Career Summary
Nat is a registered trade mark attorney and has over 15 years’ experience managing all aspects of large IP portfolios, including advising clients on trade mark infringement, trade mark licensing arrangements, ownership and assignments in the context of large corporate groups, domain name disputes and coexistence arrangements.
In addition to Nat’s legal work, she has also customized and implemented IP management software for both law firms and businesses. This included setting up an in-house global IP practice for National Australia Bank.
Recent Highlights
- Management of four trade mark oppositions and allegations of trade mark infringement (with multiple counterparties in the various claims) for an Australian Fintech business. Two of these oppositions have settled, which included successfully negotiating a global coexistence agreement, another was successfully defended [JS & Co Pty Ltd v LAB35 Pty Ltd [2022] ATMO 176 (10 October 2022), and the last is close to reaching settlement.
- Extensive involvement in trade mark opposition appeal and cancellation action in the Federal Court, including attendance at trial and working very closely with the client’s internal solicitor on record and Counsel (junior and silk).
- Management of four oppositions through all evidence stages for Elabor8 Pty Ltd (a large consultancy and training company), which resulted in the other party withdrawing the opposed marks and its oppositions to Elabor8 Pty Ltd’s marks.
- Preparing and filing evidence of use of the trade mark, Bendigo Bank, in order to overcome distinctiveness objection. The Bendigo Bank mark has since proceeded to registration.
- Devising and implementing a global trade mark protection strategy for one of Australia’s largest paper and packaging manufacturers, including conducting and coordinating clearance searches internationally and managing a global filing program.
- Developing Trade Mark Guidelines and a Trade Mark Instruction Sheet for use by personnel at a large Australian paper and packaging manufacturer.
- Preparing extensive business cases for a large national beverages company and bank in respect of the internal management of their IP portfolios.
- Analysis, evaluation, and recommendations for implementation of a solution in respect of the management of domain names (including branded domains) for a large Australian bank.
- Management of several of oppositions involving two retail giants.
- Successfully negotiating a settlement for a client, with a US counterparty that is known as the world’s most litigious and brand-protectionist comic corporate group – and who alleged that our client’s brands infringed the counterparty’s well known superhero character brands..
- Drafting a template Trade Mark License Deed for use in a large complex corporate structure, including drafting notes on quality control and the implementation / management of such standards in practice.
Employment History
Law Firms & Companies:
- National Australia Bank Limited – Melbourne
- Gilbert + Tobin – Sydney
- Corrs Chambers Westgarth – Melbourne
University:
- Trade Mark Law & Practice – University of Technology Sydney
Other:
- Former Company Secretary of Medfin Australia Pty Ltd