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Who Represents Who

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IP boutique AJ Park is ‘certainly a top-tier firm and has great depth in its team’. The firm employs a large proportion of New Zealand’s patent attorneys and has a market-leading reputation for advising on IP strategy, commercialisation, protection and enforcement. The Auckland team includes standout practitioners such as Anton Blijlevens, who focuses on the engineering and ICT sectors; Anton Gibson, who leads the life sciences patent team; trade mark strategist and firm chair John Hackett; and litigation and enforcement specialist Kim McLeod. In Wellington, Mark Hargreaves leads the commercial and strategy practice; Colleen Cavanagh has more than 30 years’ experience in trade mark matters; and manging partner Damian Broadley handles trade mark strategy, copyright and domain name issues. The firm’s many highlights included advising New Zealand Rugby Union Inc on Major Events Management Act matters.

At Simpson Grierson, the team is ‘always available and gives clear and prompt advice’. The full-service firm has a dedicated IP team with a strong presence in patent, trade mark and copyright litigation, trade mark opposition, and IP commercialisation. Lead partners Earl Gray and Richard Watts are ‘always willing to discuss alternative angles’. Senior associates Ashton Welsh, who manages the sport, venues, events and entertainment team and ‘has wide-ranging knowledge and offers a practical approach’, and Sarah Chapman are highly recommended. Highlights included acting for National Storage Limited in High Court proceedings concerning passing off claims and breaches of the Fair Trading Act, and advising General Electric on a breach of confidence claim brought by Siemens relating to the sale of gas turbine technology. Gray also acted for Emtelle UK Limited, which owns two New Zealand patents for signal transmitting cables, in High Court proceedings for alleged patent infringement.

Baldwins is a specialist IP firm that comprises both a patent attorney firm and a law firm. It is the only IP boutique with offices in the three commercial centres of Auckland, Wellington and Christchurch, from which it advises domestic, Australian and international clients. The team of seven partners has extensive experience in science, technology and business as well as IP law. A key client is Auckland UniServices, New Zealand’s largest university research commercialisation office, for which the firm provides global patent portfolio management, prosecution and commercial services in regard to its world-leading wireless power transfer technology, which is licensed by companies such as Qualcomm and PowerbyProxi. The standout practitioners in Auckland include firm chair Wes Jones, who leads the relationship with Auckland UniServices, and leading light Sue Ironside. Also recommended are Wellington-based head of trade marks Penny Catley and Christchurch-based Angela Searle. The firm advised Lacoste on an appeal to the Supreme Court by Crocodile International concerning similar brand marks.

Bell Gully has a multidisciplinary team that is involved in high-profile disputes and commercial transactions involving substantial IP assets. Alan Ringwood in Auckland, who is the firm’s longest-serving partner, leads the IP team. He advised Unilever PLC and related entities in New Zealand, Australia and the Pacific Islands on matters including the clearance of brands for use, trade mark infringement and Fair Trading Act issues. Newly promoted litigation partner Tania Goatley specialises in media and advertising, food and beverage, and intellectual property law. Senior associate Sooyun Lee plays a major part in the practice’s most significant matters and advised First State Investments on the IP aspects of its NZ$952m acquisition of Vector Gas, which has assets including a high-pressure gas transmission business in the North Island and the non-Auckland gas distribution business. She also advised Downer New Zealand on IP matters arising from its agreement to acquire the construction, infrastructure and project management businesses of Hawkins.

Buddle Findlay has a team of experienced IP specialist led by patent attorney John Glengarry from Auckland. The team is known for ‘great client care and pragmatic approach to problem solving’ in transactional matters, portfolio management, IP strategy and enforcement. Glengarry advised World Master Games 2017 Limited on the successful defence of a trade mark opposition brought by MasterCard International Incorporated that enabled the client to register its trade mark. He also acted for an international hotel company in a domain name dispute, in which he successfully obtained the transfer of two key .nz domain names from a cybersquatter. Also recommended are highly experienced consultant Andrew Matangi, who conducted trade mark searches for Colgate-Palmolive; litigator Graeme Hall, who defended Vend Limited in trade mark registration invalidity proceedings in Australia and the US; and rising star senior associate Hamish Selby.

Matt Sumpter who leads Chapman Tripp’s three-partner team from Auckland ‘has a superb grasp of the law and is very strategic’. The firm advises some of the world’s leading brands and counts Microsoft, Starbucks, the Motion Picture Association of America (MPAA) and PwC among its clients. Sumpter acted for MPAA as representative of 20th Century Fox, Disney, Paramount, Universal, Columbia and Warner Bros in ongoing copyright litigation against internet entrepreneur Kim Dotcom, in which he has secured world-wide asset freezing injunctions. The case involved a four-day trial in which commercial litigator Justin Graham played a key role. Corporate and commercial partner Kelly McFadzien focuses largely on intellectual property and TMT matters. She advised a conglomerate group with control over Hyundai Motors New Zealand, New World Motors, Global Motors and other motor vehicle exclusive rights holders on licensing issues for brands including Isuzu and Renault, copyright infringement and parallel importing matters.

The responsiveness and the knowledge of technology and the industry is very good’ at IP and technology law boutique Hudson Gavin Martin. Simon Martin is recommended for his knowledge of licensing and franchising, Jason Rudkin-Binks for his broad non-contentious practice, and patent attorney Tim Mahood for litigation. The team acted for global dairy and drinks business Lion Group in numerous IP matters, including brand development, product labelling and regulatory compliance. The team also provided anti-counterfeiting services to Louis Vuitton, which involved close co-operation with the New Zealand Customs Service on border protection measures and in-market investigations, and the sending of cease and desist letters. In another highlight, it acted for the proprietor of the world-famous Mr Men brand in respect of third-party use of a similar character and name. Litigator Mark Gavin, who advises on all aspects of IP and media, including copyright, passing off, trade practices and trade mark infringement, as well as brand protection, left to join Anthony Harper.

IP boutique James & Wellshas good knowledge of copyright, IP and trade mark matters’. Across its four offices in Auckland, Hamilton, Tauranga and Christchurch, the team has deep experience in both domestic and international IP litigation and management. Gus Hazel in Auckland ‘listens carefully and comes up with appropriate solutions that offer the best way forward’. He advised Plantation Grown Timbers in the Court of Appeal on the first test of key provisions in the Copyright Act concerning border protection measures as part of a large portfolio of litigation involving copyright and trade mark matters. He also acted for Monster Energy in a successful High Court challenge to a decision by the Commissioner of Trade Marks to allow the registration of a trade mark by Ox Group Global. Ian Finch in Hamilton advises many multinational companies on IP rights enforcement. He represented medical equipment company ResMed in patent opposition cases in New Zealand, Australia and the US. Associate and barrister Sébastien Aymeric ‘does the leg work and ably supports the partners’.

Jenni Rutter in Auckland and Charlotte Henley in Wellington lead the team at Kensington Swan. Both have more than 20 years’ experience advising global brands on IP matters. Rutter manages the New Zealand trade mark portfolios of brands such as Lindt, Tiffany and Co, and Cisco. Her highlights included advising plaintiff Lewis Road Creamery in a High Court action for trade mark infringement, passing off and breaches of the Fair Trading Act against dairy company Fonterra. The case centres on Fonterra’s use of similar product packaging for a new premium milk range launched in late 2016. Henley handles portfolio management and enforcement matters for clients such as Tourism NZ, Shott Beverages and eHarmony. She worked with Rutter to secure protection of Kellogg Company’s shape trade mark for Nutri-Grain cereal, the application having been opposed by Nestlé. For Tourism NZ, Henley advised on the strategy for a refiling programme for its revamped logo in more than 15 countries.

Anthony Harper is known for ‘superb service and high-quality advice’. Auckland-based Michael Moyes leads the practice and provides ‘excellent advice and commercial strategies’. Associate Jullion Nelson Parker plays a major role in the team and is ‘very strong technically and practically’. Corporate and commercial partner Chris Dann in Christchurch is also heavily involved in IP matters. The team’s highlights included advising franchise company Burger Fuel International on the management of its global IP portfolio, which included the filing of numerous Madrid applications to extend its worldwide reach. Moyes also acted for New Zealand Comfort Group in a cross-licensing arrangement with a research division of Massey University regarding existing intellectual property with the aim of creating pressure sensor technology for the retail sector. Pacific Valley Foods and Hilton Haulage are also clients of the firm.

Lowndes – Corporate & Commercial Law Specialists is ‘very responsive and has a sound understanding of commercial outcomes as well as legal issues’. Principal Greg France and partner Mark Lowndes are ‘hugely knowledgeable in the IP area’. Partner and contentious IP specialist Jacqueline Lethbridge is also recommended. The firm has a growing workload of cross-border matters and its client base consists of prominent domestic and multinational businesses. Lowndes and France recently advised a Gibraltarian company on dealings with the Commerce Commission arising from potentially misleading IP renewal notices. They also acted for a fast-growing domestic business on matters relating to novel patented technology, including a process for converting recycled plastic waste into a high-density polymer for use in the construction industry.

MinterEllisonRuddWatts in Auckland is ‘very responsive and efficient, always going the extra mile to ensure things are taken care of’. Christopher Young in Auckland leads the team and is ‘an excellent relationship partner who invests in taking the time to understand clients’ visions, needs and structures’. Corporate and commercial partner Richard Wells has more than 15 years’ experience and covers IP licensing and the commercialisation of technology. Before joining the firm, he was in-house IP counsel for De Beers Group and its international IP portfolio. Experienced advocate and trial lawyer Zane Kennedy is a prominent figure in the firm’s contentious IP practice. A key highlight for the team saw it act for Tomra Systems in its purchase of food sorting solutions manufacturer Compac Holdings, which included significant IP issues. The firm also handles IP matters for Skycity Entertainment Group, including strategy and portfolio management.

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