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 large IP portfolios.
Georgina manages and advises on pre and post completion issues, recordals of assignment, the review of internal agreements, licences and 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 vendors on implementing a strategy to maximise the value of their IP prior to divestment, including ensuring issues and gaps in the IP portfolio are identified before going to market to maximise business value.
Georgina also has extensive experience in global IP and brand portfolio management, covering all aspects of new brand clearances (including locally, regionally and globally), 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, and implementing strategies to manage worldwide trade mark 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 and Quayeyewear.
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 was a Recommended Lawyer, Intellectual Property Asia Pacific Legal 500, 2013, 2014 and Euromoney, Australasian Woman in Business Law Awards, nominated ‘Rising Star’ in IP.
- Admitted Supreme Court of New South Wales
- High Court of Australia
- Registered Trade Marks Attorney in Australia
- Asahi - Acted for Asahi in relation to its purchase of certain brands and related assets for RTD and FSBS alcoholic beverages from ASM Liquor Pty Ltd.
- Varian Medical Systems - Acted for Varian Medical 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. - Advising 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.
- Savills (NSW) – Advising on the acquisition of the Staywell hotel portfolio by Prince Hotels (facilitated by real estate group Savills), in relation to the due diligence on IP assets located around the world, which involved carrying out and reviewing global IP searches, reviewing data room information and documentation, and providing tailored advice on potential risk areas and risk minimisation strategies following completion.
- David Jones - Acted for David Jones Pty Ltd in the acquisition of the domain name davidjones.com, which had been registered by an infamous 'domainer', otherwise known as a 'commercial registrant'.
- 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.
Thought leadership | June 04, 2020
Publication | July 9, 2019
Publication | April 2018
Jumping into the new country of origin food labelling requirements – is your packaging up to scratch?
Publication | November 2017