‘Premier’ specialist firm AJ Park houses a ‘deep bench of accomplished practitioners’ and has demonstrable experience across the full gamut of IP matters, including trade marks, patents, designs and copyrights, as well as IP commercialisation and strategies, plant variety rights, renewals and litigation. In the firm’s Auckland office, Amanda Griffiths, who heads the trade marks practice, is noted for her expertise in the FMCG, advertising and regulatory sectors, while other names to note include litigation group chief Paul Johns and Anton Blijlevens. In Wellington, commercial IP partner Penny Catley is a patent attorney who practises in both New Zealand and Australia, while Jonathan Aumonier-Ward is praised as one of the ‘finest trade mark attorneys in New Zealand’. Also in Wellington, Michael Brown spearheads the electronics and IT patent group, while Duncan De Geest leads the chemical biology practice. Mark Hargreaves left the firm in April 2022, followed by Matt Adams in June 2022.
Intellectual property in New Zealand
AJ Park
Practice head(s):
Amanda Griffiths; Paul Johns; Michael Brown; Duncan de Geest
Other key lawyers:
Penny Catley; Jonathan Aumonier-Ward; Anton Blijlevens; Grace Thomas-Edmond
Testimonials
‘AJ Park is the premier NZ trade mark firm, with a deep bench of accomplished practitioners.’
‘Jonathan Aumonier-Ward is likely one of the best trademark attorney in NZ. He is knowledgeable, business-friendly and very easy to work with.’
Chapman Tripp
Chapman Tripp expanded its IP offering with the launch of Chapman Tripp Patents in March 2021 – a specialist medical device technology offering focused on patent opposition proceedings, as well as managing global portfolios. Noted for its capability in contentious IP matters, the practice also counts trade mark oppositions, copyright litigation, anti-counterfeiting matters, border protection campaigns and IP commercialisation in its workload. In the firm’s Auckland office, litigator and patents director Matt Sumpter leads the practice and acts for a range domestic and multinational clients in IP disputes, while Kelly McFadzien focuses on IP-related transactions. Director and patent attorney in the Chapman Tripp Patents group, Ben Halberg, has experience in infringement and validity proceedings, freedom-to-operate matters, as well as patent prosecution work. Head of the national litigation group, Justin Graham and senior associate Tom Cleary are also key names to note.
Practice head(s):
Matt Sumpter
Other key lawyers:
Kelly McFadzien; Justin Graham; Ben Halberg; Tom Cleary
Key clients
Fisher & Paykel Healthcare Limited
Quid Est Veritas Ltd
Hyundai Motor Company
Philip Morris (New Zealand) Limited
Vanguard Trademark Holdings USA LLC
The Good Brand Company Limited
NZ Skin Care Company Limited
Nutritional Goodness S.A.
Southern Pastures Limited Partnership
Southern Pastures Limited Partnership
Hudson Gavin Martin
Specialist TMT and IP firm Hudson Gavin Martin acts for a diverse range of clients, from start-ups to large New Zealand-based companies and multinational corporations, on the full spectrum of IP matters, often involving a multi-jurisdictional element. Jason Rudkin-Binks leads the ‘knowledgeable, decisive and collaborative’ team, and is noted for his expertise in brand strategy, development and protection, as well as IP commercialisation. Commercial litigator and patent attorney Tim Mahood is a key contact for IP disputes, while Simon Martin focuses on joint ventures and M&A in the technology and media sectors, and Edwin Lim advises on IP commercialisation. Other key members of the team include special counsels Sonya Hill and Caitlin Hadlee, who has a strong interest in copyright infringement matters, and senior solicitor Gemma Smith, who joined the team from James & Wells in January 2022.
Practice head(s):
Jason Rudkin-Binks
Other key lawyers:
Tim Mahood; Simon Martin; Edwin Mill; Sonya Hill; Caitlin Hadlee; Gemma Smith
Testimonials
‘Tim Mahood is an outstanding litigator. Pragmatic, solution-focused and highly skilled. Top of his field.’
‘The firm has good coverage across all areas of intellectual property. It is particularly strong on the commercial side of IP, and is the strongest commercial IP/technology firm in the country.’
‘The HGM lawyers are great to work with – combining technical expertise with approachability and fun.’
Key clients
Genesis Energy Limited
The British Broadcasting Corporation
Vector Limited
The Collective
Douglas Pharmaceuticals Limited
Vista Entertainment Solutions
Microsoft
Xero
Universal Music
Emirates Group
Work highlights
- Acting for Genesis Energy on the re-brand of its subsidiary to FRANK ENERGY and defending Spark’s oppositions to several ‘Frank’ trade mark applications.
- Advising Unity Software Inc. (via Harmos Horton Lusk) in its $1.6bn acquisition of the technology and IP assets of Weta Digital.
- Acting for Genesis Energy in seeking an interim injunction in the High Court to prevent Z Energy using the colour orange for its new electricity offering.
Simpson Grierson
Praised for its ‘deep expertise across all forms of IP’, Simpson Grierson’s practice stands out for the breadth of its capabilities across the sport, agriculture, pharmaceutical and life sciences sectors, counting non-contentious and licensing matters, IP commercialisation and litigation in its workload. The team’s client roster includes major domestic sports organisations, such as the New Zealand Olympic Committee and New Zealand Rugby, as well as various multinational companies. ‘Outstanding’ IP litigator Richard Watts, who has demonstrable experience in trade mark strategy and prosecution work, in addition to IP-related disputes, jointly leads the practice alongside senior counsel Sarah Chapman, who handles the full range of non-contentious matters concerning trade marks. Senior associate Raymond Scott ‘consistently delivers an exceptional service’ when managing trade mark portfolios, working with clients throughout Australasia and Asia. Special counsel Anita Birkinshaw is another key member of the team.
Practice head(s):
Richard Watts; Sarah Chapman
Other key lawyers:
Raymond Scott; Anita Birkinshaw
Testimonials
‘Richard Watts and Raymond Scotts are able to provide practical advice in a comprehensible way.’
‘Deep expertise across all forms of IP.’
‘Richard Watts is an outstanding IP lawyer. He is our go-to IP practitioner for the New Zealand jurisdiction, because of his knowledge and commitment to client service.’
Key clients
The a2 Milk Company
NZ Rugby
New Zealand Olympic Committee and IOC
Livestock Improvement Corporation
New Zealand Cricket
Novartis
Paralympics New Zealand
Novartis
Energy Beverages LLC
New Zealand Comfort Group Ltd
Heineken/DB Breweries
Apple
Perpetual
Wet & Forget
Briscoe Group
The Procter & Gamble Company
Work highlights
- Advised NZ Rugby on the $260m investment of private equity group Silverlake into the NZR and its brands, including negotiations of its global brand, as well as IP and image rights licences for NZR and its players.
- Advising Energy Beverages LLC in its litigation against Frucor, regarding their attempt to obtain a trade mark registration for the colour green for energy drinks.
- Advised the New Zealand Olympic Committee on all aspects of brand protection and in particular, responsible for the brand protection and enforcement strategy in connection with the Tokyo 2021 Olympic Games, Beijing Winter Olympics and Birmingham Commonwealth Games.
Buddle Findlay
Commended for its ‘strong trade mark expertise, both in New Zealand and Australia’, Buddle Findlay advises a host of local start-ups, international companies, public entities, and not-for-profit organisations on protection, portfolio management, commercialisation and transactional matters, as well as IP-related litigation. With demonstrable experience across the consumer goods, technology and public sectors, the Auckland-based team – jointly led by John Glengarry and Hamish Selby – has seen a rise in certification trade marks, as well as focusing increasingly on indigenous trade marks. Glengarry is a patent attorney in New Zealand and Australia who handles the management and development of trade mark portfolios, as well as fair trading, passing off, copyright issues and disputes. Selby provides ‘high quality advice’ on the full range of contentious, non-contentious and transactional IP work, while special counsel Sophie Thoreau is another key member of the team.
Practice head(s):
John Glengarry; Hamish Selby
Other key lawyers:
Sophie Thoreau
Testimonials
‘A strong commitment to really understanding the relevant industry.’
‘Calm, professional and technically strong. John Glengarry is an excellent, mature and thoughtful partner. Sophie Thoreau is a superb associate. Organised, calm and knowledgable.’
‘Very strong trade mark expertise both in New Zealand and Australia, so excellent support for businesses with a cross-Tasman presence. Extremely pragmatic, timely provision of advice and great value for money.’
Key clients
Alibaba Group
British American Tobacco
WWF (World Wide Fund for Nature)
The University of Auckland
Colgate-Palmolive
Allpress Espresso
Earthwise Group
Manuka Health Appellation Society
UMF Honey Association, Inc.
Auckland Council and Council Controlled Organisations, including Tātaki Auckland Unlimited and Panuku
Radio New Zealand Limited
Sky Television
Freightways Group
Mr Apple
Southland Building Society (trading as SBS Bank)
Joyya
Solmate
Green Cross Health
Work highlights
- Successfully acted on behalf of Solmate in relation to the enforcement of its trade mark rights in the BY FAR trade mark in New Zealand.
- Advising on the protection and defence of MANUKA HONEY in multiple jurisdictions, including New Zealand, United Kingdom and China.
- Advising on the global protection, management and enforcement of Mr Apple trade marks.
Dentons New Zealand
Counting domestic and multinational blue-chip companies, local government entities and overseas law firms among its key roster of clients, Dentons New Zealand is well-placed to advise on the full life cycle of IP assets, from strategic filing and prosecution to IP commercialisation and litigation. Noted for its capability in handling brand protection and enforcement matters, the team is jointly led by Wellington-based commercial IP partner Charlotte Henley, who is a patent attorney, and Jenni Rutter, who operates from the firm’s office in Auckland. Henley has considerable experience in the protection and enforcement of plant variety rights, while IP litigator Rutter represents clients in high-profile disputes and has notable expertise in anti-counterfeiting matters.
Practice head(s):
Jenni Rutter; Charlotte Henley
Other key lawyers:
Emily Tombs; Chelsea Wong
Testimonials
‘Jenni Rutter is proactive on sharing developments that could impact our practice.’
‘Jenni Rutter is accomplished in her role as an IP specialist. She is proactive, decisive, and has an ability to cut through to the essence of a matter and gives commercially pragmatic advice.’’
‘Domain knowledge, industry understanding and quality advice.’
Key clients
Merisant Company
Danone Group
PepsiCo
Tourism New Zealand/Qualmark NZ Limited
Cisco Technology, Inc.
Snapper Services Limited
Cancer Society of New Zealand Inc
Meteorological Service of New Zealand Limited (MetService)
Shott Beverages Limited
Avis Budget Group
New Zealand Transport Agency
Lewis Road Creamery Limited
Work highlights
- Successfully defended Merisant in a one week High Court trial on a passing off, trade mark and consumer law dispute.
- Argued a defended trade mark opposition against The a2 Milk Company involving the trade mark True a2.
- Assisting a range of New Zealand’s government entities on branding and communications campaigns, and strategically protecting their IP (both in NZ and internationally).
MinterEllisonRuddWatts
Praised for its ‘outstanding, client-focused service’, MinterEllisonRuddWatts is handling a growing number of corporate transactions, advising on the IP aspects of major deals, while also handling the commercialisation of IP assets, including structuring and licensing matters. The team also has demonstrable experience in trade mark registration and portfolio management, as well as IP litigation. In the firm’s Auckland office, practice leader Christopher Young ‘is at the top of his game’ when advising local and international clients on trade mark and licensing matters as well as transactional work, while Richard Wells is a key contact for IP commercialisation. Based in Wellington, commercial TMT partner John McCay, who is noted for his expertise in the New Zealand film industry, is another key name to note.
Practice head(s):
Christopher Young
Other key lawyers:
Richard Wells; John McCay
Testimonials
‘The team is extremely organised, very efficient and effective.’
‘Always accessible and with a quick turnaround. A special shout out to Christopher Young, who always delivers with great quality and relevance. Knowledgeable about our business and suggests the appropriate measures accordingly.’
‘Christopher Young has been simply amazing to work with and always taking such incredible leadership toward our future and growth needs.’
‘Specialist expertise in the IP space. Very well-versed in the ins and outs of the world of IP.’
‘I work mainly with Christopher Young on IP issues. Whatever you throw at him, he and his team are unflappable, methodical and thorough. His client service is excellent and he’s always available to talk through any issues and give recommendations.’
‘My desire to work with Chris Young is based on Chris’ sage advice, his very meticulous attention to detail, and his responsiveness. The fact that he is also very personable and a pleasure to work with are additional bonuses.’
‘Outstanding, client focused service. We confidently know that our IP and trademark work is in safe hands.’
‘Chris Young’s extensive experience, attention to detail and proactiveness are what we look for in a trusted adviser. Practical commercial judgement is always well received. It’s clear Chris is at the top of his game.’
Key clients
Livestock Improvement Corporation
Jucy Group
Calibre Partners
Southern Cross Healthcare
SKYCITY Entertainment Group Limited
Scholastic Inc
ASOS Plc
Westpac Banking Corporation
Westpac New Zealand Limited
Red Bird Ventures Limited
Tourism Holdings Limited
Essity Aktiebolaget
The New Zealand Merino Company Limited
RX Made for Good Limited
Icebreaker
VF Corporation
Thermomix Limited
Work highlights
- Advised Livestock Improvement Corporation on the IP aspects of the sale of its automation business, which was IP intensive to MSD Animal Health a division of Merck and Co.
- Advised on rebranding matters for Kiwibank, Trustpower and Refining NZ.
- Advised The New Zealand Merino Company Limited on the sale of its IP in its regenerative wool platform ZQRX, to a joint venture partnership named ‘Made for Good RX Limited’ between Silicon Valley technology platform Actual and New Zealand Merino.
Russell McVeagh
Noted for its ‘strong capability’ in litigation, Russell McVeagh also advises on the commercial aspects of all types of IP; from trade marks, design and copyright issues to joint ventures, licensing matters and collaboration arrangements. Counting local companies and national corporations among its key roster of clients, the team has demonstrable experience across the banking and financial services, manufacturing and media sectors. ‘Incredibly responsive’ litigator Joe Edwards leads the group and specialises in high-profile IP disputes and brand protection matters, while Liz Blythe, who is praised for her ‘exceptional technical knowledge and practical advice’, focuses on the IP and technology aspects of M&A transactions. Special counsel Brigette Shone is another key member of the team.
Practice head(s):
Joe Edwards; Liz Blythe
Other key lawyers:
Brigette Shone
Testimonials
‘The Russell McVeagh IP team is incredibly responsive and always makes you feel like you’re their No.1 client. The team gets under the hood of our business and tailors advice to make them very applicable to us and our business.’
‘Joe Edwards is incredibly responsive. He understands what we grapple with as in-house lawyers and tailors his advice depending on whether it will be shared directly with the business or practical advice for the in-house team to work with the business on.’
‘The team at Russell McVeagh have strong capability in this area. What makes them stand out is their commercial approach to business issues and their dedication to their clients.’
‘Liz Blythe’s technical knowledge and practical advice has been exceptional.’
‘Concise, commercial advice and consistently available and approachable. Great collaboration with other TMT teams in the firm.’
‘Joe Edwards is always able to provide commercial advice in short timeframes.’
Key clients
Bremworth Limited
Allen and Unwin New Zealand Limited
Television New Zealand Limited
Westpac New Zealand Limited
National Australia Bank
Work highlights
- Advising on the investment in the New Zealand Rugby Union by US private equity firm Silver Lake.
- Advising on two High Court cases for Bremworth in relation to breach of confidence.
- Acting for Television New Zealand in relation to the protection of news sources, jigsaw identification and confidential information.
Anthony Harper
With demonstrable experience across the food and beverage, manufacturing and retail sectors, Anthony Harper advises on IP-related transactions, trade mark protection and copyright issues, portfolio development and management, as well as anti-counterfeiting mandates. Counting a number of international brands among its key roster of clients, the team is well-placed to leverage the expertise of the firm’s corporate and litigation groups. From the Auckland office, IP litigator Mark Gavin leads the practice, and is noted for his capability in IP-related disputes and enforcement proceedings.
Practice head(s):
Mark Gavin
Other key lawyers:
Romina Seylani
Key clients
Ashcroft Homes
Caterpillar Inc
Chobani LLC
Coca-Cola Euro Pacific Partners
Deep Down Wines
Emma Lewisham
Intel Corporation
LittleOak Organics
Louis Vuitton
Much Moore Ice-cream
Paradise Beverages
Samoa Breweries
Skope Industries
Special Group
Under Armour
Watches of Switzerland Pty Limited
Work highlights
- Acting for Caterpillar in a trade mark opposition to an application by Tigercat Inc for TIGERCAT, which is part of an ongoing worldwide dispute between Caterpillar and Tigercat.
- Assisting Deep Down Wines Limited in clearing a new, global wine brand, which involved clearing multiple alternatives and settling on DEEP DOWN.
- Acting together with Corrs Chambers Westgarth on an application to remove WATCHES OF SWITZERLAND trade mark registered in New Zealand by the Singaporean operator of Watches of Switzerland.
Bell Gully
The multidisciplinary IP team at Bell Gully acts for clients across the beverages, manufacturing and consumer goods sectors on the IP-related aspects of M&A transactions and has demonstrable experience in disputes before the Court of Appeal. Commercial litigator Tania Goatley heads the group, where she handles trade mark infringement matters, passing off and comparative advertising issues. Other key members of the ‘efficient and responsive’ team include senior associates Jessica Miles, and Sebastien Aymeric, who is an IP litigator and patent attorney.
Practice head(s):
Tania Goatley
Other key lawyers:
Sebastien Aymeric; Jessica Miles
Testimonials
‘Clear expertise, efficient and responsive team, providing pragmatic and commercial advice.’
‘The team is professional, approachable and well-rounded in the advice they provide.’
Key clients
Resolution Life Group Holdings Limited
Integral Diagnostics Limited
Accenture
Advent Partners
Ministry of Education
Reckitt Benckiser
Frucor Suntory New Zealand Limited
Unilever
Abbvie
BMW
The Body Shop
Carter Holt Harvey
Frucor Brands International B.V
Fidelity Life
Bentley Systems
Goodman Fielder
NZTR
Ampol
Work highlights
- Representing Frucor Suntory New Zealand Limited (Frucor) in a dispute concerning Frucor’s trade mark registration for its distinctive ‘V Green’ colour, described specifically as the colour shade Pantone 376C.
- Advised Ampol on IP matters relating to its acquisition of Z Energy.
- Advising Unilever PLC and related entities on all of its IP matters in New Zealand and Pacific Islands, including clearance of brands for use, registration of brands, infringement advice, trade mark oppositions, trade mark maintenance, and all IP-related issues.
Duncan Cotterill
Counting public sector entities, start-ups, retail companies, food brands, as well as not-for-profit organisations among its key roster of clients, Duncan Cotterill’s practice remains one of the most active filers of New Zealand and Australian trade mark applications. In addition to prosecution work, the team counts IP-related transactions and litigation, commercialisation and licensing matters in its workload. In Wellington, Scott Moran, who focuses on the development and protection of trade mark portfolios, branding strategies and copyright issues, jointly leads the practice alongside Auckland-based Michael Moyes, who advises clients in the technology, retail and consumer goods sectors on the commercial aspects of IP-related transactions. Other key members of the team include senior associates Katy Stove and Edward Greig, who operate from the firm’s offices in Christchurch and Wellington, respectively.
Practice head(s):
Michael Moyes; Scott Moran
Other key lawyers:
Edward Greig; Katy Stove
Testimonials
‘The team is highly skilled and knowledgeable about IP law and litigation practice. The standout feature is their commercially aware approach to litigation. They are pragmatic and clear in their advice.’
‘Scott Moran is a long-standing IP partner. He runs a good, well-resourced team, establishes a good relationship with clients, and is highly effective at managing their litigation.’
‘Edward Greig brings a superior intellect and litigation skills to any dispute.’
Key clients
PGG Wrightson
Interprofessional du Gruyère
EMI (IP) Limited
Ceres Organics
MoleMap
Buy New Zealand Made Campaign Limited
Westland Milk Products
The New Zealand King Salmon Co. Limited
Eden Park Trust
Lumenart
Dialog Property
Mackersy Property
oVRcome
Institute of Geological and Nuclear Science
Oceania Football Confederation
Loft Foods
Remarkable People
Animates
TradeMe
Work highlights
- Advising GNS Science on all matters pertaining to the IP-related aspects of the RiskScape technology.
- Acted for EMI (IP) Limited, an entity under the control of Universal Music Group, on an Australasian trade mark litigation over brand protection for terms associated with EMI.
- Managing the trade mark portfolio of Westland Milk Products, one of the largest dairy processors in New Zealand.
Ironside McDonald Intellectual Property
Based in Auckland, founding directors Sue Irwin Ironside, who ‘provides commercially sound advice’, and ‘flawless’ Rachel McDonald ‘bring vast experience’ to boutique firm Ironside McDonald Intellectual Property. Counting local enterprises and international companies among its key roster of clients, the practice handles trade mark protection matters, design and copyright issues, as well as IP licensing agreements. Trade mark attorney Ingrid Seegars has experience in prosecution work, filing strategies and portfolio management in New Zealand, Australia and internationally, while trade mark consultant Solanda Chen - who has a strong network of clients in China - focuses on brand strategies.
Practice head(s):
Sue Ironside; Rachel McDonald
Other key lawyers:
Ingrid Seegars; Solanda Chen
Testimonials
‘The team is commercial, knowledgeable and attentive.’
‘This team go the extra mile every time. They are not just our lawyers, but critical members of our team.’
‘Sue Ironside and Rachel McDonald bring vast experience to the team. They are approachable and responsive.’
Key clients
Oatly AB
Millennium & Copthorne Hotels New Zealand
New Zealand Frost Fans Limited
Woods Glass New Zealand Limited
T F Group Limited
The Neuro Bar Limited
Auckland Regional Chamber of Commerce & Industry Limited
Safe365 Limited
World of Wearable Art Limited
Joshua Rogers
Critical Pixel Designs Limited
Nutrient Rescue NZ Limited
Abodo Wood Limited
Work highlights
Tompkins Wake
Noted for its capability in managing (frequently multi-jurisdictional) trade mark portfolios, Tompkins Wake’s also counts IP litigation, including opposition and revocation proceeding, IP due diligence, as well as design and copyright mandates in its workload – particularly for clients in the manufacturing, food and beverage, technology, and consumer goods sectors. Shelley Slade-Gully, who frequently acts for agribusinesses, is a key contact in the team and advises on trade mark strategies, IP licensing matters and disputes. In the firm’s Hamilton office, Slade-Gully jointly leads the practice alongside Kate Cornegé, who handles IP protection and enforcement matters.
Practice head(s):
Shelley Slade-Gully; Kate Cornegé
Other key lawyers:
Mark Lowndes; Robert Bycroft
Key clients
Barfoot & Thompson
Eagle Technology
New Zealand Plumbing World Group
Work highlights
- Advising Barfoot and Thompson on the IP-related aspects of branding and licencing matters.
- Advised Eagle Technology on the IP aspects of the sale and development of technology.
- Advised New Zealand Plumbing World Group on the management of its trade mark portfolio, including IP strategy advice, trade mark filing, submissions and renewals, IP-related disputes and trade mark protection.