Michelle Eadie
Clayton Utz
A trusted advisor on both commercial and contentious IP, Michelle Eadie helps businesses safeguard and leverage their brands across Australia and internationally. She handles complex trademark portfolios, disputes and clearance issues, while her wider practice covers marketing law, confidential information and design protection for clients in fields ranging from arts and fashion to technology and FMCG."
– World Trademark Review – WTR 1000 rankings
A Special Counsel with over 25 years' experience in non-contentious and contentious intellectual property law, Michelle helps clients protect and enforce their intellectual property rights. She specialises in all areas of brand protection and trade mark law including prosecution, management, strategy, enforcement, and litigation. She is recognized in the WTR 1000 for trade mark enforcement and strategy and has worked with clients across a range of sectors from arts and entertainment, food and beverage, cosmetics, jewellery and other FMCG businesses, to e-sports, healthcare, pharmaceuticals and technology.
Michelle’s expertise also covers misleading conduct, passing off, copyright, advertising and marketing, and domain names, as well as preparing and negotiating commercial agreements with an intellectual property focus.
Michelle is known for her pragmatic and commercially focused approach, ensuring her clients’ intellectual property assets are protected.
* Branding advice and trade mark portfolio management for businesses from small start-ups to large multinationals. Her clients have included house-hold name brands such as a high profile children's entertainment group, well-known e-sports entertainment business, an iconic alternative milk brand, international cosmetics businesses, a leading telecommunications company, and leading pharmaceutical companies.
* Acted for a significant international company accused of trade mark infringement in Australia on launch of a new product, resulting in a negotiated resolution favourable to the client.
* Represented an alcoholic beverage company in startup phase to protect its branding and prevent the launch of a product by a third party under a nearly identical brand.
* Acted in a get-up dispute for a beverage company in product launch phase. The client was alleged to be engaging in passing off and misleading and deceptive conduct in connection with elements of packaging. Infringement action was commenced against the client by the other party who was the market leader for this product category. A settlement was negotiated in mediation with the client getting its product to market without too much disruption to the distribution timeline.
Non-traditional trade mark protection for businesses including assisting clients to protect colour, shape, and aspects of packaging.
* Assisting an industry body client to protect trade marks used by its members as certification trade marks.
* Co-ordinating international oppositions to trade mark applications lodged by a client's former business parter. This included representing the client in international mediation with a foreign trade mark office that resolved the dispute.
* Acting for a Australian television personality in protecting and enforcing rights in their very distinctive name against third party infringers.
* Copyright: Acting for clients in relation to copyright and design matters, particularly copyright disputes. In recent years this has included copyright infringement in company materials and website content, and advising clients on infringement of copyright in jewellery designs with significant issues in relation to copyright design overlap and originality.
* Domain names: Acting for clients in domain name dispute resolution actions.
* Intellectual Property Commercial Agreements: Advising on and preparing commercial agreements including confidentiality agreements, sponsorship/ambassador agreements, distribution agreements, manufacturing agreements, licence agreements, assignments.
*Experience gained at prior law firm