James Neil
Clayton Utz
Partner
Melbourne
James Neil is highly regarded among peers and clients alike, who commend him for his stellar work on IP rights and related disputes.
– Who's Who Legal
Overview
James is a recognised expert in three areas: intellectual property, commercial dispute resolution and legal issues concerning advertising / marketing.
He protects, enforces and defends IP rights of all kinds. He represents his clients in IP cases before the Federal Court and IP Australia. He also manages some of Australia's most significant trade mark portfolios, protecting his clients' brands both in Australia and overseas.
Outside of the IP sphere, he represents his clients in disputes about contracts, technology projects, cyberattacks, franchising, consumer law, advertising / marketing, restraints of trade, reputation management, fiduciary duties and misuse of confidential information (particularly in an employment context). He has significant experience in cases before the State and Federal courts, and in private arbitrations.
He advises his clients about their advertising and marketing activities. This includes advice on the legality of advertising and marketing campaigns, avoiding liability under consumer protection laws (including regulatory investigations or court action) and responding to complaints made under codes administered by the Australian Association of National Advertisers (AANA).
Notable Work
- IP litigation: represented clients in a very large number of court proceedings and other disputes concerning trade marks, copyright, patents and registered designs. These clients have included Toyota, Monash University, Sportsbet, Accent Group, Spotless Group, Retail Zoo, Swancom (The Corner Hotel), 2XU, The Entourage, Myer, AgBoss, KPM Industries, Kokopod, Step Global and the University of New England.
- General commercial litigation: represented many clients in State and Federal court proceedings and arbitrations. These clients have included Acquire Learning, Fleetwood Limited, Monsanto, ThoroughVisioN Network (TVN), TenCate Protective Fabrics USA, Labelmakers Group, Spanish Doughnuts Franchising, Orion Corporate Advisory Services and various high net worth individuals.
- Trade mark prosecution and portfolio management: assists clients with all areas of trade mark prosecution and portfolio management. These clients include Accent Group (The Athlete's Foot, HYPE DC, Platypus, Glue Store, The Trybe, 4WORKERS and PIVOT), Sportsbet, MYOB, Immutable, Myer, Nuchev Limited (Oli6) and The Entourage. Awarded the Frank Pinkerton Scholarship for Trade Mark Practice, having achieved the highest mark in that subject as part of the Melbourne Law Masters.
- Toyota: acting for Toyota in multiple Federal Court proceedings concerning counterfeit products, trade mark infringement, copyright infringement and misleading conduct.
- Spotless Group: acted for Spotless in Federal Court proceedings alleging trade mark infringement, passing off and misleading conduct against Qantas.
- The Corner Hotel: acted for Swancom (operator of The Corner Hotel) in Federal Court proceedings against McDonald's alleging trade mark infringement in relation to the use of the "CORNER" trade mark.
- The Entourage: defended The Entourage Education Group in Federal Circuit Court proceedings concerning allegations of trade mark infringement.
- Pokemon: defended an Australian company and its director in Federal Court proceedings brought against them by The Pokémon Company International concerning (among other things) Pokémon branded NFTs.
- Kokopod: defended Kokopod and its director in Federal Court proceedings commenced against them by Koko Black.
- Confidential client: acted in Federal Court proceedings for a substantial franchise business alleging trade mark infringement, misleading conduct and breach of a licence agreement.
- Myer: regularly acts for Myer to protect and enforce its intellectual property rights, and to defend allegations of infringement.
- Godfrey Hirst: acted for Godfrey Hirst in Federal Court proceedings against a competitor concerning copyright infringement and misleading conduct.
- AgBoss: acted for AgBoss Group in a Federal Court proceeding against a competitor relating to allegations of copyright infringement, liability under the tort of passing off and contraventions of the Australian Consumer Law.
- KPM Industries: defended KPM Industries in Federal Court proceedings brought against it by a competitor alleging copyright infringement, trade mark infringement and misleading conduct.
- Patents: advised a broad range of clients on patent infringement and validity issues, including in a range of disputes which have settled on confidential terms. His patent experience spans various industries including retail consumer electronics, pharmaceuticals, automotive, mining, manufacturing, IT and fashion, among others.
- Confidential client: acted for a consumer technology company in relation to infringements of its Australian patents by a competitor.
- Patents – computer implemented methods: One of James’ “pet issues” concerns the patentability of computer implemented methods. He has advised many clients (both patentees and alleged infringers) in on these issues and maintains an ongoing interest in the continuing development of the law in this area.
- Acquire Learning: acted for Acquire Learning in Federal Court proceedings against three former employees (and a company they formed) for misuse of confidential information, breach of fiduciary duties, related breaches of the Corporations Act and copyright infringement. This involved obtaining and executing Anton Piller (search) orders and preservation orders.
- Sports industry: acted for and advised various clients in the sports industry on reputation management issues arising from newspaper articles and programs broadcast on national television.
- Leading beverage brand: acted for and advised a leading beverage brand on alleged reputational harm arising from a newspaper article.
- Defamatory tweet: acted for a leading Australian organisation concerning a tweet that was alleged to be defamatory of its management.
- Supreme Court of Victoria – joint venture dispute: acted for the Defendants in Supreme Court of Victoria proceedings concerning a property development joint venture.
- Fleetwood Limited – business sale agreement: acted in Supreme Court of Victoria proceedings concerning sums payable under a business sale agreement.
- IT / software disputes: acted in a range of complex disputes regarding failed IT projects and software licensing issues. His clients in this area have included Federal and State Government departments / agencies, listed companies, utilities providers and successful privately held companies.
- Labelmakers Group: acted for Labelmakers, Australia's largest label producer, in a Federal Court proceeding against five former employees who departed Labelmakers with valuable confidential information and breached fiduciary duties owed to Labelmakers. This proceeding involved Labelmakers obtaining interlocutory injunctions against the five individuals and orders relating to the preservation of crucial evidence.
- Franchising: acted for various franchisors and franchisees in a range of disputes and court proceedings concerning breach of contract, contraventions of the Competition and Consumer Act and the Franchising Code of Conduct.
- Arbitration: acted in various high value private arbitrations, including for a multinational biotech company, a sports media company and a corporate advisory services business.
- Google AdWords / SEO / SEM: acted in a large number of disputes regarding Google AdWords, Search Engine Optimisation and Search Engine Marketing. This includes acting for Toyota in a Federal Court proceeding which involved allegations about the use of Toyota’s trade marks, by a competitor, in Google Ads and within website source code.
- Domain name disputes: regularly advises clients about legal issues concerning domain names, and acts for clients in disputes concerning domain names. He acts for clients in domain name arbitrations under the auDRP / UDRP and has acted in a very large number of Federal Court proceedings concerning domain name issues.
- Social media: regularly advises clients about legal issues arising in the context of social media. This has included acting in many disputes regarding IP infringement, and defamation / reputation management, concerning material posted on social media platforms.
Insights
Birkenstock shows that it is possible to secure trade mark protection over the shape of popular product designs
25 Sep 2024 | Article
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Injunctions against anonymous cyber-hackers: waste of time or worth the trouble?
17 Apr 2024 | Article
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From algorithms to applications: unpacking PayPal's AI patent refusal
24 Nov 2023 | Article
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Reputation and consumer confusion in trade mark infringement proceedings: the High Court weighs in
16 Mar 2023 | Article
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Fake websites on the rise: what to do when fraudsters imitate your business
21 Dec 2022 | Article
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Two Bored Apes walk into an NFT marketplace… and test the limits of intellectual property rights
15 Nov 2022 | Article
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Better be quick! Deadline to make a priority application for a corresponding .au direct domain name is 20 September 2022
31 Aug 2022 | Article
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Legislation needed on patentability of computer-implemented inventions, after High Court divided in rare 3:3 judgment
18 Aug 2022 | Article
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Suspect your supplier is infringing copyright? Take action or Biggin trouble might be coming your way
18 Aug 2022 | Article
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I’m in love with the shape of my copyright protection: lessons from Ed Sheeran's recent court victory
28 Apr 2022 | Article
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Digital Apes, Metaverse Land and Crypto-Nike Kicks: Demystifying NFTs and intellectual property challenges
3 Mar 2022 | Article
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Media Release: Clayton Utz promotes 7 to the partnership on 1 January 2022
9 Dec 2021 | Media Release
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Australian domain name rules about to change. Are your trade mark ducks in a row?
18 Feb 2021 | Article
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The race for the COVID-19 vaccine and patents: Do we need a temporary lockdown?
25 Jun 2020 | Article
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Don’t put a mask on your trade marks: how to protect your brand during the COVID-19 pandemic
14 May 2020 | Article
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Media Release: Legal industry peers rate Clayton Utz highly in the latest Best Lawyers Australia list
29 Mar 2019 | Media Release
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Evicting cybersquatters: what to do when someone registers your brand as a domain name
27 Sep 2018 | Article
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Code crackdown: ACCC recommends big reforms to Franchising Code of Conduct
7 Jun 2018 | Article
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Fair shake of the source bottle - Full Federal Court confirms trade mark use in source code can be trade mark infringement
6 Jul 2017 | Article
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Alice Through the (Australian) Looking Glass: Australia follows US on computer-implemented methods
27 Nov 2014 | Article
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Confidential information and departing employees - the threat from within
1 Aug 2013 | Article
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