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Chris McLeod leads our Melbourne IP & Technology team and has been a highly successful partner in that practice for over 20 years.

Chris acts in contentious and non-contentious matters across the entire IP spectrum. He also has significant expertise in relation to competition- and consumer law-related matters.

On the contentious front, Chris assists clients resolve disputes including in relation to infringement of trade marks and copyright, breaches of confidence and concerning allegations of passing off and contraventions of the Competition and Consumer Act. Chris has significant experience litigating such disputes, typically in the Federal Court of Australia. Related to the above, Chris assists clients with:

  • dealing with regulators, including the ACCC, concerning alleged contraventions of the Australian Consumer Law (including in responding to requests for information and documents and in defending Federal Court proceedings);
  • IT- and technology-related transactions and disputes;
  • protecting their businesses against the damage caused by departing employees who misuse trade secrets and breach fiduciary and relevant statutory duties; 
  • legal issues and disputes which arise in the context of domain names, social media and the Internet more generally; and
  • all aspects of trade mark prosecution work, including conducting trade mark infringement/clearance searches, filing and prosecuting Australian and overseas trade mark applications and conducting trade mark opposition and non-use cancellation actions.

Chris leads our national Advertising and Marketing Law industry group and works with a team of lawyers to provide a one-stop shop for legal issues in the advertising and marketing context. His relevant experience includes advising on the legality of advertising copy, conducting litigation relating to misleading or deceptive advertisements (including in the context of comparative advertising) and drafting and negotiating significant sponsorship-, advertising- and marketing-related agreements. This work is often in the context of the sports, leisure and entertainment industries.

Finally, Chris has also developed a strong practice in the media rights field, particularly advising thoroughbred racing authorities and clubs throughout Australia in relation to various IP and contractual disputes.

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Expertise

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Intellectual Property

  • Toyota Australia: Chris and his team provide a full brand protection service for Toyota in the Australian market. This includes managing Toyota Australia's trade mark portfolio, and monitoring and taking action against, sellers of counterfeit Toyota and Lexus parts and accessories and those who otherwise infringe Toyota's trade marks. Where an acceptable out-of-court settlement cannot be achieved, Chris represents Toyota in Federal Court proceedings against such parties (with there being 2 such proceedings in the last year).
  • Toyota Australia: currently acting for Toyota in Federal Court proceedings against the operators of the Private Fleet business. That business provides retail and brokerage services in respect of motor vehicles. In those proceedings, Toyota alleges that the Respondents are infringing Toyota's TOYOTA and LEXUS trade marks on Private Fleet's websites, via the use of domain names (toyotadiscounts.com.au and lexusdiscounts.com.au), within Google, Bing and Yahoo search engine advertisements and within the source code of Private Fleet's websites. Toyota is also alleging infringement of its copyright in certain vehicle photographs.
  • adidas Australia: Chris is the principal legal adviser to adidas Australia, advising it in relation to a wide variety of commercial agreements including sponsorships, advertising agency agreements, arrangements with retailers, website and promotional agreements. He also works with adidas in relation to IP and other disputes.
  • Spotless Group:  Chris acted for Spotless in a Federal Court proceeding alleging trade mark infringement, passing off and misleading conduct against Qantas.
  • 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 included Labelmakers obtaining interlocutory injunctions against the five individuals and orders relating to the preservation of crucial evidence.
  • Swancom: acted for the operator of the famous The Corner Hotel in Melbourne in a Federal Court trade mark infringement proceeding against McDonald's.
  • 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.
  • ThoroughVisioN: acted for TVN (and the VRC and the Seven Network) in Federal Court copyright infringement proceedings in the Federal Court against Sky Channel relating to the use of TVN content in Sky Channel review programs – which proceeding was subsequently settled.
  • Victoria Racing Club: acted in various disputes (including Federal Court proceedings) which resulted in the VRC securing crucial "Melbourne Cup"-related domain names previously held by third parties, including www.melbournecup.com and www.melbournecup.com.au – those third parties were either wagering providers or persons who had advertising/profit share arrangements with wagering providers.

See Intellectual Property

Trade Marks

  • Trade Mark Prosecution: Chris is responsible for the trade mark prosecution and brand protection practice in Melbourne. Clients of this practice include Toyota Australia, Monash University, 2XU, Saputo Dairy Australia, Myer, RACV, Emerald Foods, Giant Bicycles, Retail Zoo (owner of Boost Juice and other businesses), Fruit of the Loom/Russell Corp, Victoria Racing Club and the Melbourne Racing Club. The practice also works closely with overseas firms in relation to both inbound and outbound work. It undertakes the full range of trade mark prosecution and brand protection activities in Australia and overseas, including filing and prosecuting trade mark applications, conducting opposition proceedings and cancellation applications, advising regarding trade mark co-existence arrangements and conducting anti-counterfeiting and infringement campaigns.
  • Toyota Australia: Chris has for over 20 years provided Toyota with advice concerning trade mark and related (including consumer law) matters. Chris and his team provide a full brand protection service for Toyota in the Australian market. This includes managing Toyota Australia's trade mark portfolio, and monitoring and taking action against, sellers of counterfeit Toyota and Lexus parts and accessories and those who otherwise infringe Toyota's trade marks. Where an acceptable out-of-court settlement cannot be achieved, Chris represents Toyota in Federal Court proceedings against such parties (with there being 2 such proceedings in the last year).
  • Toyota Australia: currently acting for Toyota in Federal Court proceedings against the operators of the Private Fleet business. That business provides retail and brokerage services in respect of motor vehicles. In those proceedings, Toyota alleges that the Respondents are infringing Toyota's TOYOTA and LEXUS trade marks on Private Fleet's websites, via the use of domain names (toyotadiscounts.com.au and lexusdiscounts.com.au), within Google, Bing and Yahoo search engine advertisements and within the source code of Private Fleet's websites. Toyota is also alleging infringement of its copyright in certain vehicle photographs.
  • Monash University (Australia's largest University by student numbers): Chris and his team manage the University's worldwide trade mark portfolio, which includes both the University’s core brands and the brands used in global programs like the World Mosquito Program. They also act for the University in relation to trade mark and consumer law-related disputes. For example, Chris acted for the University in a Federal Court proceeding against multiple parties including allegations of misleading conduct as to the development of the low FODMAP diet (created by a team at the University) and the claim that a competing low FODMAP food certification program is government approved. The same proceeding also sought to prevent unauthorised use of the University’s confidential data about the amount of FODMAPs contained in a wide range of foods.
  • Spotless Group: Chris acted for Spotless in a Federal Court proceeding alleging trade mark infringement, passing off and misleading conduct against Qantas.
  • Victoria Racing Club: acted in various disputes (including Federal Court proceedings) which resulted in the VRC securing crucial "Melbourne Cup"-related domain names previously held by third parties, including www.melbournecup.com and www.melbournecup.com.au – those third parties were either wagering providers or persons who had advertising/profit share arrangements with wagering providers.

See Trade Marks

Copyright

  • ThoroughVisioN: key adviser to TVN from its inception in relation to the acquisition of media rights for Victorian and Sydney thoroughbred racing and in licensing such rights to Sky Channel, Telstra, Foxtel and Austar. Also acted for TVN in Federal copyright infringement proceedings in relation to the unauthorised use of TVN's audiovisual coverage.
  • Racing Victoria: prior to the introduction of legislation protecting race fields, acted for RVL (and RISA) extensively in relation to the existence of copyright in race fields and threatened legal proceedings against various wagering providers, including Betfair. 
  • 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.

See Copyright

Advertising and Marketing

  • Sponsorships: Chris has market leading expertise in relation to negotiating and structuring sponsorship and endorsement arrangements, having acted in such matters for over 20 years. By way of example only, he has acted for Toyota Australia in relation to its most significant sponsorship arrangements over many years including its naming rights arrangement with the Australian Football League and its sponsorship of Cricket Australia, acted for CUB in relation to a $100 million dollar sponsorship of the AFL and acted for Metricon in relation to a naming rights arrangement concerning Metricon Stadium on the Gold Coast.
  • Australian National Preventive Health Agency (a statutory authority within the Federal Health and Ageing portfolio): advised in relation to the implementation of the $25 million government sponsorship program to provide an alternative to alcohol sponsorship in sport. This work included advising on, drafting and negotiating sponsorship agreements between the Agency and 13 national sports organisations (including Football Federation Australia, Netball Australia and Basketball Australia).
  • Toyota Australia: Chris has for over 20 years worked with Toyota in relation to many legal agreements and issues (including disputes) in the context of advertising and marketing.
  • adidas Australia: Chris has been the principal legal adviser to adidas Australia for over 20 years, advising it in relation to a wide variety of commercial agreements including sponsorships, advertising agency agreements, arrangements with retailers, website and promotional agreements.
  • Department of Defence: preparing and negotiating agreements for various Defence Force Recruiting sponsorships including with the Australian Football League and the Women's National Basketball League. Chris also advised Defence Force Recruiting on various intellectual property and privacy matters including in relation to the defencejobs.gov.au website and CD-ROMs used for training purposes.

See Advertising and Marketing

Australian Consumer Law

  • Consumer guarantee expertise: Chris has very significant expertise in advising clients (including Toyota Australia, adidas Australia & 2XU) in relation to the non-excludable consumer guarantees in the Australian Consumer Law. This includes advice concerning the interaction between such guarantees and voluntary warranties against defects and the importance of not misleading consumers at to their legal rights.
  • ACCC/regulator investigations & disputes: Chris and his team have significant experience in dealing with regulators, including the ACCC, concerning alleged contraventions of the Australian Consumer Law and other legislation (including in responding to requests for information and documents, the examination of individuals and in defending Federal Court proceedings). For example, Chris acted for Acquire Learning in Federal Court proceedings brought by the ACCC alleging misleading or deceptive conduct and unconscionable conduct in relation to marketing activities.
  • Spotless Group:  Chris acted for Spotless in a Federal Court proceeding alleging trade mark infringement, passing off and misleading conduct against Qantas.
  • Southern Mills, Inc (t/as TenCate Protective Fabrics USA): acted for Southern Mills in a Federal Court proceeding against Bruck Textiles arising from misleading statements made by Bruck about products produced by Southern Mills. This proceeding resulted in favourable undertakings to the Court being obtained on an interlocutory basis and the matter being resolved on favourable terms to Southern Mills.
  • Monash University: acted for the University in a Federal Court proceeding against multiple parties including allegations of misleading conduct as to the origin of the low FODMAP diet (created by a team at the University).

See Australian Consumer Law

Litigation and Dispute Resolution

  • Toyota Australia: Chris and his team provide a full brand protection service for Toyota in the Australian market. This includes managing Toyota Australia's trade mark portfolio, and monitoring and taking action against, sellers of counterfeit Toyota and Lexus parts and accessories and those who otherwise infringe Toyota's trade marks. Where an acceptable out-of-court settlement cannot be achieved, Chris represents Toyota in Federal Court proceedings against such parties (with there being 2 such proceedings in the last year).
  • Toyota Australia: currently acting for Toyota in Federal Court proceedings against the operators of the Private Fleet business. That business provides retail and brokerage services in respect of motor vehicles. In those proceedings, Toyota alleges that the Respondents are infringing Toyota's TOYOTA and LEXUS trade marks on Private Fleet's websites, via the use of domain names (toyotadiscounts.com.au and lexusdiscounts.com.au), within Google, Bing and Yahoo search engine advertisements and within the source code of Private Fleet's websites. Toyota is also alleging infringement of its copyright in certain vehicle photographs.
  • ACCC/regulator investigations & disputes: Chris and his team have significant experience in dealing with regulators, including the ACCC, concerning alleged contraventions of the Australian Consumer Law and other legislation (including in responding to requests for information and documents, the examination of individuals and in defending Federal Court proceedings). For example, Chris acted for Acquire Learning in Federal Court proceedings brought by the ACCC alleging misleading or deceptive conduct and unconscionable conduct in relation to marketing activities.
  • Monash University: acted for the University in a Federal Court proceeding against multiple parties including allegations of misleading conduct as to the origin of the low FODMAP diet (created by a team at the University).
  • Spotless Group:  Chris acted for Spotless in a Federal Court proceeding alleging trade mark infringement, passing off and misleading conduct against Qantas.
  • Racing Victoria: acted for RVL in a Federal Court trade mark infringement proceeding in 2018/19 against Playup Interactive and other parties concerning their infringing use of bestbet.com.au and the operation of their Best Bet website. Prior to race fields legislation, also advised RVL (and RISA) extensively in relation to the existence of copyright in race fields and threatened legal proceedings against various wagering providers, particularly Betfair.
  • 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 included Labelmakers obtaining interlocutory injunctions against the five individuals and orders relating to the preservation of crucial evidence.
  • Southern Mills, Inc (t/as TenCate Protective Fabrics USA): acted for Southern Mills in a Federal Court proceeding against Bruck Textiles arising from misleading statements made by Bruck about products produced by Southern Mills. This proceeding resulted in favourable undertakings to the Court being obtained on an interlocutory basis and the matter being resolved on favourable terms to Southern Mills.
  • ThoroughVisioN: acted for TVN (and the VRC and the Seven Network) in Federal Court copyright infringement proceedings in the Federal Court against Sky Channel relating to the use of TVN content in Sky Channel review programs – which proceeding was subsequently settled.
  • Victoria Racing Club: acted in various disputes (including Federal Court proceedings) which resulted in the VRC securing crucial "Melbourne Cup"-related domain names previously held by third parties, including www.melbournecup.com and www.melbournecup.com.au – those third parties were either wagering providers or persons who had advertising/profit share arrangements with wagering providers.
  • Swancom: acted for the operator of the famous The Corner Hotel in Melbourne in a Federal Court trade mark infringement proceeding against McDonald's.
  • 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.
  • adidas Australia: Chris has the principal legal adviser to adidas Australia for over 20 years and has acted for adidas in relation to various contractual, intellectual property and other disputes.
  • Confidential arbitration: acted in a significant arbitration proceeding concerning the interpretation of various aspects of a media rights agreement.

See Litigation and Dispute Resolution

Telecommunications, Media and Technology

  • Racing.com: advises in relation to the acquisition and licensing of thoroughbred media rights including in securing media rights to South Australian racing and rights from the Ten Network in relation to the four days of the Melbourne Cup Carnival. Chris has also advised RDC in relation to wagering partner agreements, licence agreements and various other commercial arrangements and legal issues.
  • Racing Victoria: advised RVL over many years in relation to media rights and intellectual property-related issues, disputes and commercial agreements in the context of Victorian thoroughbred racing. For example, advised in relation to the establishment of TVN (then Racing Victoria Media) – this involved initially the aggregation of Victorian media rights and then extensive negotiations with the Sydney metro clubs to secure their involvement in the face of "first and last rights" obligations owed to Sky Channel. Also advised RVL on its long term services agreement with Telstra, involving the design and implementation of a new IP-based network (based on Telstra's DVN2 product) across multiple RVL sites, the provision of digital video network services and associated support services.
  • ThoroughVisioN: key adviser to TVN from its inception in relation to the acquisition of media rights for Victorian and Sydney thoroughbred racing and in licensing such rights to Sky Channel, Telstra, Foxtel and Austar. Also acted for TVN in Federal copyright infringement proceedings in relation to the unauthorised use of TVN's audiovisual coverage.
  • Melbourne Racing Club: acted for MRC in relation to the restructure of TVN in late 2012/early 2013 – including negotiating a new shareholders' agreement and media rights agreement – other parties included RVL, the other Victorian clubs, Racing NSW and the ATC.
  • Victoria Racing Club: acted in various disputes (including Federal Court proceedings) which resulted in the VRC securing crucial "Melbourne Cup"-related domain names previously held by third parties, including www.melbournecup.com and www.melbournecup.com.au – those third parties were either wagering providers or persons who had advertising/profit share arrangements with wagering providers.
  • Tasracing: advised in relation to the licensing and exploitation of Tasmanian thoroughbred, harness and greyhound media rights (including on arrangements with relevant clubs and agreements with Sky Channel).
  • Perth Racing: advised in relation to thoroughbred arrangements with Tabcorp/Sky Channel (particularly concerning domestic and international media rights).
  • Victorian Government Infrastructure: advised the State on IP and technology issues associated with major toll road projects in Victoria, including CityLink, EastLink, the proposed East West Link and the proposed Western Distributor Project.
  • Department of Health and Human Services: advised on the refresh of production, UAT and DR environments supporting DHHS's housing support systems. The project involved the design and implementation of new environments and the migration of existing data and systems to those new environments. This matter involved the preparation of contract documentation, advising on key legal risk issues and risk mitigation strategies and contract negotiations and close.
  • East West Link (Linking Melbourne Authority): advising on IP and IT aspects of project documentation in relation to the design and implementation of Melbourne's proposed East West Link.

See Telecommunications, Media and Technology

Leisure and Entertainment

  • Sponsorships: Chris has market leading expertise in relation to negotiating and structuring sponsorship and endorsement arrangements, having acted in such matters for over 20 years. By way of example only, he has acted for Toyota Australia in relation to its most significant sponsorship arrangements over many years including its naming rights arrangement with the Australian Football League and its sponsorship of Cricket Australia, acted for CUB in relation to a $100 million dollar sponsorship of the AFL and acted for Metricon in relation to a naming rights arrangement concerning Metricon Stadium on the Gold Coast.
  • Australian National Preventive Health Agency (a statutory authority within the Federal Health and Ageing portfolio): advised in relation to the implementation of the $25 million government sponsorship program to provide an alternative to alcohol sponsorship in sport. This work included advising on, drafting and negotiating sponsorship agreements between the Agency and 13 national sports organisations (including Football Federation Australia, Netball Australia and Basketball Australia).
  • adidas Australia: Chris has been the principal legal adviser to adidas Australia for over 20 years, advising it in relation to a wide variety of sports (including Olympics) and leisure-related sponsorship and other arrangements and disputes.
  • Racing Victoria: advised RVL over many years in relation to media rights and intellectual property-related issues, disputes and commercial agreements in the context of Victorian thoroughbred racing. For example, advised in relation to the establishment of TVN (then Racing Victoria Media) – this involved initially the aggregation of Victorian media rights and then extensive negotiations with the Sydney metro clubs to secure their involvement in the face of "first and last rights" obligations owed to Sky Channel. Also advised RVL on its long term services agreement with Telstra, involving the design and implementation of a new IP-based network (based on Telstra's DVN2 product) across multiple RVL sites, the provision of digital video network services and associated support services.
  • Racing.com: advises in relation to the acquisition and licensing of thoroughbred media rights including in securing media rights to South Australian racing and rights from the Ten Network in relation to the four days of the Melbourne Cup Carnival. Chris has also advised RDC in relation to wagering partner agreements, licence agreements and various other commercial arrangements and legal issues.
  • Department of Defence: preparing and negotiating agreements for various Defence Force Recruiting sponsorships including with the Australian Football League and the Women's National Basketball League. Chris also advised Defence Force Recruiting on various intellectual property and privacy matters including in relation to the defencejobs.gov.au website and CD-ROMs used for training purposes.
  • Department of Health and Ageing: acted for the Federal Government's Football World Cup Bid Task Force for Australia's (Soccer) World Cup Bid, which was based within the Department of Health and Ageing. This work involved advising the Task Force in relation to an agreement with the Australian Football League, the National Rugby League and Cricket Australia. Under that agreement, the Commonwealth would underwrite the payment of compensation to the various sporting codes, in return for those codes allowing the use of their stadia during the period of time that Australia would host the World Cup, if Australia's bid was successful.
  • ThoroughVisioN: key adviser to TVN from its inception in relation to the acquisition of media rights for Victorian and Sydney thoroughbred racing and in licensing such rights to Sky Channel, Telstra, Foxtel and Austar. Also acted for TVN in Federal copyright infringement proceedings in relation to the unauthorised use of TVN's audiovisual coverage.
  • Melbourne Racing Club: acted for MRC in relation to the restructure of TVN in late 2012/early 2013 – including negotiating a new shareholders' agreement and media rights agreement – other parties included RVL, the other Victorian clubs, Racing NSW and the ATC.
  • Victoria Racing Club: acted in various disputes (including Federal Court proceedings) which resulted in the VRC securing crucial "Melbourne Cup"-related domain names previously held by third parties, including www.melbournecup.com and www.melbournecup.com.au – those third parties were either wagering providers or persons who had advertising/profit share arrangements with wagering providers.
  • Tasracing: advised in relation to the licensing and exploitation of Tasmanian thoroughbred, harness and greyhound media rights (including on arrangements with relevant clubs and agreements with Sky Channel).
  • Perth Racing: advised in relation to thoroughbred arrangements with Tabcorp/Sky Channel (particularly concerning domestic and international media rights).

See Leisure and Entertainment

Social Media

Chris advises clients on numerous legal issues (IP related and otherwise) in the context of social media, including on potential liability for third party content and on the legality of promotions via social media platforms.

Chris also acts in disputes that arise in the context of online activities, in social media or otherwise. For example, he is currently acting for Toyota Australia in Federal Court proceedings against the operators of the Private Fleet business. That business provides retail and brokerage services in respect of motor vehicles. In those proceedings, Toyota alleges that the Respondents are infringing Toyota's TOYOTA and LEXUS trade marks on Private Fleet's websites, via the use of domain names (toyotadiscounts.com.au and lexusdiscounts.com.au), within Google, Bing and Yahoo search engine advertisements and within the source code of Private Fleet's websites. Toyota is also alleging infringement of its copyright in certain vehicle photographs which were reproduced online.

See Social Media

Government Services

  • Department of Defence: preparing and negotiating agreements for various Defence Force Recruiting sponsorships including with the Australian Football League and the Women's National Basketball League. Chris also advised Defence Force Recruiting on various intellectual property and privacy matters including in relation to the defencejobs.gov.au website and CD-ROMs used for training purposes.
  • Department of Health and Ageing: acted for the Federal Government's Football World Cup Bid Task Force for Australia's (Soccer) World Cup Bid, which was based within the Department of Health and Ageing. This work involved advising the Task Force in relation to an agreement with the Australian Football League, the National Rugby League and Cricket Australia. Under that agreement, the Commonwealth would underwrite the payment of compensation to the various sporting codes, in return for those codes allowing the use of their stadia during the period of time that Australia would host the World Cup, if Australia's bid was successful.
  • Australian National Preventive Health Agency (a statutory authority within the Federal Health and Ageing portfolio): advised in relation to the implementation of the $25 million government sponsorship program to provide an alternative to alcohol sponsorship in sport. This work included advising on, drafting and negotiating sponsorship agreements between the Agency and 13 national sports organisations (including Football Federation Australia, Netball Australia and Basketball Australia).
  • Victorian Government Infrastructure: advised the State on IP and technology issues associated with major toll road projects in Victoria, including CityLink, EastLink, the proposed East West Link and the proposed Western Distributor Project.
  • Department of Health and Human Services: advised on the refresh of production, UAT and DR environments supporting DHHS's housing support systems. The project involved the design and implementation of new environments and the migration of existing data and systems to those new environments. This matter involved the preparation of contract documentation, advising on key legal risk issues and risk mitigation strategies and contract negotiations and close.
  • East West Link (Linking Melbourne Authority): Advising on IP and IT aspects of project documentation in relation to the design and implementation of Melbourne's proposed East West Link.

See Government Services

Knowledge

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