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  • Natalie Hickey

    Partner
    Melbourne
    T: +61 3 9643 4156
    M: +61 419 127 423
 

 Professional Biography

 
  • Natalie Hickey is a partner of the firm located in the Melbourne centre. She has a broad litigation practice, encompassing general contractual disputes, multi-jurisdictional matters, and technology claims.

    Described as a "high profile copyright and trade mark litigator" (ALB - Intellectual Property 2009), and as "proactive, commercially oriented and client-focussed" (Chambers Asia-Pacific 2012). Natalie also has expertise in managing reputational issues for clients (media and marketing, defamation, confidential information and the like). The changing nature of the law in a global digital economy is also of particular interest. This includes the role of marketing via the Internet, social media issues, and database protection.

    Natalie is a leading individual in IP (Best Lawyers Australia 2010-2012).

    Natalie has acted in landmark cases for clients such as Cadbury, Telstra and Sensis. These have included Federal Court proceedings concerning 'Cadbury purple' against Darrell Lea, and continuing litigation about the subsistence of copyright in the White Pages and Yellow Pages directories. Natalie is also currently acting in a Federal Court passing off case for an online market leader.

    Natalie has also acted in disputes relating to sporting organisations. She manages contentious issues in relation to talent contracts and sponsorship arrangements.

    Natalie has a Masters degree in media and telecommunications law. Natalie is an arbitrator of auDA domain name disputes. She helps manage the trade marks practice in the Melbourne centre.

 

 Experience

 
  • 1992: Bachelor of Arts and Bachelor of Laws (Hons), University of Melbourne
  • 1993: Articled Clerk, Arnold Bloch Leibler, Melbourne
  • 1994: Admitted to practice as a solicitor
  • 1995 - 1998: Solicitor, Mallesons Stephen Jaques, Melbourne
  • 1998 - 2004: Senior Associate, Mallesons Stephen Jaques, Melbourne
  • 2000 : Master of Laws (Media & Telecommunications Law), University of Melbourne
  • 2005 - present: Partner, Mallesons Stephen Jaques, Melbourne
  • Natalie is the editor of 'IP Whiteboard', Mallesons' IP blog. She also publishes regularly in mainstream media such as The Age and National Times on topical legal issues.
 

 Recent Matters

 
  • for FTI in Federal Court proceedings concerning the termination of a distribution agreement about 'Ringtail' software rights in the Asia-Pacific region
  • for REA in Federal Court proceedings concerning, amongst other things, protection of the realestate.com.au brand name
  • for Telstra / Sensis in Federal Court proceedings, and a current High Court special leave application, against Phone Directories Company (a regional directories operator) for copyright infringement of the White Pages and Yellow Pages directories, as well as breach of section 52 Trade Practices Act and passing off
  • for Cadbury Schweppes in Federal Court proceedings against Darrell Lea Chocolate Shops concerning use of the colour purple
  • for Carlisle Homes defending copyright infringement claims in the Federal Court brought by Porter Davis in relation to house plans
  • for Tabcorp in a dispute with a sporting organisation about gaming issues
  • for Telstra in Federal Court proceedings against Premier Media Group (the proprietor of Fox Sports) and News Digital Media for breach of copyright arising from the unauthorised use of National Rugby League Match footage on the Internet and over mobile phones
  • for Cadbury Schweppes defending Federal Court proceedings brought by Wrigley for patent infringement in relation to Cadbury's 'Trebor 24-7' sugarless chewing gum, succeeding in revoking Wrigley's patent
  • LEADR Panelist for auDA dispute resolution scheme [domain name disputes determined: 12/11/04 campertrailerswa.com.au, 31/01/06 airtowel.com.au, 19/01/07 adjustit.com.au, adjustit.net.au, 17/07/07 3Mlittmann.com.au, littmannstethoscopes.com.au, 21/11/08 justbikes.com.au, 4/08/10 sportingshooter.com.au]
 

 Professional Memberships

 
  • International Trademark Association
  • Copyright Society of Australia
  • Intellectual Property Society of Australia & New Zealand
  • LEADR (Association of Dispute Resolvers)
  • LEADR panelist for auDA dispute resolution scheme
  • President - Cottage by the Sea