Norton Rose Fulbright Australia
Related services and key industries
Georgina Hey is an intellectual property lawyer based in Sydney.
Her experience covers all aspects of brand and IP asset management, including managing the global IP and brand portfolios for large companies, and managing IP issues for the acquisition or divestment of IP.
Georgina manages and advises on pre and post completion IP transaction issues, such as recordals of assignment, the review of internal and external licences, sponsorship agreements, conducting pre and post-acquisition due diligence of IP, and the development of a suitable IP ownership strategy and IP policies. She regularly advises businesses and potential vendors on implementing a strategy to strengthen the value of their IP, including prior to divestment, ensuring issues and gaps in the IP portfolio are identified before going to market to maximise business value.
Georgina's global IP and brand portfolio management experience extends to trade marks, designs and domain name management. Her trade mark experience covers all aspects of new brand clearances (including locally, regionally and globally) and IP asset protection and maintenance matters, advising on the development and protection of localised Asian brands (including the development of local character brands), advising on infringement issues and trade mark oppositions, providing IP commercialisation support and advice, packaging, labelling and advertising clearance reviews, UDRP and AuDRP actions and online brand take downs, and implementing strategies to manage worldwide trade mark, design and domain name portfolios efficiently and effectively.
Georgina manages the global IP and brand portfolios for significant Australian-based clients including IOOF, the Country Road Group (incorporating Mimco, Witchery and Trenery), David Jones, Goodman Fielder, Star Scientific and Quayeyewear. She also manages the Australia and Asia Pacific portfolios for various global businesses such as Brookfield.
In addition to being an admitted solicitor, Georgina is a registered Trade Marks Attorney and has a Masters in Intellectual Property Law from the University of Technology, Sydney. Georgina is recommended by leading directories and during 2020 was acknowledged by The Legal 500, the World Trademark Review and Best Lawyers.
- Admitted Supreme Court of New South Wales
- High Court of Australia
- Registered Trade Marks Attorney in Australia
- Brookfield – Assisting with the global brand portfolio management, focusing on the Asia Pacific region, including various third party cross border disputes, domain takedowns, assignments, and coordinating a global watching service strategy and its implementation.
- Aurora Energy / Hydro Tasmania / Momentum Energy – Assisting with various trade mark and brand clearance projects, and advising on new product naming compliance issues.
- David Jones and the Country Road Group – Managing the global trade marks portfolios for Australian fashion and retail brands David Jones, Country Road, Mimco, Witchery and Trenery.
- IOOF – Managing IOOF's global IP portfolio, including advising on IP ownership and structuring issues, and presenting to the legal and marketing teams regularly across IP, brand management, social media and advertising clearance issues.
- Varian Medical Systems – Acted for Varian Medial Systems on its planned $1.58bn acquisition of Sirtex Medical in relation to the IP aspects of its purchase of the Australian Sirtex business. The IP involved in the deal included patents, registered and unregistered trade marks, and copyright.
- Goodman Fielder – Advising Goodman in relation to the management of its global trade mark portfolio, including its global trade marks and brand portfolio (consisting of over 3,500 trade marks globally), registered designs, enforcement, advertising and marketing clearances, and other related activities.
- Quayeyeware – Acted for Summit Partners, LP in the acquisition of a controlling stake in the popular Australian eyewear brand, Quayeyeware Pty Ltd. Quayeyeware Pty Ltd have subsequently instructed us to manage their global IP portfolio, including all prosecution of their trade mark and designs, notwithstanding that their main business contact points now reside in the US. In addition, since assisting with these work, various US based business entities controlled by Summit Partners have requested Georgina's assistance in Australia and throughout Asia across their IP portfolios and for IP strategy and supply chain risk management support.
- Office Depot, Inc. – Advised Office Depot Inc. on its sale of the Australian and New Zealand OfficeMax business to Platinum Equity in relation to the IP aspects of its sales of the Australian and New Zealand stationery business. The IP involved in the deal included registered and unregistered trade marks, designs and copyright.. We have subsequently been instructed to manage their Australian and New Zealand trade mark portfolio and trade mark prosecution.
- Accolade Wines Australia and Champ Equity -– Assisting Accolade and Champ in relation to all aspects of IP in relation to a number of acquisitions globally, including managing the transfer in of the IP portfolio post acquisition.
- Star Scientific - Acting for Star Scientific in respect of all of its emerging IP matters, including advising on the patent filing strategy, the confidentiality regimes and non-disclosure agreements, drafting IP policies, as well as advising on the trade mark searching and filing prosecution strategy across the globe.
- Domino's Pizza Enterprise - Acted for Domino's in respect of the breach of their client databases by hackers. In addition to the privacy, data and security issues, we also acted for Domino's to take down the website being used to facilitate the gathering of further client information, being dominosau.com.
Publication | November 13, 2023
Publication | October 19, 2023
Publication | April 24, 2023