Intellectual property in New Zealand

AJ Park

AJ Park has a long history as one of Australasia's leading IP firms, having been founded 127 years ago, and it continues to focus exclusively on trade mark and IP matters for solo inventors, entrepreneurs, SMEs, government institutions, multinationals and major listed companies. It employs 30% of the total number of patent attorneys in New Zealand. In Auckland, Anton Blijlevens is a key player in the firm's large engineering & ICT patents group, in which David Simunic is also recommended. The firm has a deep bench of life sciences patents specialists including Anton Gibson, and a large roster of trade mark specialists including Amanda Griffiths. In Wellington, managing partner Damian Broadley  is the key contact for trade marks and Kate McHaffie is the key litigation principal. Mark Hargreaves leads the firm's commercial and strategy practice.

Baldwins

Baldwins has 'a great team that understands clients' needs'. Established 120 years ago, the firm is the second-largest specialist IP boutique in New Zealand. It excels in technically complex matters including including copyright, patent and registered design disputes. It acts for blue-chip clients in mechanical and electrical engineering, pharmaceuticals, life sciences, biotechnology, software and IT. Penny Catley in Wellington is head of the trade marks practice. In Auckland, Wes Jones is head of patents, Sean Brogan leads on commercial matters, and barrister and solicitor Paul Johns is head of the litigation group. Senior associate Lucy Hudson is a rising star trade mark and patent attorney. Wellington-based senior associate Kate Giddens is recommended for trade mark protection, management and enforcement. Sue Ironside left to start her own practice Ironside McDonald Intellectual Property.

Testimonials

“Kate Giddens  understands our business and works hard to help us understand our options.”

Key clients

Auckland UniServices Limited

Amphenol Phitek Limited

PepsiCo, Inc

Comvita

Harley-Davidson Asia Pacific Ltd

World of WearableArt Limited

Work highlights

  • Advised World of WearableArt Limited on the copyright implications of artworks submitted for the WOW™ Awards, including reviewing the submitted work, inspiration documentation, and other materials.

Chapman Tripp

Chapman Tripp has one of the most experienced IP teams among the New Zealand's full-service firms. It represents some of the country's largest businesses including Fisher & Paykel Healthcare and Fonterra on business-critical IP matters, as well as acting for leading global technology and entertainment companies. The firm's active corporate practice is backed up with extensive IP commercialisation expertise and a strong contentious IP practice. IP, competition law and civil litigation specialist Matt Sumpter leads the practice from Auckland, where Kelly McFadzien handles corporate matters with an emphasis on IP, notably in the TMT sector. IP and TMT litigation partner Justin Graham and rising star senior associate Tom Cleary are also highly recommended. Tim Sherman is the key partner in Wellington for outsourcing, IP and TMT transactions.

Practice head(s):

Matt Sumpter

Testimonials

“I have worked with Kelly McFadzian on two transactions recently. She is across the detail of some significant complexities but is also able to cut-through it all and provide a simple commercial perspective and recommended approach.”

Key clients

Fisher & Paykel Healthcare Limited

Fonterra Co-operative Group Limited

SKY Network Television Limited

NZME

MediaWorks

Motion Picture Association of America

Mercury NZ Limited

Philip Morris

Les Mills International

Work highlights

  • Advised Fisher & Paykel Healthcare on a large and global patent litigation, defending claims brought by ResMed.
  • Provided the IP advice to UK private equity firm HgCapital’s acquisition of Orion Health’s majority stake in its core Rhapsody business for NZ$255m.
  • Counsel to Korean global industrial giant Hyundai Motor Company in trade mark opposition proceedings brought by US bike company Kona USA.
  • Advising Academic Colleges Group (and its former ultimate owner, Pacific Equity Partners) on the sale and separation of the schools and educational pathways businesses of Academic Colleges Group.
  • Counsel to the Motion Picture Association of America representing Twentieth Century Fox, Disney, Paramount, Universal, Columbia and Warner Bros. in continuing copyright litigation against notorious internet entrepreneur “Kim Dotcom”.

Simpson Grierson

Simpson Grierson in Auckland has a large and highly specialised IP practice that has a prominent position in high-end and complex IP opposition, litigation and commercialisation matters. It is particularly well known for complex trade mark disputes and, across the broader contentious IP market, the firm had a key role in all of the most significant cases before the courts in New Zealand in 2019. IP commercialisation expert Richard Watts and special counsel Sarah Chapman, who is highly regarded for non-contentious matters, lead the practice following the Earl Gray's decision to leave the firm and practice as a barrister. Rising star senior associate Raymond Scott is a key adviser to some of the firm's largest corporate clients.

Practice head(s):

Richard Watts; Sarah Chapman

Other key lawyers:

Raymond Scott

Testimonials

“Simpson Grierson’s knowledge of domestic and international intellectual property law and developments is extensive and highly valued by our company.”

“The lawyers are always alert to how other legal principles apply to each intellectual property matter at hand and, having considered relevant legal principles, they provide comprehensive advice.”

“We engage Richard Watts for trade mark intellectual property work. Although the majority of that work is is domestic and transactional in nature, Richard is also required to advise on contentious matters as well as on international trade mark filing strategies. His knowledge of domestic and international intellectual property law and developments is extensive.”

“Richard Watts’ knowledge of our business and the business environment separates him from other intellectual property lawyers we have used or considered using in the past. I trust that, whatever the instruction, Richard will provide thorough, pragmatic and timely trade mark advice.”

Key clients

The a2 Milk Company

Heineken / DB Breweries

Google

New Zealand Olympic Committee and IOC

Livestock Improvement Corporation

New Zealand Cricket

Novartis

Sky Network Television Ltd

Netball New Zealand

Bayer

New Zealand Comfort Group Ltd

Work highlights

  • Advised The a2 Milk Company on its multi-billion-dollar expansion of its brands and patented products into a number of new markets – including China, USA, Europe and South East Asia.
  • Oversaw the brand protection and enforcement strategy for the 2016 Rio Olympics, the 2018 Winter Olympics in PyeongChang, and the 2018 Commonwealth Games in Gold Coast.
  • Represented NZ Fintech (Moola), a New Zealand finance company, in an interim injunction case before the High Court regarding the unauthorised use of the trade mark MOOLA within AdWords by its competitor (Wallet Wizard).
  • Acted for Nippon Paint Holdings in its acquisition of 100% of the shares in DuluxGroup Limited, a leading paint manufacturer listed on the Australian Stock Exchange, which commenced business in 1904.
  • Advised Livestock Improvement Company on its future research arrangements with the Ministry of Primary Industries.

Anthony Harper

Anthony Harper has significantly expanded its client base over the last two years, with clients such as Intel, Sony and Louis Vuitton engaging its services. The firm has significant expertise in transactional IP matters, commercialisation, trade marks, disputes and enforcement, IP advisory and data protection and privacy work. In Auckland, highly experienced IP litigator Mark Gavin is leading light in contentious matters and is regularly called in to advise on large, high-value and complex proceedings. Corporate partner Chris Dann in Christchurch is heavily involved in the IP practice. Former practice head Michael Moyes has moved to Duncan Cotterill and former senior associate Jullion Parker has taken up a directorship at Potter IP.

Other key lawyers:

Mark Gavin; Vaash Singh

Testimonials

“They have the ability to combine expert legal advice with creative commercial strategies, which is a rare quality.”

“The IP team of Anthony Harper provides excellent quality, as well as timely and commercial advice – the three key attributes needed. Most importantly, it is the superb judgement of the key partner, Mark Gavin, which stands out.”

“Michael is both extremely responsive and proactive.”

Key clients

Anheuser – Busch

Auckland International Airport

Bostock Group Limited

Clearpoint Limited

EziBuy

Home Direct Limited

Intel Corporation

Louis Vuitton

Mercedes Benz

Much Moore Ice Cream

My Republic

NZ Fintech Limited

Panasonic

Sony Corporation

Special Group

Under Armour, Inc.

Vocus (New Zealand) Limited

Waiwera Properties Limited

Xtend-Life Natural Products

Work highlights

  • Acting for Caterpillar Inc. in trade mark oppositions based on its famous CAT mark against applications for TIGERCAT lodged by Tigercat International in relation to forestry equipment.
  • Advised natural health and nutritional supplement products company Xtend-Life Natural Products Limited on global brand protection and the defence of trade mark rights in New Zealand, the U.S. and other countries.
  • Assisted NZ Fintech Limited with the enforcement of its trade mark rights and in particular, with successful High Court proceedings against a competitor that adopted its trade marks as Google AdWords.
  • Acting for Vocus New Zealand, the New Zealand arm of an international telecommunications business located in Sydney, in the protection of core consumer brands.
  • Assisted Alphagen NZ Limited with the protection of its valuable intellectual property assets, primarily through the registration of trade marks for its core brands.

Bell Gully

Bell Gully's Auckland office is home to a large multi-disciplined IP team. Its primary focus is on high-level strategic work on significant corporate transactions, as well as high-profile contentious matters and trade mark work for blue-chip corporate clients. Its recent work includes one of the most prominent copyright infringement cases in the market, as well as trade mark portfolio management for  key clients such as Unilever and Reckitt Benckiser. Partner Alan Ringwood, who leads the IP and media practices, and special counsel Sooyun Lee, who is head of one of the largest trade mark practices at a full-service firm, are the principal practitioners. The firm has extensive IP litigation expertise with Tania Goatley the lead partner for media, advertising, privacy law and IP matters.

Practice head(s):

Alan Ringwood; Sooyun Lee

Other key lawyers:

Tania Goatley

Key clients

Vodafone Group PLC

Apax Partners LLP

Cigna International Corporation

Qingdao Haier Co.Limited

Resolution Life Group Holdings Limited

ESW Holdings Inc

Hellers Limited

Platinum Equity

Various

Unilever

Reckitt Benckiser

Frucor Suntory New Zealand Limited

Abbott Laboratories

Abbvie

BMW

The Body Shop

Work highlights

  • Advised Vodafone Group Plc on its sale of Vodafone New Zealand Limited to a consortium of Infratil and Brookfield Asset Management Limited for NZD$3.4bn, making it one of the largest New Zealand M&A transactions on record.
  • Advised British private equity firm Apax Partners LLP on its successful bid for New Zealand’s largest e-commerce company, Trade Me, for NZD$2.56bn.
  • Acted for American worldwide health services organisation and specialist insurer, Cigna Corporation, in relation to its acquisition of life insurance company, OnePath Life (NZ) Limited, from ANZ Bank New Zealand Limited for approximately $700,000,000.
  • Advised Haier 690, a company listed on the Shanghai stock exchange, on its acquisition of 100% of Haier New Zealand Investment Holding Company Limited.
  • Acted for Resolution Life on the New Zealand aspects of this acquisition of AMP’s wealth protection and mature businesses for total cash and non-cash consideration of A$3.3bn.

Buddle Findlay

At Buddle Findlay, 'the team has really good broad knowledge and it can tap in to and a great level of understanding about the NZ market'. The firm has a deep bench of IP specialists lawyers, backed up by litigators with extensive experience in contentious IP matters. It provides the full range of IP services based on the collective experience of its team gained at international law firms, patent attorney firms, and in public sector and industry roles. Last year, the firm maintained its 100% record in domain name disputes before the Domain Name Commission. John Glengarry and Philip Wood lead the practice from Auckland, where partner Allan Yeoman and special counsel Hamish Selby are also recommended. In Christchurch, litigator Kelly Paterson handles IP as part of a broad dispute resolution practice. Amy Ryburn in Wellington specialises in major ICT contracts, outsourcing and the IP aspects of corporate transactions.

Practice head(s):

John Glengarry;  Philip Wood

Testimonials

John Glengarry leads a team of dedicated and enthusiastic IP lawyers who are extremely approachable and responsive. Their ability to solve complex IP issues is second to none, as is their knowledge of subject matter and expertise in communicating in a meaningful way such issues.

Hamish Selby knows our history well and this means there is less explaining to do and we get to good advice and recommendations quickly.

Thoroughly reliable. Prompt. Efficient. They take the time to understand the clients.

Key clients

Colgate-Palmolive

The University of Auckland

British American Tobacco

WWF – World Wide Fund for Nature

Alibaba Group

UMF Honey Association, Inc.

SKY Network Television Limited

Freightways Group

Mr Apple

Earthwise Group

Auckland Council and its Council Controlled Organisations, including ATEED, Panuku and Regional Facilities Auckland

Work highlights

  • Acting for Manuka Honey Appellation Society, Inc. to protect the term ‘Manuka Honey’ as a designation of a special type of honey from New Zealand.
  • Successfully defencded a New Zealand financial services provider in a trade mark infringement and passing off action involving use of Google AdWords.
  • Conducting pre-filing trade mark searches for a tobacco manufacturer and distributor’s trade mark matters in New Zealand, and advising on legal risk in using and registering these marks subject to the outcome of the searches.
  • Conducting pre-filing trade mark searches for Alibaba Group’s trade mark matters in New Zealand, and advising on the legal risk in using and registering these marks subject to the outcome of the searches.
  • Acting for a beverage manufacturer in trade mark invalidation proceedings in China.

Hudson Gavin Martin

Specialist boutique Hudson Gavin Martin in Auckland handles a broad spectrum of commercial and consumer law, corporate law, regulatory compliance, and dispute resolution in matters with a strong focus on technology or IP. Its clients range in size from early stage start-ups through to large well-established NZ businesses and multinationals. The 'very knowledgeable and user friendly' Jason Rudkin-Binks leads the practice. As part of his IT practice, Simon Martin advises on the commercialisation and protection of technology media and data. The firm also calls upon the patent expertise of IP and litigation partner Tim Mahood. Senior associates Laura Carter, who joined from AJ Park, and Caroline Herbert also play key roles in the practice.

Practice head(s):

Jason Rudkin-Binks

Testimonials

“Jason Rudkin-Binks always looks for practical, commercially sensible, solutions to our legal problems.”

“Hudson Gavin Martin are the bee’s knees for intellectual property in NZ. The practice has both breadth and depth of experience and an exceptional feel for the area. The firm is responsive and committed and it understands its clients.”

“Simon Martin and Tim Mahood are extremely capable, top-shelf lawyers. They reflect the key values of this extraordinary boutique firm.”

Key clients

BBC

Bendon

Blackmarket.co.nz

Epicurean Dairy Ltd

EROAD

Foodstuffs North Island

Genesis Energy

GeoOp

Hallenstein-Glassons Ltd

Hemisphere Freight Services

IAG Group

InternetNZ

LG Electronics

Lion Group (Beverages and Dairy divisions)

Napier Tool & Die

Ngati Whatua Orakei

NIWA

Performance Lab Technologies

Progressive Enterprises

Shell

South Pacific Pictures

Stuff (previously Fairfax Media)

Television New Zealand

Universal Music

Vector

World Vision

Work highlights

  • Advising American President Lines Ltd on brand protection in New Zealand, and in particular, the defence of an opposition to its local trade mark application for a key brand by a New Zealand based entity.
  • Assisted BBC Studios Distribution Limited with IP issues relating to a well-known and highly recognisable programme brand.
  • Advising EROAD on matters relating to brand strategy, brand development and brand protection and assisting the unique and ground-breaking business to protect and enforce its rights offshore.
  • Advising The Collective, an innovative and rapidly growing dairy company, in respect of its brand protection, new product & brand development, registration and advertising strategies, including advising on the launch of an innovative new product line.
  • Advising The Blind Foundation on all aspects in relation to brand strategy, brand development, brand protection and on a rebrand intiative.

James & Wells

James & Wells is an intellectual property boutique with offices in Auckland, Christchurch, Hamilton and Tauranga. The firm handles patents, trade marks, designs, IP commercialisation and contentious matters, both domestic and international. It is the largest independent domestic filer of trade marks in New Zealand. Gus Hazel in Auckland and Ian Finch in Hamilton are among many of the firm's practitioners who are both barristers and patent attorneys. Auckland-based senior associate and barrister Sébastien Aymeric has extensive experience in copyright, trade marks, patents, confidential information and contract disputes. Founding partner Ceri Wells, who works between Hamilton and Christchurch, is a key adviser on IP strategy.

Work highlights

  • Advised Open Country Dairy Limited on a series of cases (progressing in both Australia and New Zealand) concerning the ability of traders to use the term “A2” in connection with various milk products characterised by their content of the so-called A2 protein.
  • Acted for ResMed Limited in an on-going patent dispute with Fisher & Paykel Healthcare Limited involving numerous pre-grant patent opposition proceedings and High Court litigation.
  • Acted for Gallagher Group Limited on matters arising from the on infringement of its patents by Taragate Limited, and formulated a strategy for asserting the patents while maintaining a sound relationship with the distributor.

Kensington Swan

Dentons Kensington Swan handles a broad mix of contentious and commercial IP matters, including IP development, enforcement and commercialisation work that ranges from strategic filing strategies through to major transactions and big-ticket litigation. Among its clients are leading domestic companies such as BurgerFuel and Crimson Education, and blue chip global businesses such as Unilever and Danone. Brand protection and Plant Variety Rights protection are key areas of specialist expertise. Jenni Rutter in Auckland and Charlotte Henley in Wellington lead the practice. Rutter is an IP enforcement specialist and an experienced advocate with more than over 20 years’ experience working IP owners in the UK and New Zealand. Commercial IP expert Henley handles rebranding, launching to market and IP commercialisation, as well as disputes.

Practice head(s):

Jenni Rutter; Charlotte Henley

Testimonials

“The firm has a highly skilled team that is always clear and concise with any IP queries or requirements.”

“Jenni Rutter is our ‘go-to’ person. She cuts through the legal terminology and clearly and quickly summarises the issue and what is required in layman’s terms.”

Key clients

Unilever

General Motors

Merisant

Danone Group

Tourism New Zealand

Kellogg Company

Cisco

T&G Global Ltd

Aranz Geo Limited (now Seequent Limited)

Meteorological Service of New Zealand Limited (MetService)

Shott Beverages Limited

BurgerFuel

HSBC

Lewis Road Creamery

Calvin Klein, Inc

Centrality Investments Limited

Work highlights

  • Acting as  IP counsel to innovative New Zealand blockchain technology business Centrality Investments Limited, which has developed a number of branded solutions for the global market.
  • Acting as IP counsel providing strategic IP advice including protection of Astute Financial Management’s  branding as it expands into the New Zealand market from Australia.
  • Advising Tourism New Zealand on trade mark portfolio management internationally and the enforcement of IP rights in New Zealand.
  • Handling the protection and management of Aranz Geo Limited’s international portfolio and trade mark protection strategy, as it continues to grow and expand.
  • Advising Collins Debden Pty Limited on a successful application to cancel two New Zealand trade marks registered by Croxley in bad faith in relation to stationery products.

MinterEllisonRuddWatts

MinterEllisonRuddWatts has a dedicated IP practice in Auckland that handles IP commercialisation, branding strategy, trade mark registration and portfolio management, as well as IP aspects of major corporate transactions. Through litigator Zane Kennedy, it has a strong flow of trade mark, copyright, Fair Trading Act, passing-off and confidential information disputes. Christopher Young leads the practice and has  20 years’ experience in trade marks, licensing, commercialisation, transactional IP and IP strategy. He has also has niched expertise in the film and television industry. Corporate partner Richard Wells acts for numerous clients with IP interests in the sports and IT industries, notably working with event hosts, sponsors and key stakeholders in major sporting events.

Practice head(s):

Christopher Young

Other key lawyers:

Richard Wells

Key clients

SC Johnson, Inc

Aktiebolaget SCA Finans, Essity Aktiebolaget

SKYCITY Entertainment Group Limited

Westpac Banking Corporation and Westpac New Zealand Limited

Synlait Milk Limited

Tourism Holdings Limited

Karen Murrell Enterprises Limited

ASOS Plc

Scholastic Inc

Work highlights

  • Handling the worldwide IP strategy and portfolio management work for Karen Murrell Enterprises Limited.
  • Handling Scholastic Inc.’s New Zealand IP and trade mark portfolio work.
  • Advising Aktiebolaget SCA Finans and the new Essity Aktiebolaget group, following restructure and the New Zealand/Australian entity Asaleo Care, on a range of IP matters.
  • Advising ASOS PLC a leading worldwide online retailer in relation to its New Zealand IP including brand strategy, disputes and trade mark registration in New Zealand.
  • IP advice and trade mark portfolio management for Westpac Banking Corporation and Westpac New Zealand Limited.

Russell McVeagh

Russell McVeagh in Auckland climbs the ranking for its growing presence in contentious and transactional IP matters for major local and international corporates and organisations in the telecommunications, banking, pharmaceuticals, food and beverage, FMCG, media, energy and sporting industries. The firm advised numerous international social media providers on the publication of footage following the Christchurch terror attacks in 2019. Litigator Joe Edwards leads the marketing law, media and IP practice and has a particular focus on IP and IT disputes, regulatory investigations and prosecutions, privacy law and data protection. Newly promoted IP and IT partner Liz Blythe handles complex technology transactions, including the procurement, supply, development, manufacturing, outsourcing and commercialisation of technology and e-commerce arrangements.

Practice head(s):

Joe Edwards

Other key lawyers:

Liz Blythe

Testimonials

“The team is extremely helpful and reliable, and it provides advice in a timely way despite often challenging deadlines.”

“Joe Edwards is great to deal with and extremely professional. He provides very clear legal advice and is always available to discuss these in greater detail if needed.”

Key clients

Samsung Electronics New Zealand

Vector Limited

Kiwi Property Holdings Limited

Uber

Fonterra

Manuka Health New Zealand Limited

Google New Zealand Limited

Credit Corp Financial Solutions Pty Ltd

Meridian

McDonald’s

Work highlights

  • Defended Credit Corp Financial Solutions Pty Ltd against claims of copyright infringement following the purchase of the world ‘Moola’ as a Google AdWord.
  • Defending Samsung in complex litigation brought by its former call centre operator in New Zealand.
  • Filed injunction proceedings against Stuff, the country’s largest media organisation, to have information/data unlawfully obtained from Vector Limited destroyed or returned.
  • Advising Ballance Agri-Nutrients Limited on successful 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 Manuka Health New Zealand Ltd (MHNZ) in relation to injunction proceedings brought by MHNZ’s distributor of its Manuka honey products in Japan, Cycochem Bio Co., Ltd (CCB) in the High Court following MHNZ’s termination of the distribution contract.

Lowndes

At Lowndes, IP is an important part of our the firm's broader corporate and commercial practice, complementing the firm's technology, media and telecommunications work. The firm handles IP commercialisation, particularly for clients with cross-border interests, and the firm has Chinese language capability in its team to handle matters involving assets in China. Last year, the firm successfully brought a court case challenging a trademark that infringes an international client’s intellectual property rights, resulting in the cancellation of the infringing trade mark and the transfer of domain names. Working between the firm's Auckland and Wellington offices, managing director and corporate partner Mark Lowndes leads the practice and is supported by director Sarah Kerr from the corporate team.

Practice head(s):

Mark Lowndes

Other key lawyers:

Sarah Kerr; Joseph McMullin

Key clients

Las Vegas Sands

NZPM Group

Simtics Limited

Barfoot & Thompson Limited

Work highlights

  • Managed the New Zealand side of Las Vegas Sands Corp’s vast trade mark portfolio.
  • Assisted with the construction and lease of purpose-built buildings, and purchase of equipment and technology, to create an interactive tourism experience creating jobs in Northland telling the history of ‘Kupe’.
  • Providing ongoing intellectual property advice to NZPM Group, together with its subsidiary Plumbing World.
  • Assisted Simtics, a fast growing tech company, with maintaining its US and New Zealand trade marks and patents.

Tompkins Wake

Tompkins Wake in Hamilton joins the ranking for its work in designing and developing IP strategies, for which it draws on the expertise of its corporate and litigation practices. A key area of focus is the enforcement of trade marks, copyright, designs and domain names, though the practice also has significant expertise in trade mark portfolio management and strategic IP advice. Its work encompasses advice on trade marks, copyright and patents, as well as IP due diligence. Commercial senior associate Shelley Slade-Gully and litigation partner Kate Cornegé are the key contacts.

Testimonials

“The firm has good trustworthy professionals. I have worked most recently with the IP lawyers who have been outstanding.”

“All are responsive and trustworthy. you know that they understand their work intimately.”

Work highlights

  • Acted to secure trade mark protection for a large-scale exporting company.
  • Acted to secure trade mark protection for a celebrity.
  • Acted to secure trade mark protection for a large agribusiness.
  • Represented a corporate client in negotiation and drafting of licence agreements and settlement of dispute.
  • Assisted a charitable organisation with IP strategy.