Donna Short

Donna Short

Partner
Phone: +61 2 8915 1061
Mobile: +61 417 211 808

Donna is recognised as a leader in the fields of contentious and non-contentious intellectual property (IP). Her areas of expertise also include privacy and data protection, technology and Australian Consumer Law issues.

Clients from all industries call on her for assistance across the entire IP life cycle, from the initial innovation stage, identifying and protecting IP in Australia and internationally, commercialisation, and enforcing IP rights. Donna advises on issues involving trade marks, copyright, brand protection, domain name disputes, portfolio management and advertising compliance. She regularly acts in proceedings before IP Australia and the Federal Court.

Donna’s clients also rely on her experience to assist them with data protection and privacy issues including privacy compliance programmes, drafting privacy policies and consent documents, as well as advising on access requests, data breaches and transfer of data across jurisdictions.

Donna is known for her approachability and efficiency, and clients particularly value her open-minded, commercially astute and clear communication and advice.

Donna’s expertise in the area of IP is well recognised in Australia and internationally. Donna has been recognised in Chambers, The Legal 500 Asia Pacific, Who’s Who Legal and World Trademark Review. In 2023, Donna was ranked in Who’s Who Legal as a Global Leader in IP: Trade Marks and was recognised by Managing IP as an IP Star.

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.

Biotechnology company

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

Fiber Sense Limited

advised on protection of its trade marks in Australia and various overseas jurisdictions including taken action to enforce its trade mark rights overseas.

Hemmes Trading Pty Limited (a company in the Merivale Group)

successfully acted in Federal Court of Australia proceedings commenced by Hemmes Trading against Establishment 203 Pty Ltd for use of ESTABLISHMENT 203. The Court ruled that Establishment 203 use of ESTABLISHMENT 203 infringed Hemmes Trading’s registered trade mark for ESTABLISHMENT and that Establishment 203 had contravened the Australian Consumer Law. Management of Hemmes Trading’s trade mark portfolio and acting in opposition proceedings before IP Australia.

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 various trade mark matters including trade mark protection for a range of ice cream products in Australia and provided advice on regulatory compliance for the labels and packaging.

OFX Group Limited

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

Health care provider group

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

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.

Medical device company

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

Multi-national insurance company

advised on a data breach including undertaking an analysis of the breach to determine whether it was notifiable under Australia’s Notifiable Data Breach Scheme.

Chambers Asia Pacific: Australia

2012-2024 | Intellectual Property: Trade Mark & Copyright

Chambers Global: Australia

2012-2024 | Intellectual Property: Trade Mark & Copyright

Doyle’s Guide – Leading Lawyers — NSW

2019-2023 | Non-Contentious Intellectual Property: Recommended

2017 | Trademark Lawyers: Recommended

2016-2017| Commercial IP Lawyers: Recommended

Managing IP – IP Stars

2021 | Top 250 Women in IP in global rankings

Managing IP – IP Stars Australia

2020-2024 | Trade Mark Star

The Legal 500 Asia Pacific

2014&2015, 2017-2022 | Intellectual Property: Recommended Lawyer

2024-2025 | Intellectual Property: Recognised Lawyer

Who’s Who Legal – Australia & New Zealand

2019-2024 | IP – Trademarks

World Trademark Review (WTR 1000)

2021-2024 | Trademark Transactions, Australia

2019-2024 | Trademark Prosecution & Strategy, Australia

2019-2024 | Trademark Enforcement & Litigation, Australia

  • Member, International Trade Mark Association (INTA)
  • Member, Intellectual Property Society of Australia and New Zealand (IPSANZ)
  • Member, Copyright Society of Australia
  • Bachelor of Economics/Laws, Macquarie University

Experience

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.
Biotechnology company
advised a large Australian biotechnology company on an IP commercialisation project for patented diagnostic technology including preparation of the IP licensing agreement.
Fiber Sense Limited
advised on protection of its trade marks in Australia and various overseas jurisdictions including taken action to enforce its trade mark rights overseas.
Hemmes Trading Pty Limited (a company in the Merivale Group)
management of its trade mark portfolio, acting in respect of infringement actions and in opposition proceedings before IP Australia.
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 various trade mark matters including trade mark protection for a range of ice cream products in Australia and provided advice on regulatory compliance for the labels and packaging.
OFX Group Limited
management of its global trade mark portfolio and brand protection issues including enforcement of trade mark rights in Australia and overseas.
Health care provider group
advised a group of health care companies on privacy issues including preparation of privacy policies and consents.
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.
Medical device company
advised on privacy issues in respect of a ransomware attack impacting the company’s operations in various jurisdictions.
Multi-national insurance company
advised on a data breach including undertaking an analysis of the breach to determine whether it was notifiable under Australia’s Notifiable Data Breach Scheme.

Recognition & Awards

Chambers Asia Pacific: Australia

2012-2024 | Intellectual Property: Trade Mark & Copyright

Chambers Global: Australia

2012-2024 | Intellectual Property: Trade Mark & Copyright

Doyle’s Guide – Leading Lawyers — NSW

2019-2023 | Non-Contentious Intellectual Property: Recommended

2017 | Trademark Lawyers: Recommended

2016-2017| Commercial IP Lawyers: Recommended

Managing IP – IP Stars

2021 | Top 250 Women in IP in global rankings

Managing IP – IP Stars Australia

2020-2024 | Trade Mark Star

The Legal 500 Asia Pacific

2014&2015, 2017-2022 | Intellectual Property: Recommended Lawyer

2024-2025 | Intellectual Property: Recognised Lawyer

Who’s Who Legal – Australia & New Zealand

2019-2024 | IP – Trademarks

World Trademark Review (WTR 1000)

2021-2024 | Trademark Transactions, Australia

2019-2024 | Trademark Prosecution & Strategy, Australia

2019-2024 | Trademark Enforcement & Litigation, Australia

Committees & Memberships

  • Member, International Trade Mark Association (INTA)
  • Member, Intellectual Property Society of Australia and New Zealand (IPSANZ)
  • Member, Copyright Society of Australia

Qualifications

  • Bachelor of Economics/Laws, Macquarie University