Joy Atacador

Principal, Lawyer & Trade Marks Attorney

Joy is recognised as a leading Australian intellectual property litigation lawyer. She has extensive experience in contentious matters involving patents, trade marks, designs, copyright, passing off, misleading conduct, unjustified threats and misuse of confidential information.

Joy acts for high profile consumer goods businesses, ensuring they are well protected and receive decisive, incisive and pragmatic enforcement and dispute resolution advice.

EXPERTISE
  • IP disputes, litigation and mediation
  • Anti-counterfeiting and enforcement strategies for IPR holders
  • Trade mark infringement, opposition, non-use and rectification
  • Infringement of copyright and moral rights
  • Patent infringement and revocation
  • Design infringement and revocation
  • Misuse of confidential information
  • Co-existence and Settlement Agreements
  • Trade mark portfolio management
  • Clearance of brands, packaging, advertising and marketing campaigns
  • Parallel importation issues
  • Domain name disputes
  • IP risk management and social media training for businesses
EXPERIENCE
  • A successful landmark appeal to the Federal Court of Australia from the decision of a Delegate of the Commissioner of Patents concerning the patentability of computer-implemented inventions, subsequent appeal to the Full Court of the Federal Court of Australia and application for special leave to appeal to the High Court of Australia.
  • The first Full Court of the Federal Court of Australia case to judicially consider the right to terminate a global patent portfolio licence agreement after the expiry of licensed Australian patents.
  • Trade mark infringement, misleading conduct and passing off proceedings in the Federal Court of Australia for a well known fashion retailer.
  • Trade mark and design infringement proceedings in the Federal Court of Australia which involved maintenance of Customs seizures, obtaining urgent interlocutory injunctive relief through to successful final judgments for a famous fashion accessory brand.
  • Defeating an urgent interlocutory injunction application in respect of misleading and deceptive conduct and ‘product get-up’ passing off allegations relating to the designs of motor vehicle accessories.
  • A successful appeal to the Federal Court of Australia from a decision of the Australian Trade Marks Office for a manufacturer of components supplied to the telecommunications sector.
  • A successful opposition proceeding before the Designs Office for a leading motor vehicle company in relation to a compulsory licence application in respect of registered designs.
  • Overseeing extensive discovery of documents in high profile multi-jurisdictional pharmaceutical patent infringement and revocation actions.
QUALIFICATIONS

Australian Lawyer admitted to practice in the Supreme Court of Victoria and entered on the High Court of Australia Register of Practitioners

Registered Trade Marks Attorney (Australia)

Bachelor of Laws, Monash University

Bachelor of Arts, Monash University

Patent Law, Masters Course Subject, University of Melbourne

MEMBERSHIPS

International Trademark Association (INTA)

Intellectual Property Society of Australia and New Zealand (IPSANZ)

Beyond the Desk

Joy is a musical theatre devotee, a film buff and she enjoys thought provoking literature.

 

Awards

2017, 2016, 2015 & 2013 Doyle's Guide

Leading Trade Mark Lawyer, Recommended Patent Litigation Lawyer, Recommended Copyright & Soft IP Lawyer, Victoria

2017, 2016 & 2015 Best Lawyers

For Intellectual Property Law

2016 & 2015 IAM1000

The World's Leading Patent Professionals

2016, 2015 & 2014 Managing IP

IP Stars Trade Mark Star and Patent Star

2016 Euromoney's Expert Guides

World’s Leading Trade Mark Practitioners