Roanne De Menezes

Special Counsel, Lawyer & Trade Marks Attorney

Roanne manages large multi-national trade mark portfolios for a number of well-known brand owners across a range of industries including retail, fashion and luxury brands, food and beverage, building, oil and gas, chemicals, fast moving consumer goods and biotech.

Her broad expertise and in-depth knowledge of trade mark law and related rights enables her to articulate complex concepts and draft clear and concise advice and agreements.

Roanne focuses on providing a personalised, quality service tailored to her clients’ particular requirements. Her experience includes providing strategic advice on trade mark availability, prosecution of trade marks internationally, contentious proceedings nationally and overseas, trade mark filing strategies and handling of enforcement issues.

Roanne regularly publishes on trade mark cases and delivers in-house training modules to businesses and to corporate counsel groups, on trade marks and related rights.

EXPERTISE
  • International trade mark prosecution and portfolio management
  • IP due diligence
  • Freedom to use and/or register advice
  • Trade mark advice (contentious and non-contentious)
  • Anti-counterfeiting campaigns and Court actions, including training of Customs
  • Infringement advice and Court actions
  • Opposition actions, locally and overseas
  • Removal actions, locally and overseas
  • Drafting of trade mark agreements
  • Trade mark portfolio reviews
  • Trade mark filing strategy advice, including international filing strategies
  • Preparing marketing and trade mark guidelines for business
  • Packaging and labelling advice
  • Arranging monitoring services (competitor watches, worldwide watches, specific mark watches)
EXPERIENCE
  • Managing all aspects of the national and international trade mark portfolios of a major fashion group (comprising three major national brands), inclusive of pre-filing ‘freedom to register’ and ‘freedom to operate’ searches, preparing of filing strategies, international prosecution of trade mark cases, and handling of contentious and non contentious matters.
    Managing the successful overseas Asian filing program for a major confectionery manufacturer and distributor, including preparation of filing strategy, pre-filing advice and prosecution of all cases.
  • Handling major international trade mark filing programs for an international diagnostics company, and its related entities.
  • Successfully opposing a bad faith trade mark squatter in Korea for a well-known sunglasses manufacturer, including handling of all appeals until rejection of the offending mark.
  • Acting in major rebranding project for a significant Australian airport, including prosecution of full portfolio or revised brands.
  • Acting for a leading Australian equipment manufacturer in a national trade mark awareness and enforcement campaign.
    Conducting anti-counterfeiting campaigns for a number of luxury brand clients, including Federal Court actions, Customs seizure and Customs training.
Qualifications

Registered Trade Marks Attorney (Australia)

Bachelor of Laws (First Class Honours), Monash University

Bachelor of Arts, Monash University

MEMBERSHIPS

International Trademark Association (INTA)

Intellectual Property Society of Australia and New Zealand (IPSANZ)

The Institute of Patent and Trade mark Attorneys of Australia (IPTA), Ordinary

Beyond the Desk

Roanne has a keen interest in all things creative, from fine art and photography, to literature and art house films.