Donna Short Headshot

Donna Short

Partner

Call Donna +61 2 8915 1061

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.

OFX Group Limited — management of its global trade mark portfolio and brand protection issues including copyright protection in China.

Australian Ethical Investment Ltd — trade mark prosecution including preparation of evidence and submissions to successfully obtain registration of the trade mark AUSTRALIAN ETHICAL in Australia.

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

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

KYOCERA Document Solutions Australia Pty Ltd — acting in Federal Court proceedings in respect of infringement by a third party of KYOCERA's registered trade marks.

The Stars Group Inc — acting in trade mark opposition proceedings to defend an opposition against The Stars Group’s Australian trade mark.

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

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

Police Bank Ltd — assisting on a range of intellectual property and technology related matters.

Teachers Federation Health Ltd — advising on a re-branding project including trade mark protection for a number of new brands.

Recognition

Chambers Global Guide — Ranked for Intellectual Property, Trade Mark & Copyright Australia — 2012-2020

Chambers Asia Pacific Guide — Ranked for Intellectual Property, Trade Mark & Copyright Australia — 2012-2020

The World’s Leading Trademark Practitioners 2019 — Leading Trademark Professional for Prosecution and Strategy — 2019

Legal 500 Asia Pacific — Recommended Lawyer — 2014, 2015, 2017-2020

Who's Who Legal — National Leader — Australia — Recommended — 2019

Who’s Who Legal — Global Leader — Trademarks — Recommended — 2019

Doyle’s Guide to the Australian Legal Profession — Leading Non-Contentious Intellectual Property Lawyer — Recommended — NSW — 2019, 2020

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

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

IP Stars Australia — Trade Mark Star — 2020

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