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Lisa Egan

Partner
+61.3.9205.2099
Fax +61.3.9205.2055

Ms. Egan is an intellectual property partner with experience in enforcing and defending intellectual property rights, including trade marks, copyright, registered designs, confidential information and claims of misleading and deceptive conduct and passing off.

Ms. Egan has particularly focused on large scale intellectual property litigation, as well as intellectual property issues relevant to the fashion industry.

She has experience in both state and Federal Courts of Australia, including the High Court of Australia, as well as Trade Mark Office matters. She advises clients on intellectual property protection and manages trade mark and design portfolios for a range of clients.

 

Achievements

  • Recommended Leading Victorian Copyright & Soft IP Lawyer, Doyle's Guide, 2016 & 2017

Professional/Civic Activities

  • Law Institute of Victoria member
  • Intellectual Property Society of Australia and New Zealand member
  • Audit & Risk Committee member – Melbourne Fashion Festival

Speaking Engagements

Ms. Egan regularly presents seminars and training on intellectual property issues, including ownership of intellectual property, how to identify and protect intellectual property within a business, and training seminars on understanding intellectual property and avoiding infringement.

Additional Information

Ms. Egan regularly contributes articles to Ragtrader, an Australian national publication for the fashion industry.
  • Acting for Local Directories in a case in the Federal Court of Australia, successfully defending a claim of copyright infringement in telephone directory listings, in which the Federal Court and Full Federal Court of Australia found in Local Directories' favour holding that there was no copyright subsisting in the phone directory listings. 
  • Acting for Local Directories in a Federal Court action in successfully defending claims of misleading and deceptive conduct, as well as passing off, based on use of the colour yellow for phone directories.
  • Acting for clients to seek urgent ex parte search and seizure orders, where former employees had left the employment of a client, taking with them valuable confidential information. This has included executing the orders at the homes of the former employees, and seeking urgent injunctions to restrain the use of the confidential information.
  • Acting for clients seeking urgent interim injunctions to protect the use of their intellectual property, including claims regarding use of colour in the client's get-up in both the Supreme Court of Victoria and Federal Court of Australia.
  • Acting in copyright infringement proceedings in the Federal Court of Australia for clients in in relation to copies of original designs and fabric patterns.
  • Acting in trade mark infringement proceedings in the Federal Court of Australia for clients regarding counterfeit products. This includes running programs with Australia Border Protection to enable the seizure of product at the Australian border.
  • Acting in trade mark prosecution and opposition proceeding. Ms. Egan's experience includes advising on appropriate trade mark strategy, prosecuting Australian, New Zealand and Madrid Protocol trade mark applications, opposing trade mark applications and defending oppositions to trade mark applications, including appearing at Trade Mark Office hearings.
  • Providing design advice, registration and enforcement proceedings for clients across a range of industries, particularly in the fashion industry. This includes filing multiple design applications for clients and issuing and managing proceedings for design infringement.
  • Management of trade mark portfolios for a range of national and international brands including Anheuser-Busch InBev, Kennards Hire, R. M. Williams, Tennis Australia.
  • Intellectual property enforcement strategies for Australian and international brands including anti-counterfeiting programs and Border Protection programs and conducting IP audits to identify, capture and protect intellectual property.
  • Advising on parallel import strategies and online intellectual property infringement, including use of keywords.
  • Acting for Darrell Lea in a series of related matters involving claims of misleading and deceptive conduct over the use of a colour. This involved successfully defending claims in the Federal Court of Australia, Full Federal Court of Australia and High Court of Australia, as well as acting in opposition proceedings at the Trade Mark Office.