Advising my clients and solving their legal problems is more than just my job. I do feel very much a part of each of my clients' businesses, so I take it personally. Their success is my success.
I am fully invested in the commercial success of my clients – and take the success or failure of my clients personally. If we are successful with a matter for a client, then I feel like I have also had a win. But if they lose, then likewise I consider this a personal loss in a sense as well. My approach is one where I go beyond the procedural and look to what it is that the client wants to achieve and why. This enables me to provide a commercially and legally creative and practical solution for my clients.
It is extremely important that my role as legal advisor to my clients benefits their businesses and assists their success. As many of my clients, including some large global brands for whom I act in Australia, do not have a local corporate or in house counsel, I very much feel a part of their business and team. I enjoy acting for my clients and take considerable pride in acting for each of them and having them entrust me with their legal work and valuable intellectual property.
The intellectual property work I undertake includes acting for some of the world’s largest brand names, as well as iconic Australian brands. My practice includes maintaining the integrity of my clients’ trade marks as well as advising on their trade mark portfolios and brand protection strategies. Additionally, I provide advice to my clients on every aspect of intellectual property which may affect their business, including piracy, customs, infringement, disputes and commercialisation. This can include advice relating to patents, trade marks, domain names, designs, copyright and confidential information.
Virgin Enterprises Limited (located in UK) — I have, since approximately 2000, undertaken all of the Virgin Group’s intellectual property work in Australia in respect of the VIRGIN and other core brand. I am instructed in connection with this work from the Virgin Group’s head office, currently located in London. My work for this client has included conducting a large number of Federal Court proceedings involving trade mark infringement; breaches of the Australian Consumer Law and passing off claims, arising from use of infringing domain names, trade marks, business and company names. In addition, I have provided extensive brand strategy advice, dealing with the Virgin Group’s Australian trade mark portfolio, as well as acting in a large number of opposition proceedings in the Trade Marks Office.
Nintendo Group of companies (instructed from Japan and USA) — I have, for many years, assisted Nintendo with protecting its valuable intellectual property, including its copyright and brands in Australia – including providing strategy advice and actions in relation to piracy and customs issues and all facets of infringement of the Nintendo Group's rights in Australia.
Formula One (instructed from the UK) — Acted in relation to Australian trade mark infringement and related matters, including customs issues, for Formula One for many years. This has included dealing with Trade Marks Office matters, disputes, customs training, protection and commercialisation of the valuable intellectual property assets of this business.
Playboy Enterprises International Inc — This client has also entrusted me, for many years, with its intellectual property work in Australia in connection with the famous Playboy brands, including the maintaining of Playboy Enterprises International Inc's trade mark portfolio in Australia and all related Trade Marks Office, infringement, brand protection and Customs related work.
Monash IVF Pty Ltd — I have been assisting Monash IVF since 2015 in respect of its trade mark and related intellectual property issues, including its trade mark portfolio strategy in Australia, brand disputes and assisting with brand protection issues throughout the world.
Fin Control Systems Pty Ltd — I advise this company and its related businesses, including undertaking intellectual property infringement and strategy work, in Australia and overseas. This includes proceedings in the Federal Court of Australia in relation to registered design and patent infringement issues.
The Beauty Chef Pty Ltd — and its founder Carla Oates, also entrust me with the protection of all of the intellectual property and brand protection work for this business, including brand strategy in Australia and overseas.
Chambers and Partners — Intellectual Property: Trade Marks & Copyright - Australia — Regularly rated as a notable intellectual property lawyer in Australia including for 2020
Chambers Asia Pacific — Regularly rated as a notable intellectual property lawyer in Australia —
World Trademark Review 1000 — Individuals: enforcement and litigation — since 2012
Legal 500 Asia Pacific — Recommended Lawyer — 2020
Who’s Who Legal — Leading Intellectual Property Lawyer — regularly recommended, including for 2019
Managing Intellectual Property — IP Stars Australia — 2017 to 2019
Doyles Guide to the Australian Legal Profession — Regularly recommended NSW and Australian Trade Mark Lawyer — since 2018
Property and Commercial Development
Other areas of expertise
Australian Consumer Law
Domain name and social media issues
Bachelor of Laws (Honours), University of Melbourne
Associate Diploma of Business in Legal Practice, Royal Melbourne Institute of Technology
“Karen is immensely experienced, responsive and practical, she cooperates seamlessly with in-house teams to offer well-considered suggestions in line with the client’s budget and business priorities. Her positive working relationships with enforcement authorities and local investigators allow her to leap right into action when infringement issues spring up.”