Felicity Ann
Marks
BA LL B
Profile: Career Overview
- Extensive practice in Intellectual Property, Trade Practices and Information
Technology for over 19 years.
- Substantial practice experience in commercial litigation in Australia;
worked at Herbert Smith, London.
- Over 8 years as a Partner at Phillips Fox (now DLA Phillips Fox) in the
Intellectual Property, Trade Practices and Technology Group. Advising clients
primarily in the fashion, toy, greeting card, confectionary and technology
industries as well as advising government and Statutory Authorities.
- Now principally in the Federal Court and the Supreme Court of Victoria and
the Trade Marks Office.
- Admission to the Victorian Bar - May 2005.
Intellectual Property Experience and Related Areas
- 14 years experience in intellectual property as a practitioner in major law
firms.
- Following admission to the Bar, retained in relation to a number of
Intellectual Property cases in the Federal Court (Fast Track and General
Division) and the Trade Marks Office.
- Retained to advise on and appear in :
trade mark matters including infringement, validity claims, opposition
proceedings, non-use applications, rectification claims, ownership claims,
parallel importation and unjustified threats.
patent matters (standard and innovative patents) mechanical, chemical and
pharmaceutical, including infringement of patents, validity claims and
amendment claims.
matters involving infringement and validity of designs (various types of
packaging), infringement of copyright and breach of confidential information
and fiduciary duties.
Trade Practices Experience
- Mainly Part V litigation in the Federal Court.
- Recent work has been in proceedings in the Federal Court (General Division
and Fast Track List), in relation to contravention of Part V of the Trade
Practices Act and infringement of the Trade Marks Act.
- Comprehensive advice and drafting experience in relation to both Parts IV
and V of the Trade Practices Act 1974.
- Drafting and preparation of Trade Practices compliance manuals for national
corporations.
- Presentation of numerous Trade Practices seminars and compliance workshops
for national corporations at board level as well as at National and State
management level and Statutory Authorities.
Interlocutory Applications
Involvement in interlocutory applications in the Federal Court including:
- involvement in obtaining and overseeing execution of Anton Piller orders
(search orders), John Doe (unnamed infringer) seizure applications and
interlocutory injunctions;
- applications for abridgment of time, further discovery and third party
discovery;
- applications for summary judgment and for dismissal of proceedings against
corporations and/or directors for abuse of process;
- applications for customs seizures, applications to set aside subpoenas; and
- applications in relation to breach of undertakings and breach of Anton
Piller (search) orders.
Technology/IT and Other Experience
- Comprehensive advice and drafting of commercial contracts including all
types of technology, including licences and major IT outsourcing contracts for
State Government, Statutory Authorities and corporations.
- Advising on major IT and general contractual disputes including systems
integration agreements and outsourcing agreements.
- Advising on breach of fiduciary duty, the franchising code of conduct,
franchise agreements, supply and distribution agreements and licences and domain
name disputes.
- Alternative Dispute Resolution and running numerous motor vehicle cases and
commercial matters in the Magistrates' Court.
Memberships
Member of IPSANZ and the Copyright Society. Past committee member and former
Treasurer of IPSANZ.
Government Rate
Approved government rate.
October 2010