Intellectual property in New Zealand

AJ Park

AJ Park provides ‘great communication, knowledge and responsiveness’. Recognised as one of New Zealand’s leading specialist IP practices, the firm is a market leader in patents, trade marks, designs, copyright, IP commercialisation, plant variety rights and litigation. National practice head Amanda Griffiths is recognised for her work in the FMCG sector, often working with global brands on commercialisation of IP assets, trade marks as well as advertising and regulatory matters. Patent attorney in New Zealand and Australia Damon Butler is the other key figure in Auckland.  The Wellington office houses commercial IP partner Penelope Catley and Anton Blijlevens, a patents specialist with significant focus on mechanical and manufacturing patents, as well as copy right and design. Duncan de Geest chairs the life sciences patents practice, also in Wellington.

Chapman Tripp

Practice head(s):

Matt Sumpter

Key clients

Fisher & Paykel Healthcare

Hyundai Motor Company

Academic Colleges Group/UP Education

Motion Picture Association (Disney, Netflix, Warner Bros., Columbia, Paramount)

Philip Morris

Kathmandu

Fonterra Co-operative Group

Sky Television

Jarden

Peak Products

Work highlights

  • Acting for Fisher & Paykel Healthcare in the largest piece of patent litigation in New Zealand legal history. FPH (a global medical equipment manufacturer) was defending patent infringement allegations brought by its arch-rival, ResMed (another global medical equipment company), covering hundreds of features of CPAP mask technology.
  • Counsel to Korean global industrial giant, Hyundai, in trade mark opposition proceedings brought by US bike company, Kona USA. The dispute has a global scale and involves Hyundai’s use of Kona for cars in light of Kona USA’s use and registration of KONA for bikes.
  • Advised Airways Corporation (Airways) on the technology supply contracts underpinning its programme to implement digital air traffic control towers monitored from centralised operation centres, as an alternative to brick-and-mortar towers at every airfield. Under the existing system, controllers are physically located at the airfield – they manage traffic from a tower that overlooks the runway and use multiple systems to gain a complete picture of the airfield. A digital tower allows air traffic to be directed by controllers in a remote location watching live footage of the airfield from high-definition video cameras.

Hudson Gavin Martin

As one of New Zealand’s top IP and TMT specialist boutiques, Hudson Gavin Martin is recognised for its national presence and deep bench strength in the IP space, attracting new instructions from established local businesses and multinationals such as the Vodafone Group, Sky TV, DiDi and Xero. The practice has expanded with the hire of special counsels Caitlin Hadlee and Sophie Flood and senior solicitor, Daniel Jung, bolstering its offering in contentious IP, consumer protection and marketing, and its experience working with Asia-Pacific and international brands. Jason Rudkin-Binks is the practices’ lead for non-contentious IP, acting primarily on trade marks, anti-counterfeiting, brand development and protection. Simon Martin ‘has a quiet professional confidence that is extremely reassuring’. He specialises in innovation joint ventures and M&A, commercialisation and protection of technology, media and data. Litigation partner Tim Mahood and senior counsels Sonya Hill and Sarah-Jane Lawson are also central to the practice.

Practice head(s):

Jason Rudkin-Binks

Other key lawyers:

Tim Mahood;

Testimonials

‘A strong trade mark practice.’

‘We instruct HGM on trade mark matters including prosecution and some enforcement. They are client-friendly, commercial and cost sensitive.’

‘We work with Jason Rudkin-Binks. He is very easy to deal with, responsive and accommodating. I really value the relationship.’

‘HGM Legal is a specialist IP practice which punches well above its weight. They have the perfect balance which you would expect of a boutique practice formed from larger firms to focus on this complex area.’

‘Tim Mahood is highly capable in intellectual property and related disputes, with a wealth of experience in the area. He and his partners demonstrate an ideal commitment to client needs.’

‘The firm is very strong on IP litigation, commercial IP, technology and start-ups in particular. Not many IP firms have their breadth of expertise, particularly on the non-contentious side. They are also good value for money.’

‘Tim Mahood for litigation is practical with a good overview of how the different IP rights fit together. Simon Martin and Edwin Lim for commercial IP and technology are pragmatic and commercial but well-respected drafters.’

‘The practice combines international expertise with local knowledge of IP in New Zealand. This combination gives a better perspective in resolving and avoiding issues.’

‘Jason Rudkin-Binks focuses on IP and his wealth of experience across markets gives a practical as well as legal perspective. He is good at explaining IP issues to those not familiar with the NZ legal system.’

Key clients

Vodafone

Bendon Lingerie

The Collective (Epicurean Dairy Limited)

LG Electronics (Australasia)

Woolworths New Zealand

NBA Properties Inc

NXP Limited

Vector New Zealand

Lion Dairy & Drinks

The Walt Disney Company

Work highlights

  • Assisting Steel & Tube, the largest supplier, distributor and processor of steel products in New Zealand with various critical IP issues such as day-to-day brand management, such as securing the new brand ROOF FAST; providing patentability, registrability and freedom to operate advice; and drafting intellectual property agreements.
  • Represented Zempire, one of Australasia’s largest camping equipment suppliers in strategically important infringement proceedings it commenced against an ex-customer and competitor for copyright infringement.
  • Advised Xero on the acquisition of the intellectual property in Invoici – an app that provides SMEs with the capability to send and receive e-invoices.

Simpson Grierson

Simpson Grierson is commended for its ‘utterly exceptional service’ ‘balanced with a commercial perspective’. The practice is a market leader in the specialised IP areas within sports, agriculture and pharmaceuticals , demonstrated in its involvement with the proposed divestment of a 15% share in New Zealand Rugby to Silver Lake, currently the biggest deal in New Zealand, and proposes a potential licensing of key NZ Rugby brands (including the famous ALL BLACKS). Richard Watts is a distinguished trade mark and IP assets litigator, he co-heads the group alongside special counsel Sarah Chapman, a specialist in all areas of non-contentious IP. Senior associate Raymond Scott and special counsel Anita Birkinshaw are the other key figures in the esteemed practice.

Practice head(s):

Richard Watts; Sarah Chapman

Testimonials

‘Simpson Grierson has a deep understanding of our business and the business environment in which we operate. The level of understanding separates them from other trade mark lawyers we have used and/or considered using in the past. We trust that, whatever the instruction, Simpson Grierson will provide thorough, pragmatic and timely trade mark advice which will, where required, highlight other areas of potential risk. In addition, we know that the level of advice will always meet our requirements. Depending on our requirements, Simpson Grierson lawyers are just as happy to be available for a short call or prepare a more formal opinion.’

‘Richard Watts is the client contact for all our intellectual property matters. We engage Simpson Grierson primarily in relation to trade mark intellectual property work. Although the majority of our trade mark work is domestic and transactional in nature, Richard is also required to advise on litigious matters as well as on international trade mark filing strategies. Regardless of the context, Richard’s knowledge of domestic and international trade mark law and developments is extensive and highly valued by our company. In addition, Richard is always alert to how other legal principles apply to the trade mark matter at hand and, having considered relevant legal principles, provides comprehensive advice.’

‘The team at Simpson Grierson is first-class when it comes to intellectual property matters. Whether it is portfolio management, for which the team is second to none in New Zealand, or complex litigation matters, they are a cut above the rest.’

‘Richard Watts is a formidable intellectual property litigator – thorough, on-point, tactile and knows exactly what is happening at all times and keeps clients up-to-date.’

‘Raymond Scott is exceptional when it comes to managing large and diverse intellectual property portfolios.’

‘In my experience, this is the leading IP practice in New Zealand. I would go to Simpson Grierson as my first choice.’

‘Richard Watts is outstanding. He has deep knowledge of the law, and is highly commercial and responsive. Senior associate Kate Tidbury and special counsel Sarah Chapman are also fantastic.’

Key clients

The a2 Milk Company

Heineken / DB Breweries

Google

New Zealand Olympic Committee and the International Olympic Committee

Livestock Improvement Corporation

New Zealand Cricket

Novartis

Sky Network Television Ltd

Netball New Zealand

Procter & Gamble

New Zealand Comfort Group Ltd

Wet & Forget

Work highlights

  • Representing Energy Beverages LLC in respect of key competitor, Frucor’s attempt to obtain a trade mark registration for the colour green for packaging of it energy drinks. The matter is currently ongoing in the Court of Appeal and is the leading case in New Zealand on the ability to register colours, including both inherent registrability and also enforceability.
  • Oversaw the brand protection and enforcement strategy for the 2020 Tokyo Olympics.
  • Acting for Martin & Pleasance in defending High Court interim injunction proceedings brought by Nelsons (Bach Remedies) in respect of the launch of sleep product called ‘RestQ’.  Nelson/Bach are the owners of the world famous RESCUE and RESCUE REMEDY brands, used for sleep assistance. The client, Martin & Pleasance has launched a competing product called RestQ.  The matter involves trade mark infringement allegations relating to the use of RestQ (alleged to infringe RESCUE) and also use of BACH on pack.  

Bell Gully

Other key lawyers:

Sooyun Lee

Key clients

Vodafone Group PLC

Apax Partners LLP

Resolution Life Group Holdings Limited

Westland Co-Operative Dairy Company Limited

ESW Holdings, Inc

Stride Property Group

Hellers Limited

Abbvie

Reckitt Benckiser

Frucor Suntory New Zealand Limited

Unilever

Abbvie

BMW

The Body Shop

Work highlights

  • Representing Frucor Suntory New Zealand Limited (Frucor), producer of the classic V energy drink, in a dispute concerning Frucor’s trade mark registration for its distinctive ‘V Green’ colour, described specifically as the colour shade Pantone 376C.
  • Advised Resolution Life on the New Zealand aspects of its acquisition of AMP’s wealth protection and mature businesses (AMP Life) for total cash and non-cash consideration of approximately AU$3 billion. AMP Life is New Zealand’s second largest life insurer.
  • Advises Unilever PLC and related entities on all of its IP matters in New Zealand and Pacific Islands.

Buddle Findlay

Practice head(s):

John Glengarry; Philip Wood

Other key lawyers:

Hamish Selby; Anita Birkinshaw

Testimonials

The team has always been very client- and solution-focused. This means that the Buddle Findlay team is not only personable to deal with, but also delivers results.’

‘I have dealt on IP matters with special counsel Hamish Selby. He has always been very personable to deal with and he has delivered outstanding results. Hamish was very good at explaining the strategy, and updating informing of progress along the way. Ultimately the result was an unexpected success for us.’

Key clients

Alibaba Group

British American Tobacco

WWF – World Wide Fund for Nature

The University of Auckland

Earthwise Group

UMF Honey Association

Sky Television

Freightways Group

Mr Apple

Auckland Council and its Council Controlled Organisations (ATEED, Panuku and Regional Facilities Auckland)

Green Cross Health

Work highlights

  • Advising MHAS on the protection of the term “Manuka Honey” in New Zealand and overseas as a designation of a special type of honey from New Zealand.
  • Successfully acting for Zespri against formerly licensed growers, claiming breach of contract and the Plant Variety Rights Act (PVR Act) following alleged unauthorised supply and licensing of kiwifruit in China.
  • Successfully acting for Sky in claims against sellers of pre-loaded Kodi boxes that enable users to view pirated copyright content.

Dentons Kensington Swan

Practice head(s):

Charlotte Henley; Jenni Rutter

Other key lawyers:

Nadia Ormiston

Testimonials

‘The world of international trade marks is complex for those outside it and at times appears to defy logic, particularly when looking globally. Jenni Rutter was able to really humanise this for us and give advice that felt both right-sized for the organisation and would future proof it. She was able to simplify and explain the strategy as well as the technical and pragmatic aspects and understood our limitations of budget. I had not been through the trade mark process before and she was answered my many questions with patience, intelligence and a really feeling of putting us, the client, at the heart of it. As a charity, the trade mark process was one of prioritisation with funds so Jenni gave us advice to help us prioritise the funds we had set aside for this. I have complete confidence in Jenni’s ability to guide us through this process, provide outstanding advice that we could make decisions with and also set expectations clearly. She is always professional but also warm and genuinely interested in our organisations growth and work.’

Key clients

Helen Clark, former Prime Minister of New Zealand

Merisant Company

Danone Group

Tourism New Zealand

Kellogg Company

Cisco Technology, Inc.

T&G Global Ltd

Aranz Geo Limited (now Seequent Limited)

Meteorological Service of New Zealand Limited (MetService)

Shott Beverages Limited

BurgerFuel

New Zealand Transport Agency

Lewis Road Creamery Limited

Airways New Zealand

Calvin Klein, Inc

Centrality Investments Limited

Crimson Consulting Limited

Work highlights

  • Advised Pastifico Rana S.p.A and Bluerock Limited on a High Court claim by Goodman Fielder for trade mark infringement and breach of our Fair Trading Act, including counterattacking with seven trade mark invalidity and/or revocation actions.
  • Advised Tourism NZ, a government entity responsible for marketing New Zealand to the world from a tourism perspective. The firm is responsible for its IP protection/enforcement and marketing campaigns and all related commercial contracts, such as IP licences and influencer/advertising agreements.
  • Acting as trade mark lawyers for successful New Zealand technology and software development company Aranz Geo Limited (now trading as Seequent) that operates in over 90 countries, and has more than a dozen offices overseas.

MinterEllisonRuddWatts

Practice head(s):

Christopher Young

Other key lawyers:

Richard Wells

Testimonials

‘Chris Young is my primary point of contact and I have referred clients to him, who have thanked me afterwards for the introduction to Chris. He is able to address all of their IP needs, which is not by providing simple black letter law advice, but rather informed commercial IP advice, which is why the feedback I receive from my referrals is nothing short of great.’

‘The firm is highly specialised and focused with expertise in the specific areas that we and our clients require. Fast turnaround and a good team approach to issues that arise.’

‘We deal mainly with Chris Young , the partner heading the IP activities. We have an excellent relationship with him and he is interested in how our entire business operates. I have a better personal relationship than I have experienced over the years with his equivalent in other large law firms.’

‘The team is knowledgeable, professional, responsive.’

Key clients

Karen Murrell Enterprises Limited

Scholastic Inc.

Aktiebolaget SCA Finans and the new Essity Aktiebolaget group including BSN medical GmbH

ASOS PLC

Westpac Banking Corporation and Westpac New Zealand Limited

Tourism Holdings Limited

SKYCITY Entertainment Group Limited

Two Degrees Mobile

Society for the Prevention of Cruelty to Animals

New Zealand Cricket

The Institute of Directors in New Zealand Limited

Education New Zealand

Work highlights

  • Advised Froneri (its ice cream business is the third-largest ice cream company in the world) on an IP intensive transaction acquiring Fonterra’s iconic Tip Top ice cream business involving worldwide trade marks and complex licensing.
  • Handling the worldwide IP strategy and portfolio management work for New Zealand based leading cosmetics company Karen Murrell Enterprises Limited’s international “KAREN MURRELL” and “KM” brands including managing its trade mark and other registered IP portfolio worldwide. Work includes general portfolio management and strategy, a range of disputes including significant action in its largest market – China, challenging Humingxian and his local companies that had registered the KAREN MURRELL trade mark ahead of Karen Murrell Enterprises in China.
  • A major New Zealand group and publicly listed company operating casinos, restaurants and bars in New Zealand and Australia. The firm assists SKYCITY with all its strategy for IP worldwide, advising on a wide range of IP matters including brand strategy and portfolio management in New Zealand, Australia and internationally, IP advisory work, disputes, oppositions, brand clearance, trade mark registration, IP licensing and contracts.

Russell McVeagh

Practice head(s):

Joe Edwards; Liz Blythe

Other key lawyers:

Brigette Shone

Testimonials

‘The Russell McVeagh IP team continues to advise on contentious IP issues for our business and has been doing an exceptional job of supporting us as we navigate complex IP issues.’

‘Joe Edwards is exceptionally commercial and pragmatic. He has an impressive ability to be able to understand the client’s business and what the key drivers are behind advice. It’s this pragmatism that makes Joe a pleasure to deal with and a “go-to” when you need quick, reasoned advice. Importantly, Joe isn’t afraid to take a stand on an issue which is refreshing.’

‘The IP team, and Joe Edwards, are technically excellent and combine this with astute commercial understanding of the client’s gaols to achieve optimal outcomes.’

‘Joe Edwards is pragmatic, astute and committed to achieving a good outcome for his clients.’

Key clients

Samsung Electronics New Zealand

Complectus Limited

Ford

Uber

Fonterra

Mānuka Health New Zealand Limited

Google New Zealand Limited

Credit Corp Financial Solutions Pty Ltd

Meridian

McDonald’s

Counties Power Limited and ECL Group Limited

Work highlights

  • Acted as lead deal counsel to Fonterra on the sale of its interest in DFE Pharma, which included primary responsibility for deal management, SPA preparation and negotiation (together with Dutch counsel), negotiation of a significant volume of ancillary documentation and deal execution.
  • Represented Ballance, who brought a successful interim injunction proceedings in the Auckland High Court against Quin Environmentals (NZ) Limited in relation to claims and the use of marks and labels in New Zealand.
  • Acted for Mānuka Health New Zealand Ltd (MHNZ) in relation to injunction proceedings brought by MHNZ’s distributor of its Mānuka honey products in Japan, Cycochem Bio Co., Ltd (CCB) in the High Court following MHNZ’s termination of the distribution contract.

Anthony Harper

Mark Gavin is Anthony Harper’s sole IP partner; he brings over 35 years' experience advising on all IP related transactions, trade marks and copy right, as well as related disputes and IP enforcement. Active clients include market-leading companies such as Coca-Cola Euro Pacific Partner, Paradise Beverages and Louis Vuitton. Gavin is also sought after for his advice on commercialisation and licencing, brand development, protection and implementing anti-counterfeit strategies, both domestically and internationally.

Practice head(s):

Mark Gavin

Key clients

Caterpillar Inc

Deep Down Wines

Intel Corporation

LittleOak Organics

Louis Vuitton

Much Moore Ice-cream

Paradise Beverages

Samoa Breweries

Skope Industries

Under Armour

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.
  • Advising Deep Down Wines Limited and providing assistance in clearing a new wine brand on a global level which involved clearing multiple alternatives and finally 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.

Duncan Cotterill

Duncan Cotterill’s clients range from public sector, to start ups, retail and food brands, through to not-for-profit. Trade mark portfolio management and IP protection is a key area of work, lead by Scott Moran in Wellington, who has built up a strong trade mark and commercial practice with a national reputation advising major New Zealand and international brands. In the same office, senior associate Edward Greig works to bring and defend claims in copyright, trade mark, registered designs, and plant variety rights. Michael Moyes spearheads the commercial IP practice from Auckland, specialising in technology, commercialisation strategies, IP licensing, R&D collaboration and joint ventures. He also undertakes a significant amount of work in IP protection and enforcement.

Practice head(s):

Michael Moyes; Scott Moran

Other key lawyers:

Edward Greig

Testimonials

‘The team is incredibly well organised and efficient. To the point advice, they provide simple solutions when needed and can be creative when there is need for it, but without a song and a dance. Fees are reliable and predictable. The quality of work is excellent and the team is easy and enjoyable to work with.’

‘Scott Moran is calm and experienced and a pleasure to work with. He understands the commercial aim of what we try to achieve and ensures that advice and work always reflects that.’

Key clients

IHC

Part Time Rangers

Trade Me

Animates

PGG Wrightson

Smiths City

New Zealand King Salmon

City Fitness

CoreLogic

Sealord Group

Work highlights

  • Assisted Tower Insurance to deploy a market-leading App that tracks vehicle driver behaviours and rewards safe drivers with cheaper vehicle insurance premiums. The app received extensive press coverage and debate. This is revolutionary for the New Zealand market as car insurance is not compulsory for vehicle owners and is about a 1/3 of all insurance claims made in New Zealand.
  • Managing Buy New Zealand Made Campaign’s trade mark portfolio, and assists with the enforcement and licensing of its trade marks. Buy New Zealand Made Campaign owns one of the most well-known certification trade marks in New Zealand, and we recently acted in a dispute relating to misuse of its logo by a far-right, white supremacist group attempting to set up a directory of New Zealand brands for its members using our client’s “New Zealand Made” logo.
  • Assisting Interprofession du Gruyère with its application for a Certification Mark in New Zealand, as part of a global project.

Ironside McDonald Intellectual Property

Ironside McDonald Intellectual Property is an Auckland boutique practice founded by partners Sue Irwin Ironside and Rachel McDonald, combining their ‘many years of experience at big firms in New Zealand’ with ‘the personal attention you get from small firms’. In October 2020 the firm further expanded with the addition of trade mark attorney Ingrid Seegars, who lends her New Zealand, Australia and international experience in trade mark prosecution and enforcement, filing strategies and portfolio management. Trade mark consultant Solanda Chen also joined the growing team, bringing her experience and network of clients in China. In early 2021 Sue Burdett joined the group, specialising in managing trade marks, patents, designs and domain names portfolios.

Practice head(s):

Sue Ironside; Rachel McDonald

Testimonials

‘Ironside McDonald is my go-to firm for any IP matters in New Zealand and Australia. This is because I much prefer working with smaller firms, due to the personal attention you get. I feel like I always have immediate and direct access to them. However, the partners of the firm also have a background of working for a big law firm for many years, so you’re basically getting the best of both worlds with them: small firm attention plus big firm expertise.’

‘Both Sue Ironside and Rachel McDonald have a vast amount of experience. If you work with any firm greater than about 15 people, it is almost impossible to work directly with an attorney with that much experience. They are also wonderful people. I consider them friends and colleagues. They have helped me in the past, not just with IP work, but also with other business and career opportunities.’

‘Great for filing and prosecution in New Zealand.’

‘I have known Sue Ironside for many years when she worked at her previous firm and I always admired her work ethic and client focus. She has now introduced me to Rachel McDonald who is very much of the same mould.’

‘The team is intimate with our business and understand what we are trying to achieve and what our business objectives are.’

‘We trust the legal opinions provided by Sue Ironside and Rachel McDonald.’

Key clients

Quadbeam Technologies Limited

Dualcom Technologies Limited

Gruma, S.A.B De CV

The Ddrops Company Inc.

Environ Skin Care (Proprietary) Limited

Safe365 Limited

Ingeneous Limited

Federation International de Basketball (FIBA)

Ultimate Bowls New Zealand Limited

New Zealand Frost Fans Limited

Skin Shield Brands Limited

Abodo Wood Limited

Arjo IP Holding Aktiebolag

SHL Group Limited

ECL (IP) Limited

The Good Pet Home Limited

Real Vitamins Limited

Work highlights

  • Assisted Euro Corporation Limited on reviewing current protection in New Zealand; expansion of current protection and consolidation of different subsidiaries into one company. The team advised on the development of new trade mark and registrability and enforcement issues.
  • Advised TF Group Ltd on consolidation of intellectual property portfolio, review of current protection and currently used trade marks. Developed a strategy to bridge cap between unregistered and registered trade marks.
  • Assisted Millennium & Copthorne Hotels New Zealand on consolidation of IP portfolio and protection of current trade marks.

Tompkins Wake

Other key lawyers:

Mark Lowndes

Testimonials

‘Shelley Slade-Gully is personable and authentic. She touches base beyond simply ‘the work’ and checks in on clients regularly at a personal level.’