Donna Short Headshot

Donna Short

Partner

Call Donna +61 2 8915 1061
Call Donna +61 417 211 808

To achieve the best outcomes for my clients, I take a commercial and strategic approach. In the area of intellectual property, I enjoy helping clients turn an idea into reality.

My work with clients involves the entire intellectual property (IP) life cycle from the initial innovation stage, IP protection, commercialisation and enforcement of IP rights. My areas of expertise also encompass privacy and data protection, 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 Federal Court proceedings. On the commercial side, I help clients to identify and protect their IP, licence and commercialise it. Increasingly clients require assistance with IP licensing and commercialisation projects involving a cross-border element. I also carry out advertising compliance reviews for advertising campaigns.

I have extensive experience in the area of privacy and data protection, regularly assisting clients with privacy compliance programmes, drafting privacy policies and consent documents. I also advise clients on access requests, data breaches and transfer of data across jurisdictions. In the area of information technology, I regularly assist clients with preparing and negotiating a range of IT agreements.

Biotechnology company — advised a large Australian biotechnology company on an IP commercialisation project for patented diagnostic technology including preparation of the IP licensing agreement.

Australian manufacturer — drafted and negotiated a licensing agreement for an Australian manufacturer of hearing devices with a US based global manufacturer and developer of advanced computerised diagnostic and hearing technologies

Large Australian diversified property company — advised and negotiated an agreement with an Australian building products company for the licensing of copyright and patents to enable the design, manufacture and installation of prefabricated building systems.

OFX Group Limited — management of its global trade mark portfolio and brand protection issues including enforcement of trade mark rights in Australia and overseas.

MoneyMe Financial Group Pty Ltd — assisted in obtaining trade mark protection for key brands in various jurisdictions and represented MoneyMe in trade mark opposition proceedings in Australia and overseas.

Norco Co-operative Ltd — advised on trade mark protection for a range of ice cream products in Australia and provided advice on regulatory compliance for the labels and packaging.

ClearView Wealth Limited — management of the Australian trade mark portfolio and strategic advice provided on new product names.

Multi-national insurance company — advised on a data breach including undertaking an analysis of the breach to determine whether it was notifiable under the notifiable data breach scheme.

Medical device company — advised on privacy issues in respect of a ransomware attack that impacting the company’s operations in various jurisdictions.

Health care provider group — advised a group of health care companies on privacy issues including preparation of privacy policies and consents.

Recognition

Managing Intellectual Property — IP Stars – Top 250 Women in IP in global rankings — 2021

Managing Intellectual Property — IP Stars Australia: Trade Mark Star — 2020-2021

Chambers and Partners — Chambers Global Guide — Intellectual Property: Trade Mark & Copyright — Australia — 2012-2022

Chambers and Partners — Chambers Asia Pacific Guide — Intellectual Property: Trade Mark & Copyright — Australia — 2012-2022

World Trademark Review (WTR1000) — Trademark Prosecution & Strategy, Australia — 2019-2022

World Trademark Review (WTR1000) — Trademark Enforcement & Litigation, Australia — 2019-2022

World Trademark Review (WTR1000) — Trademark Transactions, Australia — 2021 - 2022

The Legal 500 Asia Pacific — Recommended Lawyer — 2014-2015, 2017-2022

Who's Who Legal — National Leader — Australia — 2019-2020

Who’s Who Legal — Global Leader — Trademarks — 2019-2020

Doyle’s Guide to the Australian Legal Profession — Leading Non-Contentious Intellectual Property Lawyer — Recommended — NSW — 2019-2022

Doyle’s Guide to the Australian Legal Profession — Leading Trademark Lawyer — Recommended — NSW — 2017

Doyle’s Guide to the Australian Legal Profession — Leading Commercial IP Lawyer — Recommended — NSW — 2017

Committees and memberships

Member, International Trade Mark Association (INTA)

Member, INTA Enforcement Committee

Member, Intellectual Property Society of Australia and New Zealand (IPSANZ)

Member, Copyright Society of Australia

Industries

Banking, Finance and Insurance

Entertainment

Financial Services

FMCG

Government

Health

Hospitality

Media

Pharmaceuticals

Professional Services

Retail

Social Media

Technology

Other areas of expertise

Australian Consumer Law issues

Commercialisation agreements

Compliance reviews for advertising campaigns

Domain name advice and disputes

Labelling

Registration and protection of designs

Qualifications

Bachelor of Economics/Laws, Macquarie University