Intellectual property in New Zealand
AJ Park is recognised as 'the market leader' and further consolidated its prominent role in the market with the acquisition in 2020 of IP firm Baldwins. The firm has a track record extending back almost 130 years, and it is still recognised as a prominent force in all aspects of patents, trade marks, designs, copyright, strategy and commercialisation, plant variety rights, dispute resolution and renewals. In Wellington, Michael Brown leads on engineering and ICT patents, Duncan de Geest on life sciences patents and Matthew Hayes on commercial IP and litigation. Damian Broadley and Corinne Cole are also recognised as key partners in the trade marks practice, and Mark Hargreaves is a commercial and strategic IP specialist. The merger also brought the highly experienced Penny Catley back to the firm. In Auckland, Amanda Griffiths is head of the trade marks group and Anton Blijlevens is a recognised leader in the area of mechanical and manufacturing patents.
World-leading brands turn to Chapman Tripp for IP matters in New Zealand, as do major domestic companies. As a full-service law firm, it has a roster of blue-chip clients though its specialist IP practice handles not only IP support for corporate transactions, but also an impressive caseload of patent and trade mark litigation. The firm is adept at ringfencing confidential information for local and off-shore clients. Its recent work has seen it involved in the two biggest patent cases in New Zealand this century. Practice head Matt Sumpter in Auckland recently acted in a high profile international patent litigation. Kelly McFadzien and Justin Graham are sought after for major disputes and senior associate Tom Cleary is also recommended. Tim Sherman is the key partner in Wellington.
Fisher & Paykel Healthcare
Hyundai Motor Company
Academic Colleges Group/UP Education
Motion Picture Association (Disney, Netflix, Warner Bros., Columbia, Paramount)
Fonterra Co-operative Group
- 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
The 'client-friendly, commercial and cost sensitive' Hudson Gavin Martin in Auckland is a specialist TMT and IP boutique. It provides a deep bench of specialist lawyers and a comprehensive approach to IP matters ranging from commercialisation to disputes. Its work spans IP clearance and proteciton, strategic advice, the enforcement of IP rights and litigation for an impressive array of clients. Practice head Jason Rudkin-Binks is 'an excellent trade mark practitioner - no one is better at identifying filing tactics and providing practical filing advice'. Up-and-coming partner Tim Mahood is a litigation specialist and qualified patent attorney. Senior associate Caroline Herbert plays a pivotal role in the practice.
‘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.’
The Collective (Epicurean Dairy Limited)
LG Electronics (Australasia)
Woolworths New Zealand
NBA Properties Inc
Vector New Zealand
Lion Dairy & Drinks
The Walt Disney Company
- Advising Vector New Zealand Limited on a national re-branding and related brand strategy, brand development and brand protection.
- Successfully acted for LG in High Court claim brought against it by a former New Zealand distributor.
- Acted for Epicurean negotiating an exclusive IP licensing agreement with Camperdown Dairy Company (subsidiary of an ASX listed parent) in Australia.
The Auckland office of Simpson Grierson provides 'thorough, pragmatic and timely advice' and it is among 'the leading IP practices in New Zealand'. Although it is a full-service law firm, its IP practice does far more than support corporate transactions. Its specialist IP group excels in litigation and non-contentious strategy and licensing matters. Its work spans numerous industries but it is particularly strong in the sport sector and agribusiness. The firm's 'level of understanding separates them from other trade mark lawyers'. 17-lawyer practice is led by Richard Watts, whose 'knowledge of domestic and international trade mark law and developments is extensive and highly valued'; and special counsel Sarah Chapman. Senior associate Raymond Scott is a key adviser to some of the firm's anchor clients.
‘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.’
The a2 Milk Company
Heineken / DB Breweries
New Zealand Olympic Committee and the International Olympic Committee
Livestock Improvement Corporation
New Zealand Cricket
Sky Network Television Ltd
Netball New Zealand
Procter & Gamble
New Zealand Comfort Group Ltd
Wet & Forget
- Advised The a2 Milk Company on its multibillion-dollar expansion of its brands and patented products into a number of new markets – including China, USA, Europe and South East Asia. This involved providing strategic filing and prosecution advice on a multi-jurisdictional basis, travelling to various jurisdictions to provide IP presentations to potential JV and capital investment partners.
- Oversaw the brand protection and enforcement strategy for the, now postponed, 2020 Tokyo Olympics.
- Acting for New Zealand Cricket in an opposition against a trade mark application by a third party, Blackcap Pty Ltd, for the trade mark BLACKCAP. The matter is of commercial and public significance because it involves our client’s internationally well-known and highly valuable BLACK CAPS brand.
Bell Gully has an impressive roster of blue-chip clients to which it provides support for the IP aspects of large M&A transactions. The main focus of the practice is on high-level strategic work in major corporate transactions, though it also handles critical trade mark matters for large domestic and international companies. Alan Ringwood in Auckland leads the IP and media law practice and is the firm's longest-serving partner. Special counsel Sooyun Lee manages one of the biggest trade mark practices among the non-IP specialist firms. Litigation partner Tania Goatley handles media, advertising and IP matters.
Vodafone Group PLC
Apax Partners LLP
Resolution Life Group Holdings Limited
Westland Co-Operative Dairy Company Limited
ESW Holdings, Inc
Stride Property Group
Frucor Suntory New Zealand Limited
The Body Shop
- 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.
- Working alongside King & Wood Mallesons, the firm advised British private equity firm Apax Partners LLP on their successful bid for New Zealand’s largest e-commerce company, Trade Me, for NZD$2.56bn (AUD$2.4bn).
- Acting for 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 AU$3.3bn.
The IP practice at Buddle Findlay 'has always been very client- and solution-focused'. The firm has an enviable client roster that includes global corporates, major domestic companies and public sector entities. Registered patent attorney John Glengarry, and Philip Wood, who has worked in the IP field for almost 30 years, lead the practice from Auckland, though the group also works through the Christchurch and Wellington offices. Special counsel Hamish Selby in Auckland is 'very good at explaining the strategy' and has more than 20 years' experience in contentious and transactional IP matters. Special counsel Anita Birkinshaw's litigation practice includes significant IP matters.
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.’
British American Tobacco
WWF – World Wide Fund for Nature
The University of Auckland
UMF Honey Association
Auckland Council and its Council Controlled Organisations (ATEED, Panuku and Regional Facilities Auckland)
Green Cross Health
- 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.
The 'excellence of technical ability is evident' in the IP group at Dentons Kensington Swan 'but also its client service, ability to communicate and to understand the real world applications of trade marks'. The firm has one of the largest trade mark filing and prosecution practices of any full-service firm in New Zealand, though it also handles a diverse mix of a contentious and commercial IP matters for international companies making inbound investments and domestic companies expanding abroad. Jenni Rutter in Auckland is 'able to simplify and explain the strategy as well as the technical and pragmatic aspects', and Charlotte Henley in Wellington, co-lead the practice. Associate Nadia Ormiston joined from Baldwins, which is now part of AJ Park.
Other key lawyers:
‘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.’
Helen Clark, former Prime Minister of New Zealand
Tourism New Zealand
Cisco Technology, Inc.
T&G Global Ltd
Aranz Geo Limited (now Seequent Limited)
Meteorological Service of New Zealand Limited (MetService)
Shott Beverages Limited
New Zealand Transport Agency
Lewis Road Creamery Limited
Airways New Zealand
Calvin Klein, Inc
Centrality Investments Limited
Crimson Consulting Limited
- 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 is 'a full-service firm that prides itself in having a fantastic IP practice'. Practice head Christopher Young in Auckland has become the standout partner 'not by providing simple black letter law advice, but rather informed commercial IP advice'. He is an IP specialist with extensive experience in the IP aspects of large M&A and corporate transactions including complex structuring, strategy and licensing, as well as in IP strategy, branding and trade marks nationally and internationally. His practice also encompasses litigation. Corporate partner Richard Wells focuses on the sport and IT sectors, frequently working with event hosts, sponsors and key stakeholders in major events.
Other key lawyers:
‘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.’
Karen Murrell Enterprises Limited
Aktiebolaget SCA Finans and the new Essity Aktiebolaget group including BSN medical GmbH
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
- 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 in Auckland has made its mark since it was formed in 2017, building a presence in litigation and commercial IP matters. Among its clients are major local and international corporates in the telecommunications, banking, pharmaceutical, food and beverage, FMCG, media, energy and sporting industries. The firm is 'very commercial, has a great gauge of how regulators are likely to act in our industry and is readily available'. The practice is led by 'market-leading professional' Joe Edwards, who is head of IP, media and marketing law. Head of technology Liz Blythe also has a key role in the practice. Special counsel Brigette Shone joined in 2020 from Baldwins, which is now part of AJ Park, to bolster the firm's IP and litigation capability.
Other key lawyers:
‘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.’
Samsung Electronics New Zealand
Mānuka Health New Zealand Limited
Google New Zealand Limited
Credit Corp Financial Solutions Pty Ltd
Counties Power Limited and ECL Group Limited
- 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 has a small but highly proficient IP practice that supports the firm's major clients. The practice is based around the vast experience of lead partner Mark Gavin, whose work spans copyright, trade marks, brand protection, design, passing off, Fair Trading Act and confidential information disputes. As well as handling IP aspects of joint ventures, sale and purchase agreements and investments, the firm has a strong flow of work in the commercialisation of IP, including licensing and R&D collaboration, as well as trade mark protection, disputes and privacy matters. In 2020 Michael Moyes moved to Duncan Cotterill and Jullion Nelson Parker joined Potter IP.
Deep Down Wines
Much Moore Ice-cream
- 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 expanded its IP practice with the hire of Michael Moyes from Anthony Harper, where he established the IP and technology group. Moyes works in Auckland and leads the practice with Wellington-based Scott Moran, who has built up the firm's trade mark practice over the last 17 years. Acting for public sector entities, start-ups, retail, food brands and not-for-profit organisations, the firm handles commercial IP and trade mark matters from application through to litigation. The firm currently manages more than 2,500 live trade marks on the New Zealand trade mark register.
‘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.’
Part Time Rangers
New Zealand King Salmon
- Successfully advised IHC New Zealand Incorporated to protect and manage a series of refreshed marks that required the consents of a number of multinational brand owners.
- Advised Part Time Rangers Limited, this new social enterprise type start-up, to protect a range of endangered animal brands across New Zealand and Australia.
- Advised Logitech Europe S.A. and Logitech International S.A. on the prosecution of some of its Australian trade mark applications, including the prosecution of its PLAY TO WIN slogan for its eSports product line.
Ironside McDonald Intellectual Property
Ironside McDonald Intellectual Property, which was founded in mid-2019, is regarded as a 'focused, lean and highly knowledgeable practice with a commercial mindset'. The firm is led by two well-established figures in directors Sue Ironside and Rachel McDonald, who each have a 'vast amount of experience' and provide 'personal attention at a very high level'. They handle a broad range of trade mark prosecution and strategy work, along with licensing and commercial IP matters. They advise brands across Australasia on domestic and international trade mark issues.
‘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.’
Quadbeam Technologies Limited
Dualcom Technologies Limited
Gruma, S.A.B De CV
The Ddrops Company Inc.
Environ Skin Care (Proprietary) 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
- Review for Safe365 Limited of current protection in New Zealand; expansion of current protection and seeking protection overseas.
- Audit for New Zealand Frost Fans Limited of current intellectual property protection v brands used in industry. Filing strategy for New Zealand and overseas markets, including filing international application.
- HonourThem is a new service provider in New Zealand offering a unique way to remember those who have passed away. The firm provided advice on many areas of its intellectual property, including its trade marks and copyright.
James & Wells
Intellectual property boutique James & Wells has offices in Auckland, Christchurch, Hamilton and Tauranga. It is known for the broad scope of its work, which encompasses patents, trade marks, designs, IP commercialisation and contentious matters, both at home and abroad. Several of the firm's practitioners are both barristers and patent attorneys, among them Gus Hazel in Auckland and Ian Finch in Tauranga. Auckland-based senior associate and barrister Sébastien Aymeric is recommended for copyright, trade marks, patents, confidential information and contract disputes. Founding partner Ceri Wells in Hamilton is also recommended.
A 'top Hamilton firm able to cover all aspects of legal requirements', Tompkins Wake frequently handles trade mark portfolio management and IP litigation, including trade mark oppositions, revocations and invalidity applications. Its work covers strategic advice on multi-jurisdictional trade mark portfolios, as well as advice on copyright and patents. The practice is led by senior associate and trade mark specialist Shelley Slade-Gully and litigation partner Kate Cornege in Hamilton, along with special Robert Bycroft in Auckland, who leads the firm's life sciences practice. Special counsel Mark Lowndes, who handles corporate and commercial matters and IP, joined in Auckland from now disbanded firm Lowndes.
Other key lawyers:
‘Shelley Slade-Gully is personable and authentic. She touches base beyond simply ‘the work’ and checks in on clients regularly at a personal level.’