Intellectual property in New Zealand

AJ Park

Specialist intellectual property firm AJ Park counts international agents, government institutions, and multinational and major listed companies among its roster of clients. With offices in Auckland and Wellington, the practice is well positioned to advise clients on the gamut of IP matters, including trade marks, designs, copyright, strategy and commercialisation, renewals and litigation. Auckland-based partner Amanda Griffiths heads the trade marks practice, where she is routinely engaged by individuals and companies of all sizes across a range of industries, notably in the FMCG sector. Litigation group leader Paul Johns is noted for his experience in the courts and in IP office hearings, while Anton Blijlevens is a key port of call for clients seeking to protect and commercialise their innovations. In the Wellington office, Michael Brown leads the engineering and IT patent group, and Duncan De Geest heads the chemical biology practice, specialising in patent law. Other notable individuals include Penny Catley and Jonathan Aumonier-Ward.

Praxisleiter:

Amanda Griffiths; Paul Johns; Michael Brown; Duncan de Geest


Weitere Kernanwälte:

Penny Catley; Jonathan Aumonier-Ward; Anton Blijlevens; Grace Thomas-Edmond


Highlight-Mandate


Chapman Tripp

Chapman Tripp fields an ‘extremely capable’ team, praised for its ‘strong, agile and innovative representation’ on the full spectrum of contentious IP matters. With a diverse roster of blue-chip clients on its books, the practice is noted for its brand protection expertise and IP commercialisation work. The practice is steered by ‘leading lawyer’ Matt Sumpter, who is an expert in trade practice law and IP, where he is routinely instructed by multinationals and New Zealand’s leading companies on complex and significant matters. Justin Graham is recommended for his experience in defamation, privacy, patent, copyright and trade mark litigation, while ‘talented’ senior associate Tom Cleary is noted for his expertise in assisting clients in IP, media, privacy and consumer protection disputes. Patents director Ben Halberg regularly advises on patentability, patent procurement, freedom-to-operate, and infringement and invalidity proceedings worldwide in all areas of engineering.

Praxisleiter:

Matt Sumpter


Weitere Kernanwälte:

Kelly McFadzien; Justin Graham; Ben Halberg; Tom Cleary


Referenzen

‘Extremely capable in a challenging discipline, cost competitive, deep knowledge and experience, outcome focused.’

‘Matt Sumpter – leading lawyer in the field due to his outcome focused advice, efficiency and expertise.’

‘A well-established leading NZ law firm with a reputation for getting results for clients. They have also been involved in patent litigation for a number of years and provide strong, agile and innovative representation. They collaborate well with us to enhance execution and outcomes and have talented and dedicated lawyers and access to significant resources to meet the peaks of litigation.’

Kernmandanten

Fisher & Paykel Healthcare


Vanguard Trademark Holdings USA LLC


Netflix


EC Credit Control


Microsoft


Motion Picture Association


Amazon


Luxey Pty Ltd


Cristal Air International


Auckland UniServices


Highlight-Mandate


  • Acting for Fisher & Paykel Healthcare in opposing the grant of a number of New Zealand patent applications filed by a US-based competitor.
  • Advised a group of major dairy companies in trade mark opposition proceedings against Consorzio per la Tutela del Formaggio Gorgonzola DOP over whether GORGONZOLA is a registrable certification mark.
  • Advising Auckland UniServices, the commercialisation arm of University of Auckland, in patenting cutting-edge battery technology.

Hudson Gavin Martin

Well regarded for its ability to combine ‘deep legal expertise’ with ‘commercial acumen and approachability’, specialist TMT and IP firm Hudson Gavin Martin acts for clients on the full range of IP matters, with a particular focus on trade marks and brands. The team, praised for its ‘collaborative approach’, counts start-ups, large New Zealand-based companies and multinational corporations among its client roster. The ‘outstanding’ Jason Rudkin-Binks is well placed to act on the gamut of IP matters and has been lauded for his ‘timely, thoughtful and strategic advice’. Both Tim Mahood and Simon Martin are noted for their focus on the tech, media and IP sectors. Associate Caitlin Hadlee has particular expertise in news media and copyright issues relevant to the film and music industries.

Praxisleiter:

Jason Rudkin-Binks; Tim Mahood; Simon Martin


Weitere Kernanwälte:

Edwin Lim; Caitlin Hadlee; Gemma Smith


Referenzen

‘Hudson Gavin Martin are one of the leading IP law firms in NZ. They have good industry knowledge of the sector and local market, and they are all technically strong lawyers. They keep across the latest IP legal developments, and they are commercial and pragmatic. They are committed to great client service, and they are always very easy to work with!’

‘This team is made up of strong communicators which create and facilitate consistent momentum across the active work streams we need legal advice on. They are both problem solvers and strategic thinkers.’

‘Jason Rudkin-Binks has been outstanding in his field. We appreciate his timely, thoughtful and strategic advice. All advice and legal opinions are well set out, with appropriate background and carefully curated recommendations.’

Kernmandanten

One New Zealand Group Limited


Xero Limited


Genesis Energy Limited


The Collective


Polaris


Aquatherm New Zealand Limited


Vista Entertainment Solutions Limited


South Pacific Pictures


The British Broadcasting Corporation


Douglas Pharmaceuticals Limited


Highlight-Mandate


  • Advised Vodafone New Zealand on its rebrand to ONE NZ, including brand clearance and overall strategy for protecting its new brand identity, including trade mark filings.
  • Defending Pebblemill and its director in High Court proceedings brought by Bremworth alleging breach of confidence and restraint of trade.
  • Acted for Xero on the UDRP dispute relating to the domain xerosign.com.

Simpson Grierson

Praised for its ‘deep knowledge of IP law and very commercial focus’, the team at Simpson Grierson possesses capabilities across the gamut of IP matters. The practice operates in a myriad of sectors, including sport, agriculture and life sciences, handling a range of non-contentious and licensing matters, IP commercialisation and litigation. The team is jointly led by Auckland-based practitioners Richard Watts and Sarah Chapman. The ‘outstanding’ Watts is a key port of call to some of the world’s leading companies, while Chapman specialises in non-contentious trade mark law, providing strategic advice on trade mark portfolio management, registrability, infringement and licensing. Key contact Anita Birkinshaw is noted for her expertise in the trade marks area. Associate Raymond Scott is also noted.

Praxisleiter:

Richard Watts; Sarah Chapman


Weitere Kernanwälte:

Raymond Scott; Anita Birkinshaw


Referenzen

‘Deep knowledge of IP law and very commercial focus.’

‘Richard Watts is an outstanding practitioner – my go to IP lawyer in New Zealand.’

‘They are clearly knowledgeable and vastly experienced. Their level of professionalism is very high, and they are very smart with their advice.’

Kernmandanten

The a2 Milk Company


NZ Rugby


Google


New Zealand Olympic Committee and IOC


Livestock Improvement Corporation


New Zealand Cricket


Novartis


Paralympics New Zealand


Merck Sharp & Dohme


Energy Beverages LLC / Monster Energy


New Zealand Comfort Group Ltd


Heineken/DB Breweries


Apple


Mars Group


Wet & Forget


Briscoe Group


The Procter & Gamble Company


Media Arts Lab


Highlight-Mandate


  • Oversaw the brand protection and enforcement strategy for Beijing Winter Olympics in March 2022, and Birmingham Commonwealth Games in July 2022.
  • Oversaw the brand protection and enforcement strategy for the Paralympics (Winter Paralympics in Beijing in 2022), and at the Birmingham Commonwealth Games in 2022.
  • Advised Energy Beverages  in respect of Frucor’s attempt to obtain a trade mark registration for the colour green in respect of energy drinks.

Dentons New Zealand

Lauded for its ‘excellent knowledge’ and ‘pragmatic’ approach, Dentons New Zealand leverages its extensive global network to advise clients on the full suite of IP matters, encompassing a broad mix of contentious and commercial matters. The practice is steered by the ‘technically excellent’ Jenni Rutter, who is an expert in the commercialisation of IP and brand development for established businesses and start-ups. Key contact Andrew Baker acts for clients across a range of sectors, with a particular focus on agribusiness and healthcare, while senior associate Nadia Ormiston is recommended for her experience in all aspects of trade marks and designs. Charlotte Henley  left the firm in August 2023.

Praxisleiter:

Jenni Rutter


Weitere Kernanwälte:

Andrew Baker; Emily Tombs; Chelsea Wong; Nadia Ormiston


Referenzen

‘Excellent knowledge, proactive, safe pair of hands, trusted, pragmatic.’

‘Jenni Rutter – Very technically excellent, personable, approachable.’

Highlight-Mandate


  • Won two trade mark opposition proceedings and made new law in New Zealand that will have a long-term impact on the ownership and validity of registered trade marks.
  • Filed High Court proceedings for infringement of copyright in software, in a matter involving enforcement actions in New Zealand, the Philippines and the US.
  • Took over care of three IP Office proceedings and a High Court proceeding involving allegations of passing off and misleading use of a brand.

MinterEllisonRuddWatts

Drawing considerable praise from clients for its ability to marry its ‘tactical knowledge’ with a ‘proactive and pragmatic’ approach, the team at MinterEllisonRuddWatts acts for clients on the gamut of IP matters, from trade mark registration and portfolio management to IP litigation. Leading the practice is the ‘very knowledgeable’ Christopher Young, whose IP expertise ensures that the team is sought out by numerous well-established corporates. Richard Wells regularly advises clients on issues in the commercialisation of new technology and the licensing of IP, and John McCay is noted for his focus on the TMT sector.

Praxisleiter:

Christopher Young


Weitere Kernanwälte:

Richard Wells; John McCay


Referenzen

‘The team is always on the money with top-shelf, pithy, commercial advice that a busy in-house team can rely on. They really know our business and go the extra mile. The team is diverse and don’t fit into a homogeneous mould.’

‘Chris Young simply knows everything there is about IP law and how it applies to our business. His extensive experience and to the point advice offers reassurance. We know we are in great hands.’

‘Good coverage in the team. Good planning processes for the overall protection of our IP. Excellent knowledge of our industry/sector.’

Kernmandanten

Fonterra Co-operative Group Limited


Southern Cross Healthcare


Scholastic Inc


ASOS Plc


Tourism Holdings Limited


The New Zealand Merino Company Limited and RX Made for Good Limited


Icebreaker and its parent VF Corporation


Two Degrees Mobile Limited


Highlight-Mandate


  • Advised Fonterra Co-operative Group on the divestment of its Soprole dairy business in Chile to Peruvian dairy company Gloria Foods, including the trade mark, assessments and negotiations.
  • Advising Southern Cross Healthcare on brand strategy, contracting arrangements re IP, IP disputes, and trade mark registration in New Zealand.
  • Advising on all New Zealand trade mark work for Scholastic, a leading international publisher.

Russell McVeagh

The ‘commercial’ team at Russell McVeagh, praised for its ability to offer clients ‘highly valued, strategic advice’, counts national corporations and local companies among its clients. The practice handles a wide range of IP mandates in the banking and financial services, media and manufacturing sectors. The team is led by ‘exceptional operator’ Joe Edwards, who specialises in brand protection, IP disputes and commercial IP transactions. Liz Blythe heads the technology team, advising on complex technology transactions, including the procurement, supply, development, manufacturing, outsourcing and commercialisation of technology. Special counsel Brigette Shone is noted for her ability to act for clients in a wide range of disputes before the High Court and Court of Appeal.

Praxisleiter:

Joe Edwards; Liz Blythe


Weitere Kernanwälte:

Brigette Shone


Referenzen

‘The team are incredibly commercial and always provide highly valued, strategic advice that appropriately captures and addresses the concerns of our business. Their understanding of what we’re trying to achieve and their overall level of pragmatism (which extends to billing, client service, file management etc) sets them apart from other legal service providers.’

‘Joe Edwards is an exceptional operator who consistently overdelivers on what is asked of him. He has become our go-to resource for contentious IP disputes and such is our level of trust in his advice (and knowledge of our business).’

Kernmandanten

Allen and Unwin New Zealand Limited


Bremworth Limited


Meridian Energy Limited


Lion NZ


Summerset


QIC Private Capital


Auckland International Airport Limited


Highlight-Mandate


  • Acting for Allen & Unwin in defending injunctive proceedings where a book published by it is alleged to infringe the plaintiff’s trade mark for “Mindful Food”.
  • Successfully acting for Bremworth (including High Court proceedings) against Pebblemill and an individual in relation to Pebblemill’s use of Bremworth’s confidential information.
  • Advised QIC Private Capital on its acquisition of 50% of Vector Limited’s New Zealand and Australian metering business.

Anthony Harper

Noted for its ‘very extensive and broad expertise across the IP field’, Anthony Harper acts for clients on a wide range of mandates across the food and beverage, manufacturing and retail sectors. Leveraging the expertise of the firm’s corporate and litigation teams, the practice handles trade mark protection and copyright issues, portfolio development and management, and anti-counterfeiting mandates. Mark Gavin, highlighted as at the ‘top of his field’, leads the practice and routinely advises on copyright, trade marks, brand protection, design and confidential information disputes.

Praxisleiter:

Mark Gavin


Referenzen

‘Very extensive and broad expertise across the IP field. ’

‘Mark Gavin – excellent quality advice. Top of the field.’

Kernmandanten

Alta Global


Ashcroft Homes


Caterpillar Inc


Chobani LLC


Coca-Cola Euro Pacific Partners (formerly Coca-Cola Amatil)


Deep Down Wines


Delfast


Emma Lewisham


Intel Corporation


LittleOak Organics


Louis Vuitton


MG Motors


Much Moore Ice-cream


Paradise Beverages


Samoa Breweries


Sculptureum


SKOPE Industries


Special Group


Under Armour


Watches of Switzerland Pty Limited


Highlight-Mandate


  • Acting for Louis Vuitton on an ongoing basis in respect of its anti-counterfeiting activities in New Zealand.
  • Acting for Paradise Beverages in protection of its global trade mark portfolio, primarily consisting of beer brands throughout Asia Pacific.
  • Advising Caterpillar Inc on its trade mark opposition to an application by Tigercat Inc for TIGERCAT, which is part of an ongoing worldwide dispute between Caterpillar and Tigercat.

Bell Gully

‘Responsive, professional and empathetic’, the team at Bell Gully is well positioned to assist in both contentious and non-contentious IP matters across the food and beverage, manufacturing and consumer goods sectors. The team earns further praise for its ‘impeccable’ attention to detail and ‘top-notch’ legal expertise. The practice is steered by Tania Goatley, who regularly assists clients with all aspects of IP law, including copyright, trade mark infringement, passing off and comparative advertising issues. ‘Highly experienced’ associate Jessica Miles specialises in all aspects of trade mark and IP law, and is noted for her ‘attention to detail and ability to communicate effectively with clients'.

Praxisleiter:

Tania Goatley


Weitere Kernanwälte:

Sebastien Aymeric; Jessica Miles


Referenzen

‘The team at this law firm is unique due to their exceptional commitment to their clients. They are always responsive, professional, and empathetic. Their attention to detail is impeccable and their legal expertise is top-notch. The inclusion of Jessica Miles on the team brings a valuable perspective and her dedication to her work is truly inspiring. Overall, this team stands out for their exceptional service and dedication to their clients.’

‘Jessica Miles is a highly experienced lawyer in trademarks law, having worked with numerous clients in this field. Her attention to detail and ability to communicate effectively with clients sets her apart from others in the industry. Jessica’s knowledge and expertise make her a valuable asset to any legal team.’

‘Jessica Miles is responsive and Tania Goatley proactively flags issues we should be aware of.’

Kernmandanten

Resolution Life Group Holdings Limited


Integral Diagnostics Limited


Accenture


Advent Partners


Ministry Of Education


Reckitt Benckiser


Frucor Suntory New Zealand Limited


Unilever


Abbvie


BMW


The Body Shop


Carter Holt Harvey


Frucor Brands International B.V


Fidelity Life


Bentley Systems


Goodman Fielder


NZTR


Ampol


Highlight-Mandate


  • Representing Frucor Suntory New Zealand (Frucor) in a dispute concerning Frucor’s trade mark registration for its distinctive ‘V Green’ colour, described specifically as the colour shade Pantone 376C.
  • Advising Unilever PLC and related entities on all of its IP matters in New Zealand and Pacific Islands.
  • Advised Ampol on IP matters relating to its acquisition of Z Energy.

Duncan Cotterill

Duncan Cotterill has a robust IP offering, noted for its expertise in trade mark portfolio management and IP protection matters. The team acts for a diverse portfolio of clients, ranging from public sector entities, start-ups and retail companies to food brands and not-for-profit organisations. The practice is now steered by Michael Moyes following the departure of former joint practice head Scott Moran in April 2024. Auckland-based practitioner Moyes is recommended for his focus on the commercial aspects of IP-related transactions, where he is routinely engaged by clients in the technology, retail and consumer goods sectors. Associate Katy Stove advises clients on a range of contentious and non-contentious IP issues.

Praxisleiter:

Michael Moyes


Weitere Kernanwälte:

Katy Stove; Peter Fernando


Kernmandanten

PGG Wrightson


Interprofessional du Gruyère


EMI (IP) Limited


Ceres Organics


MoleMap


Buy New Zealand Made Campaign Limited


Westland Milk Products


The New Zealand King Salmon Co. Limited


Eden Park Trust


Lumenart


Trade Me Limited


Cobra Labs Limited


Coulter Ventures, LLC


ContextLogic Inc.


YETI Coolers, LLC


Animates NZ Holdings Limited


Highlight-Mandate


  • Advising the Institute of Geological and Nuclear Science on a range of matters relating to its “RiskScape” technology.
  • Representing oVRcome, an early-stage business specialising in the use of VR as a means of exposure therapy, with respect to its global trade mark protection strategy.
  • Assisting Interprofession du Gruyère with its application for a Certification Mark in New Zealand, as part of a global project.

Ironside McDonald Intellectual Property

‘Commercial, practical, knowledgeable and personable’, Ironside McDonald Intellectual Property‘s Auckland-based boutique practice, founded by partners Sue Irwin Ironside and Rachel McDonald, is praised for its ‘big-firm expertise’ across the gamut of IP matters. Ironside regularly assists clients with all aspects of trade marks and branding, while McDonald has a wealth of knowledge in trade marks and a range of other IP matters. Other key members of the team include associates Ingrid Seegers, a trade marks attorney, and Solanda Chen, who is noted for her strong network of clients in China.

Praxisleiter:

Sue Irwin Ironside; Rachel McDonald


Weitere Kernanwälte:

Ingrid Seegers; Solanda Chen


Referenzen

‘Commercial, practical, knowledgeable and personable.’

‘Sue and Rachel are both among New Zealand’s most recognised experts in IP. I followed the firm as a client when they left Baldwins and have not regretted it once. Big firm expertise, but small firm client service.’

‘Sue Ironside and Rachel McDonald are great at portfolio management. They know how to manage their own team and foreign associates effectively, so as a client, you know your IP is in good hands.’

Kernmandanten

Tanica Limited


Crockers Property Limited


Adam Overton


New Zealand Frost Fans Limited


Pro You Limited


Philippa Bannerman


Mitey Co Limited


The Good Pet Home Limited


World of Wearable Art and Valetta International


D N Brown Limited


Kia Maia NZ Limited


Meno-Me Limited


Abodo Wood Limited


Highlight-Mandate


  • Assisted Tanica Limited in global trade mark searches, followed by trade mark filings and protection strategies.
  • Assisted Client Meno-Me in an intellectual property audit and in international searches.
  • Reviewed the current protection of a coffee producer, providing recommendations and undertaking filing strategy, including opposition proceedings in Spain and non-use actions in China.

Tompkins Wake

Tompkins Wake houses a ‘great IP practice that delivers results’, noted for its ability to assist clients on a range of matters, including managing trade mark portfolios, litigation, IP due diligence, and design and copyright mandates. The practice is spearheaded by Shelley Slade-Gully, who specialises in trade mark law, with expertise in multi-jurisdictional portfolio management and cross-border IP strategies. Associate Joseph Bracewell, praised for his ‘great technical’ ability, specialises in trade marks, copyright, IP licensing and other commercial aspects of IP.

Praxisleiter:

Shelley Slade-Gully


Weitere Kernanwälte:

Mark Lowndes; Robert Bycroft; Kate Cornegé; Joseph Bracewell


Referenzen

‘Great IP practice that delivers results.’

‘Joseph Bracewell and Shelly Slade-Gully are great technical and personable IP lawyers. Highly recommended.’

Kernmandanten

Barfoot & Thompson


Eagle Technology


New Zealand Plumbing World Group


Highlight-Mandate


  • Negotiated terms of arrangements for Barfoot and Thompson for the provision of innovative technology and provided IP advice around branding and licencing.
  • Advised on the IP aspects of the sale and development of technology for Eagle Technology.
  • Advised New Zealand Plumbing World Group on the management of its trade mark portfolio, including IP strategy advice, trade mark filing and IP disputes.