Donna Short
Partner
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
Practice Areas
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
“Companies choose Donna Short to manage their global portfolios and protect their intellectual property thanks to her top-notch “practical counselling, responsiveness and efficiency”, as well as her approachability. “Donna is very friendly and extremely reliable. You can tell she genuinely wants the best for your business. With her global knowledge and commercial analysis, she goes above and beyond to ensure her clients are equipped to make good, informed decisions.”
World Trademark Review (WTR1000) – 2021