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  • Scott Bouvier

    Partner
    Sydney
    T: +61 2 9296 2472
    M: +61 407 894 528
 

 Professional Biography

 
  • Scott Bouvier advises on commercial dealings and disputes with intellectual property and technology. Scott is recognised as a leading IP and TMT lawyer by Australian Legal Business (2009) and as one of the “World's Leading Patent and Technology Transfer Licensing Lawyers” by Intellectual Asset Management magazine (2010 and 2011). Clients describe Scott as always available and prepared to give his opinion.

    Scott's practice includes:

    1. Trade marks and advertising advice to leading brand owners, FMCGs and industrials, including trade mark prosecution/oppositions and advice on advertising campaigns, new product launches, food law and therapeutic goods.
    2. R&D and IP commercialisation transactions for a leading University, a National Research Institution and ANLEC R&D, including R&D funding, research collaborations, patent licensing and start up/VC companies. Recently, Scott's practice has primarily involved low emissions and renewable energy technologies.
    3. IP aspects of M & A and venture capital transactions; franchising advice; and sports transactions involving commercial rights, new sports competitions, sponsorship and sports franchises.

    Scott's litigation background gives him an in-depth insight into what matters when you transact IP and technology. Through his career Scott has acted on a range of leading cases (eg the Barefoot Radler, Kettle Chip and Duff Beer cases), and litigated disputes involving passing off, copyright and trade mark infringement, distribution arrangements and IT system development. Scott recently acted in the first trade mark infringement case in the High Court under the 1995 Trade Marks Act, E&J Gallo v Lion Nathan, involving novel issues of trade mark use. Scott's trade mark expertise led to “NEW” being registered as a trade mark for beer and images of the Sydney Opera House being registered in recognition of its global iconic status.

    Scott is described as "always focused on getting the deal done. Well established at the vanguard of Australian patent and technology licensing, he assisted CSIRO on global licensing agreements for its Ultrabattery technology." (Intellectual Asset Management magazine 2011)

    Scott recently spent 5 years as Partner in Charge of the Sydney Office. This has complemented his legal practice by giving him significant management and leadership experience. Scott is the Chair of the firm's Sydney Pro Bono Committee and a member of Mallesons in the Community Board.

 

 Experience

 
  • 1987: Bachelor of Commerce, University of Queensland
  • 1989: Bachelor of Laws (University medal), University of Queensland
  • 1991: Associate to the Honourable Justice Lockhart, Federal Court of Australia
  • 1990, 1992 - mid 1997, late 1998 - 1999: Mallesons Stephen Jaques, Sydney
  • 1996: Masters of Law, University of Sydney
  • Mid 1997 - mid 1998: Associate, White & Case, New York
  • 2000 - present: Partner, Mallesons Stephen Jaques, Sydney
 

 Recent Matters

 
  • Lion Nathan: on all aspects of its major beer, spirits and wine brands such as Tooheys, XXXX Gold, Boags, Hahn, Petaluma, St Hallets etc including trade marks, advertising, promotions, food laws and sponsorship advice (for over 15 years). Major matters include High Court trade mark litigation with E & J Gallo over the Barefoot wine trade mark; the creation of XXXX Gold Beach Cricket, Six Beers of Separation and The Lab formats; the acquisition or launches of XXXX Summer Bright lager, Hahn Super Dry, James Boag's Pure, McKenna and Inner Circle Rum and sponsorship of the Melbourne Cup, V8 Super Cars and Formula 1.
  • Sydney Opera House: on trade marks, IP and commercial matters including an active ongoing brand protection campaign involving the novel registration of images of the Opera House and over 40 opposition and non use actions in the last 4 years.
  • Colgate Palmolive: on advertising, product claims, therapeutic goods and IP issues over the last 4 years, including a successful challenge which resulted in the TGA registering Colgate Sensitive Pro Relief as a medical device and other TGA CRP challenges.
  • CSIRO: on a range of R&D projects and IP commercialisation transactions over the last 4 years including low emission coal research projects in China, Ultrabattery licensing arrangements, advising on the development of CSIRO's standard patent licence and research agreements, the publication of its "the CSIRO Home Energy Saving Handbook" and start up company creations and exits (eg Smart Storage, T-Mag and ComEnergy). Scott's work for CSIRO spans Low Emissions Coal, Renewable Energies, ICT, Preventative Health, Mining, Metals and Agriculture deals.
  • The University of Sydney/Sydnovate: on IP commercialisation, research and trade mark matters over the last 5 years, including CRCs, clinical trial agreements, ARC Linkage agreements, numerous patent licences, research alliances, spin off company exits and the creation and updating of a suite of standard research, technology transfer and IP commercialisation agreements.
  • ANLEC R&D: this client will provide $150M in funds for R&D in Low Emission Coal Technology over the next 6 years. Scott's work includes acting for ANLEC R&D in its funding agreement negotiations with the Commonwealth and ACA Low Emissions Technology, preparing of a suite of pro forma documents to be used by ANLEC R&D in its future research projects and other general advisory work.
  • World Sports Group: on its sports and commercial rights services agreements for the Singapore Sports Hub.
  • CHAMP: on the IP/franchising aspects of the acquisitions of Australian Temporary Fencing, Alleasing and IES; the IPO of Bradken; and the potential acquisition of Pilkington's Australian operations.
  • Chubb Mobile Services: on the restructure of its mobile patrols network from a franchising system.
 

 Professional Memberships

 
  • Licensing Executives Society of Australia & New Zealand
  • Intellectual Property Society of Australia & New Zealand Inc