Jim McDonnell

Position: Solicitor

SUMMARY PROFILE

Jim specialises in intellectual property and technology, but also deals extensively in IT and data protection. He is experienced in advising on a wide range of contentious and transactional aspects of intellectual property, and has acted for both private and public sector organisations of all sizes.

AREAS OF PRACTICE

Jim has in-depth experience in all areas of intellectual property, particularly in relation to patent and trade mark infringement issues. He has acted for a range of organisations in the retail, engineering, construction and service industries. Jim also has knowledge of IT, data protection and general commercial contracting in both the public and private sectors. Jim spent three months on secondment with a major airline providing general legal support and advice in all areas including intellectual property, IT, telecommunications, advertising and general commercial contracts. Jim also contributes regularly to specialist publications such as Patent World.

Jim's particular experience includes:

Advising Virgin Megastores in respect of its high-profile rebranding as "Zavvi", including clearance advice and trade mark registration.
Advising on a multi-jurisdictional patent infringement claim on behalf of a leading international engineering firm.
Various trade mark, copyright and design right infringement claims on behalf of a leading children's goods manufacturer and retailer.
Advice as to local trade mark protection issues for a global raw materials group.
Advising a global publishing company in respect of a $9m database right and copyright claim.
Advising on extensive IP review, assignment, rebranding and other issues in relation to various corporate transactions and reorganisations.
Advising engineering companies on transfers of technology to partners in India and China.
Pro bono advice on IP and commercial issues for a charity music festival promoter.

MAJOR CLIENTS

Aegis Media
Department for Work and Pensions
Driving Standards Agency
EWS
ICI Paints
InBev
Jewson
Keepmoat
Little Chef
Mothercare
Ronseal
Sheffield City Council
The Thomson Corporation
The University of Sheffield
Zavvi Entertainment (formerly Virgin Megastores)

PROFESSIONAL EXPERIENCE

2005-Present Solicitor, DLA Piper UK LLP
2003-2005 Trainee Solicitor, DLA Piper UK LLP