Paul Kirton

IP Protection Working with our client to implement IP protection strategy as they developed a new product prior to bringing to market. Paul's engineering background assisted efficient communication of technical aspects.  The protection strategy included brand selection (Trade Mark registrability advice and searching), Trade Mark Registration and registration of the key visible aspects though Design Registration.  We then advised on and drafted Manufacturing Agreement and helped negotiate terms.  Once the product hit the market, it was copied by a competitor.  As a result of the protection strategy, through written demands, we obtained immediate recall of infringing products, catalogues, on-line sales. We also obtained undertakings from the competitor to deliver up for destruction all items, payment of damages on lost sales and legal costs.

Trade Practice Compliance Program Our client imported product that breached a mandatory safety standard. The ACCC discovered and sought wide ranging remedial action, with potential for significant fines. I negotiated an Undertaking with the ACCC, thereby helping the client avoid court action and fines. I developed the product recall strategy to recover or correct the defective products, provided advice on the applicable Standard, and assisted the client conduct the recall. I maintained ongoing contact with ACCC on the progress of the recall.  On an ongoing basis, and as required by the Undertaking, I developed and helped the client implement a Trade Practice Compliance Program, consisting of written and on-line information resources, staff training sessions and programs, revised internal system and procedures and checklists.  I maintain an ongoing advisory role to respond to questions and sign-off on any safety, standard or other trade practices issues.

Managing potential risks and shortcomings Our client with a national import/distribution business and retail outlets were replacing their entire IT systems for stock management, inventory, ordering, wholesale and retail.  I worked with them prior to their due diligence of potential systems to explain the traps and shortcomings that often beset large IT projects - usually involving lack of detail around critical specifications, upfront payments, milestones, acceptance testing and sign-off, scope and cost variations. The client then was clear from the outset their key contractual objectives.  Then I reviewed, advised on and engaged in detailed negotiations of the supplier's contracts to include these key protections and objectives.  The supplier could not meet several key deliverables, so I helped negotiate the "make good" agreement, providing compensation while keeping the ongoing relationship friendly.  Unfortunately, the software ultimately could not provide two of the key fundamental functions required - and included in the contract. While there was some argument about performance, the contractual terms and detail we added assisted the client, when the software provider sued for non-payment and suspended all progress and support.  We pushed for early mediation in the Court process which resolved the situation, with the parties back to working together, while the supplier provided compensation and additional assistance on the missing functionality.

Setting up a franchise An established contract commercial services company approached us to help it become a franchise. Working with their accountants, we helped change the company’s previous administration and liability structure to a franchise model. Along the way, we helped the client sell existing contracts to franchisees, and created the structure to take upfront franchisee payment and collect ongoing royalties and fees for services - without the huge workforce and overheads of the past. The company now boasts more than 300 franchisees and master-franchisees, and I continue to assist with commercial and franchise issues.  M+K continues to assist in the myriad of commercial and franchise issues that arise.  M+K continues to assist in the myriad of commercial and franchise issues that arise.

• Bachelor of Laws
• Bachelor of Engineering (Honours)
• Registered Trade Mark Attorney
• Member, Law Institute of Victoria
• Member, Intellectual Property Society of Australia
• Member, Licensing Executives Society