology to global customers.

Isentia: Acting for Isentia, the largest media monitoring organisation in the Asia-Pacific, in Federal Court proceedings commenced by Australian News Channel Pty Ltd (ANC), which is part of the News Corp Australia group. ANC commenced a Federal Court test case seeking declaratory relief as to the proper construction of section 183(1) of the Copyright Act and, specifically, whether acts undertaken in providing media monitoring services to government are acts "for the services of the Commonwealth or a State" within the meaning of that provision. Isentia successfully defended the proceedings both at first instance (Australian News Channel Pty Ltd v Isentia Pty Ltd [2024] FCA 363) and on appeal (Australian News Channel Pty Ltd v Isentia Pty Limited [2025] FCAFC 49). This case is the leading Australian decision on the scope of the Crown use provisions in the Copyright Act.

Free TV: Acting for Free TV Australia Ltd in Copyright Tribunal proceedings concerning the licence terms for a commercial television broadcast industry agreement with collecting society, Phonographic Performance Company of Australia Ltd (PPCA). Each of Free TV's broadcaster members requires a licence to broadcast third party sound recordings included in all of their programs, and as such securing a licence from PPCA on reasonable commercial terms is essential. This matter is significant, as the terms of the agreement will set the licence fees and other terms that will apply to the broadcasting of protected commercial sound recordings by free-to-air television broadcasters for years to come.

The a2 Milk Company Limited: Acting for The a2 Milk Company Limited (dairy company dual listed on the NZX and ASX) in various IP matters including four Federal Court appeals from decisions of the Trade Marks Office (each successful) and two Federal Court proceedings concerning trade mark infringement and rectification issues (judgment reserved).

Global news agencies: Acting for a range of global news agencies, including Agence France-Presse (the world's oldest news agency), The Associated Press (which has earned 58 Pulitzer Prizes, including 35 for photography), Reuters News & Media Inc (one of the largest news agencies in the world), in enforcing their copyright in photojournalism in Australia.

Step Global: Acting for Step Global in relation to the misappropriation and misuse of its confidential information amongst other unlawful conduct by a former employee who was closely involved in the development and sale of Step Global's Smart eDriver. It is an electronic work diary product which is used by transport companies to facilitate compliance with driver fatigue management regulations. We have commenced proceedings in the Federal Court of Australia, with the case expected to go to trial in late 2025 or early 2026.

University of New England: Acting for UNE, a significant Australian educational institution, for the protection of its interests in BREEDPLAN, a software system for breeders to record and evaluate the genetics of beef cattle. We have commenced proceedings in the Federal Court to protect its interests against a former employee at Aarhus University in Denmark who it is believed is promoting a competing software product with similarities to BREEDPLAN.

Accent Group Limited: Acting for Accent Group, Australia's largest footwear retailer, with over 800 retail stores across more than 34 brands, and more than 35 online platforms. Those brands include The Athlete's Foot, Platypus, Hype DC, Nude Lucy and Stylerunner. Since 2018, we have assumed responsibility for Accent Group's global trade mark and design portfolio, which includes applications and registrations in a broad range of jurisdictions. The group’s various divisions are extremely “brand heavy” and we are regularly instructed to advise on and file large volumes of new applications. We are currently prosecuting more than 50 pending trade mark applications for the group as a whole.

We have also acted for Accent Group in a range of (confidential) multi-jurisdictional trade mark disputes involving complex co-existence arrangements and in various non-use removal proceedings. This includes a successful removal proceeding regarding the “article:” trade mark. We are also acting in defence of a trade mark opposition commenced against Accent Group's "Nude Lucy" division by Nudie Jeans.

Demonstrating the breadth of our expertise, we have also acted for Accent Group to remove a large number of fraudulent websites which had been established to mimic various Accent Group businesses, particularly for Hype DC, and to defend Accent Group against copyright infringement allegations made by an artist. We have successfully had 7 fraudulent websites taken down through a combination of UDRP proceedings, correspondence with Domain Registrars and website hosts, and working with technical cyber experts.

Toyota Australia and Toyota Japan: Acting for Toyota against well over 150 parties which have been misusing Toyota's trade marks (and often also copyright works). This is undoubtedly one of Australia's most significant trade mark enforcement campaigns and has delivered outstanding outcomes for Toyota. Where an acceptable out-of-court settlement cannot be achieved, we represent Toyota in Federal Court proceedings against such parties. We have secured significant settlements for Toyota in eight such proceedings, and are currently acting for Toyota in three ongoing proceedings. Two of those proceedings are very significant in that they involve claims against parties against whom Toyota has previously commenced (and settled) proceedings. Toyota is therefore seeking significant relief against these alleged "repeat offenders". We are also assisting Toyota as part of its productive relationship with Border Force (the Australian Government customs agency). As a result of those notices, Border Force has intercepted a range of infringing products bound for the Australian market. We also mange Toyota Motor Corporation Australia's trade mark portfolio, which includes disputes and oppositions from time to time.

Sportsbet: Acting for Sportsbet in a range of very significant matters including the management of Sportsbet's global trade mark portfolio. We successfully acted for Sportsbet in defence of a trade mark opposition concerning Sportsbet’s highly publicised BET WITH MATES product. We are also currently acting for Sportsbet in more than 20 trade mark oppositions against Sportsbet's main competitor, Entain, which operates the Labrokes and Neds businesses in Australia. We also act for Sportsbet in an opposition commenced against it by Tattersall's concerning Sportsbet's POWER PLAY trade mark. We have also advised Sportsbet in relation to a range of very complex advertising, marketing and sponsorship matters, including in relation to major sporting events.

PDP: We act for PDP, , the leading Australian manufacturer of chilled desserts in Australia and owner of the market leading WICKED SISTER brand. WICKED SISTER is PDP's most valuable intellectual property. We have previously assisted in high profile infringement proceedings on behalf of the company. More recently we have been assisting in prosecution and general IP advice including in relation to a number of high profile collaborations.

Kokopod: We defended the operators of the Kokopod business in Federal Court proceedings commenced by Koko Black. In the proceeding, Koko Black alleged that our clients had infringed their registered trade mark rights, engaged in passing off and contravened the Australian Consumer Law. The matter settled on confidential terms.

Pokemon: We defended Pokemon Pty Ltd (and its sole director) in Federal Court proceedings commenced by The Pokemon Company International Inc. This case was (to our knowledge) the first of its kind in Australia to deal with IP issues in the context of NFTs (non-fungible tokens). The Pokemon Company International Inc. alleged that our clients engaged in a range of conduct by which they misrepresented an association with The Pokemon Company International Inc. and its trade marks, including in relation to Pokémon branded NFTs. The matter settled as against our clients in June 2023.

Cantarella Bros Pty Ltd (Vittoria Food & Beverage): Acting for Cantarella in the Federal Court of Australia in trade mark infringement proceedings against Lavazza Australia Pty Ltd. Cantarella alleges that Lavazza's use of ORO infringes Cantarella registered rights. Lavazza has cross claimed against Cantarella seeking expungement of the ORO marks in issue. Clayton Utz acted in the appeal of Justice Yates' first instance decision in these trade mark infringement proceedings, which was heard before the Full Federal Court in May 2024 and determined in February 2025. Clayton Utz also acted for the company in its bid for special leave to appeal to the highest court in Australia.

Clayton Utz previously acted for Cantarella in each of the proceedings in the lead-up to, and the successful appeal in, the High Court which upheld that ORO was inherently registrable. This remains the most recent trade mark matter to be heard by the High Court and remains a key authority in trade mark proceedings in Australia. The present proceedings involve a number of novel and complex legal issues relating to not only the High Court's findings, issues surrounding ownership and abandonment of trade marks, substantial identity, and important policy issues relating to how prominent use of a sign must be before it borders an infringement. The current proceedings are likely the longest running and highest profile trade mark infringement proceedings presently being litigated in the Federal Court of Australia.

Clayton Utz is also acting for Cantarella in a related Opposition in the Intellectual Property Office of New Zealand against Luigi Lavazza S.p.A. in which Cantarella is opposing Lavazza's attempt to register a trade mark device that prominently features the sign ORO. Those proceedings were recently heard before the Assistant Commissioner and a decision delivered. The Assistant Commissioner found that the trade mark device Lavazza had sought to register was likely to deceive or confuse, refusing registration as a result. Lavazza have filed an appeal in this matter which was heard in June 2024.