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  • Maurice Gonsalves

    Partner
    Sydney
    T: +61 2 9296 2166
    M: +61 419 639 472
 

 Professional Biography

 

  • Maurice Gonsalves is a Partner in the Sydney office where he specialises in intellectual property and technology law. Maurice advises on all aspects of intellectual property law including the strategic protection, enforcement and exploitation of intellectual property rights.

    Maurice represents a number of the world’s leading trade mark and copyright owners in relation to registration, portfolio management, enforcement and anti-counterfeiting strategies.

    Maurice has substantial experience across a range of intellectual property litigation involving trade mark and copyright infringement, patent infringement and revocation, passing off, misuse of confidential information/trade secret and breaches of the Trade Practices Act.

    Maurice has conducted substantial trials as well as applications for urgent interlocutory relief such as obtaining and executing Anton Piller (search and seizure) and Mareva (asset freezing) orders. In the non-contentious field, Maurice’s experience includes drafting, negotiating and advising on all types of IP and IT contracts including technology commercialisation, licensing and distribution agreements. Maurice also advises on the IP aspects of major corporate transactions such as mergers and acquisitions.

    Maurice has been acknowledged in respected international surveys and publications as one of Australia’s leading intellectual property lawyers: Chambers Global Guide, IP Best Lawyers, The International Who’s Who of Trademark Lawyers, Euromoney’s Guide to the World’s Leading Trade Mark Law Practitioners, the Asia Pacific Legal 500 and PLC Which Lawyer.

    Chambers Global 2009 describes Maurice as "one of the leading IP lawyers in Australia for his excellent knowledge base, efficiency and responsiveness" and he is praised by clients and peers for his "highly responsive and sound commercial advice..."
 

 Experience

 
  • 1980: Graduated, Bristol University, England
  • 1982: Legal Studies, College of Law, Guildford
  • 1982 - 1989: Solicitor, McKenna & Co, London
  • 1989: Solicitor, Mallesons Stephen Jaques, Sydney
  • 1992 - present: Partner, Mallesons Stephen Jaques, Sydney
  • Maurice is a regular speaker at national and international conferences on intellectual property and technology law and has delivered papers on topics such as intellectual property enforcement, domain names and trade marks and copyright and the internet.
 

 Recent Matters

 
  • Microsoft Corporation Maurice has acted for Microsoft for over a decade providing strategic intellectual property advice and representing the company in numerous successful landmark cases such as Goodview Electronics (damages award of $1.3 million, one of the largest in Australia for copyright infringement), Business Boost (test case on temporary reproduction and copyright infringement) and PC Club (damages of over $1 million and ground breaking simultaneous Anton Piller and Mareva orders).
  • Starbucks Coffee Company Maurice has acted for leading international coffee retailer Starbucks Coffee Company in trade mark prosecution and enforcement matters for many years. This has included recent successful trade mark infringement proceedings against non-trading company Starbucks Coffee Australia Pty Ltd and a rival Gloria Jeans in relation to the RHUMBA trade mark.
  • Williams v Target Successful in revoking principal claims of a patent for metal alloys for optical storage media and obtaining a significant lump sum award of costs against the patent holder
  • STOLICHNAYA trade mark litigation Maurice and his partner John Swinson are acting for the SPI Group in Federal Court litigation concerning the Stolichnaya trade mark, one of the world’s top vodka brands. It is part of worldwide litigation and is likely to become one of the most significant trade mark cases in Australia.
  • Campbell Soup Company and Arnott’s Biscuits Maurice manages the Australian trade mark portfolio for Campbell’s and the worldwide trade mark portfolio of its subsidiary, Arnott’s, which includes household names such as Campbell Soup, Tim Tam, Tiny Teddy and Sao.
  • Business Software Alliance Maurice has represented the Business Software Alliance in relation to its campaign against software piracy in Australia since its inception in 1989. In that time, the piracy rate has been halved.
 

 Professional Memberships

 
  • Copyright Society of Australia
  • Law Council of Australia
  • Intellectual Property Society of Australia and New Zealand
  • International Trademark Association