James Neil

Clayton Utz
Partner Melbourne
Overview

James Neil specialises in three complementary areas: intellectual property, commercial dispute resolution and legal issues concerning advertising and marketing.

As part of his IP practice, James:

  • helps his clients to protect, enforce and defend IP rights of all kinds: trade marks, copyright, patents, registered designs, trade secrets and domain names;
  • represents his clients in proceedings before the Federal Court and IP Australia; and
  • assists clients with all areas of trade mark prosecution and portfolio management, helping them to protect their brands both in Australia and overseas.

James “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). He ""fully understands every intricacy of IP disputes and brand protection"" (WTR 1000). He “is excellent to work with, and knows our business and brands as well as anybody. His commercial acumen has resulted in en pointe strategic business decisions for our business” (The Legal500, client testimonial).

James also regularly acts for clients in commercial disputes outside of the IP sphere. He has particular expertise in disputes concerning contracts, technology projects, franchising, consumer law, advertising / marketing, restraints of trade, reputation management, fiduciary duties and misuse of confidential information (particularly in an employment context). James works closely with his clients to develop strategies designed to resolve disputes as favourably and efficiently as possible. If necessary, he uses his substantial experience in the Federal and State courts, and in single / multi-panel arbitrations, to protect his clients' interests. ""James and his team certainly provide a top-tier service. Their ability to think outside the square when it comes to courtroom cases impresses me a lot"" (WTR 1000, client testimonial).

Finally, James advises some of Australia’s most significant enterprises about their advertising and marketing activities. In that context, James:

  • advises clients about the legality of advertising and marketing campaigns, including in relation to comparative advertising and major sports events;
  • helps his clients to avoid liability under consumer protection laws, including when they are subject to a regulatory investigation or court action; and
  • has significant experience assisting clients to successfully respond to complaints made under codes administered by the Australian Association of National Advertisers (AANA).
Notable Work
  • Toyota: James is currently acting for Toyota in multiple Federal Court proceedings concerning counterfeit products, trade mark infringement, copyright infringement and misleading conduct.
  • The Entourage: James defended The Entourage Education Group in Federal Circuit Court proceedings concerning allegations of trade mark infringement.
  • Myer: James regularly acts for Myer to protect and enforce its intellectual property rights, and to defend allegations of infringement.
  • 2XU: James regularly acts for 2XU in disputes concerning intellectual property and misleading conduct.
  • Confidential client: James acted for a consumer technology company in relation to infringements of its Australian patents by a competitor.
  • Spotless Group: James acted for Spotless in Federal Court proceedings alleging trade mark infringement, passing off and misleading conduct against Qantas.
  • Monash University: James regularly acts for Monash University to enforce its intellectual property rights, including to restrain misuse of confidential information and the ""Monash"" trade mark.
  • Swancom: James is acting for Swancom in Federal Court proceedings against McDonald's alleging trade mark infringement in relation to the use of the ""CORNER"" trade mark.
  • Godfrey Hirst: James acted for Godfrey Hirst in Federal Court proceedings against a competitor concerning copyright infringement and misleading conduct.
  • Acquire Learning: James 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. 
  • KPM Industries: James acted for KPM Industries in defending Federal Court proceedings brought against it by a competitor alleging copyright infringement, trade mark infringement and misleading conduct. 
  • Confidential client: James acted in Federal Court proceedings for a substantial franchise business alleging trade mark infringement, misleading conduct and breach of a licence agreement. 
  • 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.
  • Sports industry: James has acted for and advised various clients in the sports industry on reputation management issues arising from newspaper articles and programs broadcast on national television.
  • Southern Mills, Inc (t/as TenCate Protective Fabrics USA): James acted for Southern Mills in a Federal Court proceeding against Bruck Textiles arising from misleading comparative marketing claims 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.
  • Leading beverage brand: James acted for and advised a leading beverage brand on alleged reputational harm arising from a newspaper article.
  • Defamatory tweet: James acted for a leading Australian organisation concerning a tweet that was alleged to be defamatory of its management.
  • Brand protection: James has a significant brand protection practice and deals with reputation management issues in that context on a daily basis.
  • Trade mark prosecution and portfolio management: James assists clients with all areas of trade mark prosecution and portfolio management, helping them to protect their brands both in Australia and overseas. His clients in this area 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. In light of James' extensive trade mark dispute experience (see below), he takes a holistic view to brand protection and is able to ""game play"" how things will ultimately turn out, if litigation about a trade mark eventuates. He was also awarded the Frank Pinkerton Scholarship for Trade Mark Practice, having achieved the highest mark in that subject as part of the Melbourne Law Masters.
  • Monash University: James regularly acts for Monash University to enforce its intellectual property rights, including to restrain misuse of confidential information and the ""Monash"" trade mark.
  • Swancom: James is acting for Swancom in Federal Court proceedings against McDonald's alleging trade mark infringement in relation to the use of the ""CORNER"" trade mark.
  • KPM Industries: James acted for KPM Industries in defending Federal Court proceedings brought against it by a competitor alleging copyright infringement, trade mark infringement and misleading conduct.
  • Confidential client: James acted in Federal Court proceedings for a substantial franchise business alleging trade mark infringement, misleading conduct and breach of a licence agreement. 
  • Confidential client: James acted for a consumer technology company in relation to infringements of its Australian patents by a competitor.  
  • Confidential clients: James has 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. 
  •  Godfrey Hirst: James 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.
  • Supreme Court of Victoria – joint venture dispute: James acted for the Defendants in Supreme Court of Victoria proceedings concerning a property development joint venture.
  • Supreme Court of Victoria – business sale agreement: James is acting for the Plaintiff in Supreme Court of Victoria proceedings concerning sums payable under a business sale agreement.
  • IT / software disputes: James has 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: James 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. 
  • Confidential clients (franchising): James 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.
  • Confidential client (arbitration): James acted for a multinational biotech company in arbitration proceedings concerning supply and distribution agreements entered into with an Australian listed company. 
  • Confidential client (arbitration): James acted for a sports media company in arbitration proceedings concerning contractual rights to televise sports coverage. 
  • Acquire Learning: James represented Acquire Learning in Federal Court proceedings brought by the ACCC alleging misleading or deceptive conduct and unconscionable conduct in relation to marketing activities. 
  • Department of Health and Ageing: James 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. 
  • Google AdWords / SEO / SEM: James has 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: James 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.
  • 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.
  • Social media: James 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.
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