AJ Park is recognised as one of New Zealand’s leading specialist IP practices with market leading expertise in patents, trade marks, designs, copyright, IP commercialisation, plant variety rights and litigation. National practice head Amanda Griffiths is known for her work in the FMCG sector, often working with global brands on the commercialisation of IP assets as well as advertising and regulatory matters. Patent attorney in New Zealand and Australia Damon Butler is the another key figure in Auckland. The Wellington office houses commercial IP partner Penelope Catley and Anton Blijlevens, a specialists in mechanical and manufacturing patents, as well as copyright and designs and Jonathan Aumonier-Ward is considered ‘the best trade mark attorney in NZ‘. The same office is home to Duncan de Geest, chair of the life sciences and patents practice, and Paul Johns national practice head for litigation. Damian Broadley and Corinne Cole have left the practice.
Intellectual property in New Zealand
‘Excellent quality work, very accessible, very deep legal knowledge, extremely easy to work with, very thorough – in short, top quality.’
‘I have used many firms in New Zealand for trademark, and AJ Park is the top firm, hands down. There is really no comparison or competition given their breadth of experience, responsiveness, business-friendly advice, and depth of bench. It is the only firm I would recommend.’
‘Jonathan Aumonier-Ward is the best trade mark attorney in NZ, if not the entire region. His communication is straight-forward and accessible, his advice is business-friendly and solution-oriented, and he makes difficult legal communications seem as if you are emailing an old friend. He is an indispensable part of an already highly impressive team of accomplished practitioners.’
‘Great communication, knowledge and responsiveness. Have the ability to react quickly and professionally on out behalf. ‘
‘The billing is very reasonable.‘
Chapman Tripp provides a full service to clients across all types of IP assets together with effective anti-piracy and border protection campaigns. Its clients include those in film and music for which is provides advice on on line copyright protection and enforcement.
‘They provide advice across a spectrum of instructions, from BAU commercial, to policy guidance, to complex contract matters. Champan Tripp as a firm is a leader in technology adoption, and its deployment of Teams has been incredibly useful in terms of real-time collaboration.’
‘Kelly McFadzien has deep subject matter expertise in our sector (cloud and software), and has also made significant investments in learning the intricacies of our business, which is perhaps even more valuable. Kelly provides clear, pragmatic advice which emphasizes what we, and our clients need to know – this is a skill that is rare and its importance cannot be overstated. ’
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. 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 practice lead for non-contentious IP, acting primarily on trade marks, anti-counterfeiting, brand development and protection. Simon Martin specialises in innovation joint ventures and M&A, commercialisation in the technology and media sectors while litigation partner Tim Mahood and senior counsels Sonya Hill and Sarah-Jane Lawson are also central to the practice.
Other key lawyers:
‘HGM is an established IP practice with a strong team.’
‘Simon Martin – his easy going manner belies his deep legal prowess. Tim Mahood – affable to his clients and friends, determined and unflappable in disputes and Court matters.’
‘I like to work with HGM because they understand their area of expertise, are willing to share the benefit of their knowledge in a collaborative way and value our long relationship as more important than last months fees’.
‘Jason Rudkin Binks is very approachable.’
‘Simon Martin has a quiet professional confidence that is extremely reassuring.‘
Vodafone Group plc. and Vodafone New Zealand Limited
BBC Studios Distribution Limited
The Collective (Epicurean Dairy Limited)
LG Electronics Inc. (Australia)
Woolworths New Zealand
Vector New Zealand
Deloitte New Zealand
- 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 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. Distinguished trade mark and broader IP litigator Richard Watts is according to one client, ‘arguably the leading IP practitioner in NZ’; he co-heads the group alongside special counsel Sarah Chapman, a expert 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.
‘Their IP expertise is strongly balanced with a commercial perspective on matters, understanding what is important and what is irrelevant – this has not been the case with other providers whose approach is more academic. SG work to identify the best commercial outcome from any activity and have no hesitation in bringing in outside consul where needed.’
‘Simpson Grierson are a gold standard IP practice. They cover the full spectrum of IP, in both contentious and non-contentious matters. One is always in “safe hands” with Simpson Grierson.’
‘Richard Watts is the partner with whom we regularly work. Richard is an outstanding practitioner – deep knowledge of the law and he wields it to achieve client objectives. I would recommend Richard as arguably the leading IP practitioner in NZ.’
‘When Richard Watts says “just pick up the phone” he really means it. What other firms like to turn into a three page memo, Richard can cover off in an initial phone call. The option for the memo is of course always available, but only when needed and not as a matter of course. Richards pragmatic strategic considerations also separate him form other intellectual property practitioners.’
‘Sarah Chapman – Senior Associate Sarah is totally professional, experienced and great to work with. She provides valuable Trade Mark and commercial licensing advice, and is always accessible with timely responses and direction. Once again, a good communicator and an excellent fit for our organisation. We are delighted to be working with all three and appreciate their ongoing support.’
‘Raymond Scott, Senior Associate – a very sharp mind with attention to details. A good understanding of the client’s need.’
The a2 Milk Company
New Zealand Olympic Committee and IOC
New Zealand Cricket
Netball New Zealand
New Zealand Comfort Group Ltd
Wet n Forget
- 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’s IP team is led by special counsel Sooyun Lee who specialises in all aspects of trade mark and broader IP law. On the brand side, Lee is experienced with developing brand strategies, registrations, advertising regulations, as well as handling a growing number of trade mark infringement and oppositions. The practice demonstrates expertise on commercial aspects relating to IP, including M&A, due diligence and licensing.
Resolution Life Group Holdings Limited
Integral Diagnostics Limited
Ministry Of Education
Frucor Suntory New Zealand Limited
- 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$3bn. AMP Life is New Zealand’s second largest life insurer.
- Advising Unilever PLC and related entities on all of its IP matters in New Zealand and Pacific Islands.
Buddle Findlay is recognised for its trade mark and copyright work including protection, commercialisation, enforcement and transactional work. Auckland based John Glengarry and Hamish Selby act for a wide range of domestic and international blue-chip companies as well as local businesses, public sector organisations, and not-for-profits. Patent attorney Glengarry is responsible for the management of trade mark portfolios, in addition to advising on areas such as trade mark infringements, passing off and copyright disputes. Selby was appointed partner in July 2021 and also assists with trade marks, patents and domain names in New Zealand, Australia and the Pacific Islands.
Other key lawyers:
‘The team has a very personable and approachable culture. From Parters through to Junior staff, there appears to be a real emphasis on learning, growth and real teamwork. Our experience with Buddle Findlay has benefited from excellent expertise in the IP area, as well as very useful International connections, where trademark registration across numerous territories has been required.’
‘The team is extremely knowledgeable and experienced. Their advice covers all aspects of IP, from simple IPONZ registration to complex, technical trademark and copyright issues. Once instructed, they operate independently like an extension of the in-house team, which is exactly what we need and look for in an external provider.’
‘We have worked on IP projects with Hamish Selby. Hamish exemplifies the personable culture of the firm. He is approachable, very knowledgable, and most importantly takes care of all the things I shouldn’t have to worry about while ensuring I understand the things I need to understand. ‘
‘Hamish Selby is a very experienced, knowledgeable IP attorney. He is very responsive, always available to talk, and his advice is always very clear and concise, making even complex matters easy to understand and forward-able as is to internal non-legal clients. As an in-house lawyer, this is arguably the key quality you look for when instructing in such a technical area of law. You know with Hamish that whatever matter you instruct him on will be in good hands.’
British American Tobacco
WWF – World Wide Fund for Nature
The University of Auckland
Earthwise Manuka Health Appellation Society
UMF Honey Association, Inc.
Sky Television (New Zealand’s premium pay-television provider)
- Advising Manuka Honey Appellation Society, Inc on the protection and defence of MANUKA HONEY in multiple jurisdictions, including New Zealand, Australia, China, United Kingdom and the United States for the benefit of New Zealand and the New Zealand honey industry.
- Advised on all IP issues in connection with the sale of Allpress Espresso’s business to Asahi Beverages.
- Advising the Ali Baba Group and its subsidiaries on portfolio management including clearance searching; trade mark prosecution strategy and risk assessment; trade mark disputes; and trade mark enforcement.
Dentons Kensington Swan
Dentons Kensington Swan provides a full-service IP practice which has been enhanced since its partnership with Dentons Patent Attorneys Australasia in early 2020. This brought on board a team of patent attorneys led by Dr Andrew Baker; additional patent expertise in the software sector and Denton’s global IP network. The team handles work ranging from prosecution matters through to litigation and the commercialization of IP assets. In Wellington, Charlotte Henley , who is dual qualified (a lawyer and registered patent attorney) is a trusted IP advisor to government entities, multinationals and domestic companies, and is an expert in plant variety rights. Jenni Rutter, based in Auckland, handles a broad range of issues from the protection of trade marks to advertising, fair trading, food and consumer law and is known for her anti-counterfeiting work. The firm has a strong focus on diversity; it has established a rainbow alliance “GLOW”, to provide a forum for discussion and progression of LGBTTQIA+ inclusion and has a number of initiatives that ensure that female lawyers reach senior positions.
Other key lawyers:
Dr Andrew Baker; Emily Tombs; Chelsea Wong
‘Very professional and experienced. Practical and constructive approach to IP disputes.’
‘Jenni Rutter is very calm, professional and experienced.’
Ms 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
- Advising and managing the trade mark portfolio of the PepsiCo Group (over 10 separate entities) in New Zealand, the Pacific Islands and Papua New Guinea. The portfolio is one of the country’s largest and includes iconic global brands such as Pepsi, Lay’s, Doritos, 7UP, Tropicana, Gatorade and Quaker Oats as well as locally famous brands Bluebird, Twisties, Burger Rings and Copper Kettle.
- Acted for New Zealand’s former Prime Minster, Ms Helen Clark and successfully opposed two trade mark applications to register her well-known nickname AUNTY HELEN. The decision has made new law in New Zealand on the issue of third party trade marks for a well-known public figure’s name or nickname.
- Acting for Tourism New Zealand on protection of its branding internationally, on enforcement of its core brands including 100% Pure New Zealand, and Do Something New NZ, and on various sponsorship, licence and influencer agreements. We also act for its subsidiary Qualmark which is a quality endorsement programme for NZ tourism operators.
MinterEllisonRuddWatts‘ ‘knowledgeable, responsive and client centric’ IP group is led by Christopher Young QC who advises leading New Zealand and international clients in media, sports, retail and technology sectors. The practice is highly regarded for its experience in IP litigation, trade mark registrations and portfolio management. Young and corporate lawyer Richard Wells also handle the commercialisation of IP assets, such as licensing and on IP aspects of significant corporate transactions. Wellington based John McCay stands out for his knowledge of the New Zealand film industry.
‘The firm’s expertise is second to none, we always feel thoroughly informed during every dealing with MinterEllison and this enables us to confidently make decisions around both business and legal matters. Most of the work that MinterEllison does is in areas that are completely new to Nick and I, however, we only ever leave feeling well taught. We believe this is truly invaluable. In terms of client care, we really couldn’t imagine a better firm. ‘
‘Christopher Young is our main contact, we have found him to be extremely personable and overall, he has been a huge asset to us. Chris considers options and solutions that are both unique to the position of our business, and economically efficient. We always trust that we are in the best hands with Chris. Integrity, efficiency and quality is always delivered.’
‘Strong leadership from Christopher Young and a supportive team A senior relationship with competent Intellectual Property partnerships globally Chris keeps a good relationship with his major clients Strong loyalty relationship.’
‘This team always provides very sound commercial advice, which differs greatly from the black-letter law advice we are sometimes provided, that have no bearing on the client’s business and is divorced from commercial realties.’
‘Christopher Young has been a very steady and safe counsel who I have know for many years. In fact, asides from working directly together on matters, we also share some clients by chance. These clients have nothing but outstanding things to say about Chris.’
‘The Minter Ellison Rudd Watts IP team are knowledgeable, responsive and client centric.’
‘Chris Young has had many years of experience in this area and gives practical and timely advice to his clients.’
Southern Cross Healthcare
SKYCITY Entertainment Group Limited
Karen Murrell Enterprises Limited
Westpac Banking Corporation and Westpac New Zealand Limited
- Represented Karen Murrell, a growing New Zealand cosmetics brand in successfully challenging a Chinese business that had inappropriately registered the KAREN MURRELL trade mark, leading then to the successful registration of the mark by Karen Murrell Enterprises Limited in China.
- Advising SkyCity Entertainment on its strategy for its IP in New Zealand, Australia and worldwide and advising on a wide range of IP matters for SkyCity 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.
- Advising leading worldwide online retailer, ASOS PLC, in relation to its New Zealand IP including brand strategy, disputes and trade mark registration in New Zealand.
Russell McVeagh primarily specialises in litigation and the commercial exploitation of all types of IP, notably trade marks and designs and advises on joint ventures, licensing and IP collaborations. Practice head Joe Edwards is noted for ‘a unique ability to distil complex legal issues into succinct commercial advice’; he specialises in brand protection and disputes involving trade marks, technology, regulatory investigations and prosecutions. Liz Blythe’s practice is angled towards the commercial side of IP; assisting with TMT-related transactions and in emerging areas of AI, big data analytics and machine learning and blockchain.
‘Very thorough and commercial. A go-to practice when there is a key dispute involving data, IP and consumer law issues, but also for day-to-day matters.’
‘The team is led by Joe Edwards. Joe has a unique ability to distil complex legal issues into succinct commercial advice, coupled with excellent client service ethos.’
‘I work with litigation partner Joe Edwards. He is a very practical and no-nonsense lawyer who gets on with the job and is very easy to work with.’
‘Joe Edwards is the IP partner and is very good at quick and commercial IP advice.’
Ballance Agri-Nutrients Limited
General Motors (GM)
Counties Power Limited and ECL Group Limited
Fidelity Life Assurance Co Limited
- Acted for Balance Agri-Nutrients, a major manufacturer and distributor of nutrients for the agricultural sector, in High Court litigation relating to passing off, Fair Trading Act issues and the use of certain intellectual property. The case set a precedent in the fertiliser industry.
- Acted for Complectus (New Zealand’s largest trust company) in its dispute with Perpetual Limited (Australia’s largest trust company) in relation to the “Perpetual” brand.
- Advised on the New Zealand aspects of the decision made by General Motors to withdraw its iconic Holden brand from the New Zealand and Australia markets. Advised on use of IP and complex licensing agreements with dealers.
Mark Gavin is Anthony Harper ‘s leading IP partner who brings over 35 years’ experience advising on all IP-related transactions, trade marks and copyright protection, as well as related disputes and IP enforcement. Gavin is also sought after for his advice on commercialisation and licencing, brand development, and anti-counterfeit strategies, both domestically and internationally.
‘Top flight team, lateral thinkers, very deep legal knowledge, personable, switched on, practical, cost conscious.’
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’s clients include public sector entities, start ups, retail and food brands, and not-for-profits. Trade mark portfolio management and IP protection is a key area of work, led by Scott Moran in Wellington, who has built up a strong trade mark and commercial practice with a reputation for 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 and infringements. Michael Moyes spearheads the commercial IP practice from Auckland, specialising in technology, commercialisation strategies, IP licensing, R&D collaborations and joint ventures. He also undertakes a significant amount of work in IP protection and enforcement.
Other key lawyers:
‘Duncan Cotterill provides a great service in terms of intellectual property by taking the time to know us well and ensure we are well covered without incurring huge costs.’
Scott Moran understands the importance of protecting our brands. His advice around classes and priorities for registering is always great.’
‘The team at Duncan Cotterill have a unique ability to weigh legal matters against commercial outcomes and ensure that a sound equilibrium between the two is found when resolving matters. Whilst their legal knowledge is second to none they understand the need to balance outcomes with the needs of the business as well.’
‘All the individuals at Duncan Cotterill have excellent communication skills. Ensuring their clients know exactly what is happening (even when there has been a period of time when the issue has been inactive) seems to be an aspect they pride themselves on. It also gives clients absolute confidence that any issue is being dealt with and enables us to continue to focus on our business. Once again this highlights their ability to balance the legal aspects with business outcomes.’
‘Edward Greig has an exceptional ability to break down legal terminology and translate it into easy to understand language which enabled us to make fast decisions that were commercially sound. Edward’s advice was always a strong balance between what made sense legally and what made sense commercially.’
Part Time Rangers
- 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 provides 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.
‘The personal attention of the senior management is exceptional. They are extremely skilled practitioners who take a direct and hands on approach to the legal services. They are all skilled to the highest calibre in their field and who have judgment that in unequalled by the competitors.’
‘Rachel and Sue bring a high level of expertise from their extensive experience with large IP firms. They are down to earth and get the job done efficiently.’
‘A very professional team who are approachable, organised and responsive. They have their finger on the pulse of what needs doing and always remind us of anything requiring our attention well in advance.’
‘Very client-focused team. Both founders have many years of experience at the partner level at big firms in New Zealand, so you get the benefits of big firm experience coupled with the personal attention you get from small firms.’
‘Sue Ironside and Rachel McDonald are excellent. Among the top professionals I have worked with in my career and highly respected in the community.’
Quadbeam Technologies Limited
Hemp New Zealand Limited
Dualcom Technologies Limited
Gruma, S.A.B De CV
The Ddrops Company Inc.
Environ Skin Care (Proprietary) Limited
- 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 is adept at managing trade mark portfolios, often multi-jurisdictional, as well as in IP litigation (oppositions, revocations, invalidity proceedings and general dispute matters) and in commercialisation. Copyright, patents, design and IP due diligence are also areas of strength. Robert Bycroft and Mark Lowndes are the key partners, combining expertise in life sciences, technology and commercial transactions. Shelley Slade-Gully in Hamilton is another central figure; she assists with IP licensing, commercial agreements, branding and litigation.
Other key lawyers:
Barfoot & Thompson
New Zealand Plumbing World Group
- Acted for Barfoot & Thompson in negotiation of terms of arrangements for the provision of innovative technology and provided IP advice around branding and licencing.
- Advised Eagle Technology on the IP aspects of the sale and development of technology.
- Advised New Zealand Plumbing World Group on management of its trademark portfolio, including IP strategy advice, trade mark filing, trade mark submissions, trade mark renewals, IP disputes and trade mark protection.