Mark Krenzer - Clayton Utz

Mark Krenzer is a Special Counsel in the Intellectual Property and Information Technology group. Prior to joining Clayton Utz in 1999 he practised in intellectual property law for five years at another top tier commercial firm in Melbourne. Mark Krenzer advises a range of clients operating in diverse fields. His clients are drawn from areas such as research and media organisations, government, entertainment and service providers and manufacturers of consumer and industrial products.

There are two key ways in which Mark Krenzer helps his clients. The first is the protection of and disputes regarding trade marks (both registered and unregistered), copyright, designs and confidential information. Mark Krenzer registers and opposes trade marks and designs, acts for clients in intellectual property infringement and mis-use disputes (including in relation to the manufacture and sale of counterfeit products), and advises regarding the protection and use of trade marks, copyright materials, designs and confidential information.

The second way Mark Krenzer helps his clients is in relation to the licensing and commercialisation of intellectual property. Mark Krenzer works with both licensors and licensees assisting them to extract value from their intellectual property and confidential information, or obtain rights to use the intellectual property and confidential information they require for the continued growth of their business.

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Philippa Hore - Clayton Utz

Philippa Hore practices in our Technology and Intellectual Property group. Prior to joining Clayton Utz, Philippa Hore worked in Telstra’s legal group for five years, which has given her a strong commercial focus in advising clients. Philippa Hore advises on a range of intellectual property issues, including trade marks, copyright, moral rights, confidential information and passing off. Philippa Horework in these areas includes drafting and negotiating intellectual property licences and assignments, moral rights consents and confidentiality agreements. Philippa Hore also advises generally on the legal aspects of brand development and protection.

Philippa Hore has a particular focus on marketing law, including advising on the application of Part V of the Trade Practices Act and privacy legislation to marketing activities. Philippa Hore has developed and managed approval processes for print, television, radio and internet advertisements, website content, product packaging and other corporate communications. Philippa Hore also has extensive experience in drafting, negotiating and advising on sponsorship agreements and agreements with advertising, promotional and market research agencies.

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Clayton Utz IP

Clayton Utz has one of Australia’s largest and most experienced specialist intellectual property (IP) and information technology (IT) practice groups. Their intellectual Property and IT group lawyers assist clients with all aspects of intellectual property law, including patents, trade marks, copyright, registered designs, confidential information, data protection, electronic circuit layouts and plant breeders’ rights.

“Many large corporations, government organisations and big international brands operating in Australia turn to the excellent IP practice at Clayton Utz for advice on commercialising and protecting their brands and intellectual property portfolios.” Asian In-House Handbook

“head and shoulders above the rest, both at senior partner level and below. They are extremely efficient, pull out all the stops and work all hours to get the job done.” [Client quote] “IT outsourcing and hi-tech commercial work are clear areas of expertise for the team.” Chambers Global, Guide to the World’s Leading Lawyers

“Across the board Clayton Utz has a leading industry practice, with considerable depth and strength encompassing regulatory, IP and product liability issues.” Global Counsel Life Sciences Super League

“…the formidable team at Clayton Utz, attracting an extensive and palatable list of clients and high-profile matters.” Asia Pacific Legal 500

“a leading firm for intellectual property.” Chambers Global, Guide to the World’s Leading Lawyers

Clayton Utz acts for Adidas, Apple, Remington and Kellogs.

IP Partners at Clayton Utz

Ian Bloemendal
Jeremy Charlston
John Collins
Jonathan Corby (Special Counsel)
Robert Cutler
Brian Elkington
John Fairbairn
Philippa Hore
Mark Krenzer (Special Counsel)
Chris McLeod
Richard Morrison
Simon Newcomb
Anna Sharpe
Mark Sneddon
Mary Still
Alexandra Wedutenko

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IP Firms in Australia

Top Tier IP Firms
Allens Arthur Robinson
Blake Dawson
Clayton Utz
Corrs Chambers Westgarth
Davies Collison Cave
Freehills
Gilbert + Tobin
Mallesons Stephen Jaques
Minter Ellison

Second Tier IP Firms
Banki Haddock Fiora
Deacons
DLA Phillips Fox
FB Rice
Griffith Hack
Hunt & Hunt
Maddocks
Middletons
Phillips Ormonde & Fitzpatrick
Piper Alderman
Spruson & Ferguson Lawyers
TressCox

Medium Sized IP Practices
Arnold Bloch Leibler
Choy Lawyers
Gadens Lawyers
Henry Davis York
Holding Redlich
Home Wilkinson Lowry
Kelly & Co
ShelstonIP
Slaters Intellectual
Thomson Playford
Watson Mangioni

Boutique IP Firms
Actuate Intellectual Property
Acumen Intellectual Property
Admiral Trademarks & Patents Services
Ahearn Fox
Alliance Lawyers Pty Ltd.
Anderson - Taylor & Associates
APT
Barker Blenkinship & Associates
Bellator
Blueprint Law
Buchanan Law
Callinan Lawrie
Carter Newell
Collison and Co
Cullen & Co
Eagar & Buck
Francis Abourizk Lightowlers
Fisher Adams Kelly
Michael Frankel & Co
Goldrick Farrell Mullan
Gray & Perkins
Halford & Co
Hazan Hollander
Holley Nethercotw
Hodgkinson McInnes Patents
Madderns
McCullough Robertson
Nicholas Weston
Sampark & Co Intellectual Property Lawyers
Wray and Associates

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Trade mark infringement: who can provide consent?

Robert Cutler and Timothy Webb of Clayton Utz review the Brother Industries Ltd v Dynamic Supply Pty Ltd decision considering establishing consent as a defence to trade mark infringement.

It is a defence to infringement of a registered trade mark if the trade mark is applied to goods or services with the consent of the owner of the trade mark. According to Robert Cutler and Timothy Webb, the Federal Court decision has confirmed that consent must be obtained from the registered owner of the trade mark in Australia. The fact that goods to which a trade mark has been applied have been sourced from a related entity or member of the same corporate group as the Australian registered trade mark owner will not be sufficient to give rise to an implication, for the purposes of the defence, that the importer or seller of the goods has the necessary consent.

Australian Intellectual Property Law Bulletin (2008) 20(7)

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Business method patents in Australia and the US: the difficulties continue

Business method patents in Australia and the US: the difficulties continue - Nicholas Tyacke and Timothy Webb of Clayton Utz review recent Australian and US decisions that show the difficulties that pure business methods are causing patent offices and courts in those jurisdiction.

In Australia, the article refers to Decision of Deputy Commisioner of Patents: Stephen John Grant [2004] APO 11, Grant v Cmr of Patents [2005] FCA 1100 and Grant v Cmr of Patents [2006] FCAFC 120 and the application for special leave to the appeal to the High Court. These cases relate to Stephen John grant’s asset protection method, which involved

• establishing a trust with a trustee;
• the owner making a gift of a sum of money to the trust;
• the trustee making a loan of said sum of money from the trust to the owner; and
• the trustee securing the loan by taking a charge for said sum of money of the asset.

In USA, the article refers to the seminal decision of State Street Bank 149 F 3d 1368 (Fed Cir 1998) and the dissenting decisions in Laboratory Corp of America Holdings v Metabolite Laboratories, Inc 126 S Ct. 2921 (2006).

Link to Australian Intellectual Property Law Bulletin (Vol 19 No 8, January 2007)

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