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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 secrets and breaches of Australian Consumer Law.

    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. 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.

    According to Chambers Global 2012, "Maurice Gonsalves is one of the most recognised names in this market. He acts out of the Sydney office and has particular expertise in technology law and an exceptional track record on litigation cases.”

 

 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 - 2012: Partner, Mallesons Stephen Jaques, Sydney
  • 2012 - current: Partner, King & Wood Mallesons, 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

 
  • Maurice successfully represented the Australian Football League, National Rugby League and Telstra Corporation in the high-profile Federal Court proceedings against Optus and its parent company, Singtel Optus, for infringement of copyright in relation to Optus’ TV Now service. The case concerned Optus’ provision of its “TV Now” subscription service which allows subscribers to record and play back free-to-air television programmes (including AFL and NRL games).
  • Maurice has successfully represented the Woolworths Group in two recent trade mark/trade dress injunction applications: the defence against Organic Marketing in relation to the use of the name “Honest to Goodness”, and the defence of its new joint venture business, Masters, against a claim by rival, Mitre 10, relating to its choice of colour scheme.
  • Maurice acted for the Campari Group, owner of the “Wild Turkey” brand, in a successful appeal to the Full Federal Court, which ordered that the trade mark “Wild Geese” be removed from the Australian Register.
  • Maurice and partner John Swinson are acting for the SPI Group in Federal Court litigation against the Russian Government 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.
  • Maurice has acted for Microsoft in a number of 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).
 

 Professional Memberships

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