Jonathan's intellectual property (IP) practice focuses on brand protection and trade mark prosecution. He advises on brand selection, trade mark availability and disputes between parties and before the Registrar of Trade Marks. Jonathan has significant experience coordinating global trade mark portfolios, particularly across the Asia Pacific.
His commercial practice involves drafting and negotiating agreements (franchising, distribution and supply, warehousing and logistics), IP licences and assignments. He has considerable experience acting for vehicle manufacturers in franchising matters, and advises on the application of Australian laws (such as competition and consumer legislation) to such agreements, and to parties doing business in Australia.
Representative Legal Matters
- Acting for a large Australian food and beverage manufacturer in respect of all aspects of trade mark clearances, protection, Registry enforcement and management of its worldwide portfolio of household name brands.
- Coordinating the global trade mark portfolio for Earth Hour, including providing advice on brand protection strategies and prosecution issues.
- Conducting trade mark searches on behalf of a variety of brand owners and advising on brand protection strategies on both a local and global level, including coordinating global trade mark filing programmes.
- Advising a global motorcycle manufacturer on the sale and distribution of its products in Australia and New Zealand. These include preparation of template dealer agreements and dealer policies, advice on the application of the Australian Franchising Code of Conduct to its agreements and preparation of compliance documentation, advising on dealer termination and non-renewal, drafting and negotiating agreements with third parties for the supply of goods and services, and advising on a range of marketing and promotion issues.
- Advising clients in a range of industries — consumer electronics, luxury goods, cleaning products and pharmaceuticals — on the distribution of their products in Australia and New Zealand. This includes drafting and negotiating agreements, and advising on various topics: design and structure of distribution networks, distributor termination issues, and the application of competition and consumer protection law.
- Advising on the IP aspects of a number of major transactions, including M&A deals, technology licensing, and manufacture and supply arrangements.
- Advising a major Australian energy company on the commercialisation of its photovoltaic cell technology, including confidentiality issues and the drafting and negotiating of R&D arrangements and licence agreements.
- Advising clients in a range of industries on the application of the Australian Consumer Law to their activities, including mandatory consumer rights and the use of manufacturers' and extended warranties.
- New South Wales~Australia (2007)
- England & Wales~United Kingdom (2001)
- Oxford University (St. Catherine's College) (Bachelor of Civil Law) (1999)
- College of Law at York (L.P.C.) (1998)
- Oxford University (St. Catherine's College) (B.A. Law Honors) (1997)
Speaker, "Social Media & Advertising Issues," National Franchising Convention Legal Symposium, Franchise Council of Australia, October 2014
Speaker, "Technology Licenses: Safeguarding your IP Assets," Baker & McKenzie Asia Pacific Transactional IP Seminar, May 2014
Speaker, "Disclosure Obligations under the Franchising Code," Legalwise Seminar, March 2014
Author, "Shades of Meaning" (review of European Court of Justice decisions on colour marks), Trademark World, September 2004
Author, "Trademarking surnames," New Law Journal, December 2004