Rebecca Smith

Special Counsel
Sydney

Biography

Rebecca is a special counsel in our Intellectual Property group.

Rebecca acts for a range of Australian and international clients in IP-intensive industries on their key strategic IP commercialisation, brand protection and enforcement matters.

She has particular expertise in the media and entertainment, luxury brands, FMCG and new technology sectors and in multinational issues.

On the commercial side, her clients benefit from her extensive experience advising on all types of IP-related agreements and transactions. This includes joint ventures for developing and commercialising new technologies, as well as complex IP licensing.

On the brand protection and enforcement side, Rebecca has designed and led innovative market enforcement campaigns for rights holders tackling counterfeits and lookalikes in Australia. She has also managed IP and contract litigation at the trial and appellate level across multiple courts, including the High Court of Australia, the Full Federal Court, the NSW Court of Appeal, the Federal Court, the Federal Circuit and Family Court, the NSW Supreme Court and the Copyright Tribunal of Australia. Additionally, she has experience in ICC international arbitration.

Reflecting her significant experience in copyright law, Rebecca is a member of the Management Committee of the Copyright Society of Australia.

After obtaining her legal qualifications at the University of Sydney, Rebecca trained at a Magic Circle law firm in London, where she spent time on secondment at a major international computer entertainment company and in Paris.

Experience

Rebecca’s experience includes advising:

  • UNSW on multiple priority IP commercialisation matters, including joint ventures to leverage its quantum computing expertise (Diraq and Silicon Quantum Computing) and on the establishment of the National Centre for Excellence in Intellectual Disability Health.

  • Tivan Limited on a long-term partnership with CSIRO, including a patent licence agreement with CSIRO to facilitate development and commercialisation of the minerals processing technology TIVAN+.

  • Bell Shakespeare and Opera Australia on key commercial agreements.

  • Australian beauty company Self Care Corporation in its successful appeals to the High Court in a trade mark and Australian Consumer Law dispute with the maker of Botox (Allergan). This is the first trade mark case in the HCA since 2014.

  • Several leading European luxury houses on market investigations in Australia and enforcement strategies to deal with high quality lookalike products, including Federal Court litigation.

  • Self Care in major anti-counterfeiting actions brought against numerous companies and individuals concerning counterfeit eye cream and breach of distribution arrangements for cosmetics.

  • iNova Pharmaceuticals on anti-counterfeiting litigation regarding its Dermatix scar gel cream, resulting in negotiated settlements, judgments, and substantial compensation from non-participants.

  • The major motion picture studios on key copyright enforcement and lobbying activity.

  • Universal Music Australia on IP and licensing issues, and a major joint venture dispute involving contract, corporate governance, copyright, royalty and distribution fee matters.

  • Phonographic Performance Company of Australia (PPCA), the record industry’s collecting society, on IPTV licensing issues, and Copyright Tribunal proceedings.

Awards

  • Doyle’s Guide 2023

    Intellectual Property & TMT Law ‘Rising Star’