Jimmy Gill | Partner | Sydney

  • Business Transactions
  • Corporate Transactions & Compliance
  • Intellectual Property
  • Litigation & Dispute Resolution
  • Media & Technology
Tel 61 2 8235 1239Mob 0416 459 632Email j.gill@clarkekann.com.au

Jimmy leads our Commercial, Intellectual Property and Technology Group. He is a specialist in transactional, advisory and litigation legal services in the areas of:

  • business transactions and commercial agreements;
  • intellectual property (trade marks, patents, copyright, designs, plant breeders rights, confidential information);
  • information, software, internet, e-commerce, social media and other digital technologies;
  • privacy and data protection;
  • cyber risk and security;
  • competition and consumer laws;
  • franchising;
  • international trade and business expansion. 

Jimmy is known for his subject matter knowledge, pragmatic commercial advice, and strategic approach to complex disputes. He acts for Australian and international clients from a broad range of industries including software, manufacturing, FMCG, fashion, education, nuclear medicine, pharmaceuticals, energy and resources, building and construction, engineering, transport and commodities, local government and professional services.

Jimmy advises clients on the identification, protection, commercialisation and management of intellectual property rights, technology procurement, outsourcing, licensing, privacy/data protection, competition and consumer law compliance, product liability and warranties, product recalls, advertising, and social media.

He also advises on a broad range of commercial documents including manufacturing, supply, distribution, consulting, research and development, joint venture, managed services, software development, outsourcing and confidentiality agreements and licenses, assignments, terms and conditions, product warranties, and privacy policies.

Jimmy has represented a diverse portfolio of clients in complex litigation and disputes involving intellectual property, particularly with patents, trade marks, copyright, designs and trade secrets, competition and consumer law, domain names, defamation, and various commercial agreements.

Jimmy is the founder and lecturer of the Intellectual Property Law course at the University of Southern Queensland.

Experience

Business & Commercial

  • Acting for a multi-national corporation in drafting and implementing a licensing, confidentiality and manufacturing agreement with its competitor in relation to a trade secret.
  • Advising a multi-national supplier of home appliances in respect of the MPEG-LA and Bluetooth licensing regimes.
  • Advising a subsidiary of a publicly listed technology corporation in respect of its master services agreement for cloud, hosting and web services.
  • Acting for an international optical franchise, including advising on Australian franchising laws, and drafting franchise documentation.
  • Acting for an Australian alcoholic beverage brand in relation to the licensing and assignment of its trade marks.
  • Acting for surveillance equipment vendor in relation to its commercial contracts and supply agreements.
  • Advising various businesses in different industries on the procurement of organisation-wide ERP systems and software as a replacement to its legacy systems.
  • Acting for an Australian IT corporation including strategic advice and documentation with respect to software development and maintenance, cross-border licensing, vendor and customer terms of privacy/data protection issues on its client base in Australia, USA and Brazil.
  • Acting for an Australian e-commerce platform, including by advising on copyright and related issues relating to the sale of second-hand goods, preparing website terms and conditions, and advising on appropriate terms of business.
  • Establishing and managing local and international trade mark portfolios for various local and international organisations, including handling contentious trade mark applications both in Australia and abroad.

Regulatory and Compliance

  • Advising on and implementing an Australian Consumer Law compliance program for Australia’s largest apartment developer.
  • Advising prominent Sydney homewares brand on product safety and consumer law compliance in preparation for potential product recall.
  • Advising various businesses in relation to Privacy Act and GDPR compliance and preparing privacy compliance documentation, policies and response plans for those businesses.
  • Acting for a national manufacturing company in seeking repayment of consequential losses, including conducting a product recall, arising from the supply of defective goods imported from China, and involving cross-jurisdictional enforcement issues.

Litigation and Dispute Resolution

  • Acting for the patentee of an ATM security device in Federal Court patent infringement proceedings.
  • Acting for a racehorse breeder in trade mark infringement proceedings in the Federal Court.
  • Securing a multi-million dollar settlement for the supplier of patented personal protective garments in connection with Supreme Court proceedings for the breach of an exclusive distributorship agreement by one of the largest global supplier of electrical goods.
  • Acting for a global supplier of apparel and fashion accessories in defending allegations concerning the infringement of registered designs, trade marks and copyright. Acting for the same supplier in other matters involving the enforcement of its intellectual property rights against entities settling counterfeit goods.
  • Acting for a national manufacturing company in a dispute involving breach of contract of a technology licensing contract and the ownership of improvements made to the licensed technology.
  • Acting for an Australian hotel amenities business in relation to a litigated commercial contract dispute in the Arizona District Court.
  • Acting for a large and well-known US company against one of Australia’s largest and leading toy manufacturers and distributors involving the misuse of confidential information, breaches of trade practices legislation, passing off and infringement of design rights and copyright.
  • Acting for the world’s leading language learning and assessment provider in claims relating to trade mark infringement, passing off and misleading and deceptive conduct.
  • Acting for a large foreign beauty therapy company in Federal Court proceedings to stop the importation of counterfeit products, which also involved claims regarding the infringement of copyright and trademark rights, claims for misleading and deceptive conduct and allegations of breach of contract.
  • Acting for high street fashion and accessories brands in relation to the infringement of registered designs, trade marks and copyright.
  • Acting for online gift and homewares retailer in defending allegations of misleading and deceptive conduct and passing off.

Articles

People

CK Agribusiness Consultant Tim Ferrier was recently listed in Doyle's Guide to the Australian Legal Profession as a Preeminent Leading Agribusiness Lawyer (Queensland) for 2018. To make this list requires feedback from various sources but most importantly our clients. We thank our clients for that valuable input and look forward to assisting in your continued commercial growth.  VIEW MORE

Expertise

ClarkeKann has received the Australia-Taiwan Business Excellence Award for our efforts promoting and advising on most of the major investments from Taiwan into Australia over the last 20 years. Click below for more details about Foreign InvestmentVIEW MORE

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