BARISTA as a trademark?08 November 2022
Oat milk company’s bid to register BARISTA as a trademark in New Zealand successfully opposed
Meta Adds New IP Tools03 November 2022
Meta has launched improvements to its Brand Rights Protection Manager Tool Now, it is adding more functionality to the tool. Will this protect and secure more users and brands?
Increasing value of copyright works, ideal outcome of NZ-EU FTA, says IP attorney06 September 2022
On June 30, 2022, New Zealand’s Ministry of Foreign Affairs and Trade published the New Zealand-EU Free Trade Agreement following a four-year negotiation.
Vink, Tang urge INTA attendees to seek out innovation02 May 2022
Brands are always big business at the International Trademark Association’s Annual Meeting Live+, so it was no surprise when much of the meeting’s open ceremonies were devoted to what brands can do in today’s world.
Platform shuts down after musicians call out site for selling NFTs of their artworks without consent04 March 2022
“We started the conversation and we’re listening.” These words have been greeting visitors to the non-fungible token (NFT) platform HitPiece after Auckland bass player and music producer Jacob Park discovered an album artwork featuring his face being sold as an NFT in the website for US$100.
New Zealand group loses out anew in manuka honey trademark battle after rejection by UK IP office25 January 2022
For a group of honey producers in New Zealand, the outcome was bitter, not sweet when the UK Intellectual Property Office rejected their application to register Manuka Honey as a trademark in December 2021
Criticism over copyright issues prods NZ library to cease book donation to Internet Archive29 November 2021
Divorce, art and copyright27 September 2021
A divorce case between an artist and her husband in New Zealand has got copyright issues thrown into the mix.
Reality TV shows in copyright infringement skirmish05 August 2021
The producers of “Demolition NZ,” a reality TV show from New Zealand, has accused the producers of Australian TV program “Demolition Down Under” of copyright infringement.
2021 Asia IP Profiles: Tell us about your firm!31 May 2021
Later this year, Asia IP will publish the 2021 edition of Asia IP Profiles. This guide is the definitive resource for companies trying to identify the best IP practices in the region, and is based on editorial research, and surveys submitted by leading law firms.
People and places
In 2021, New Zealand and the United Kingdom agreed in principle to a trade agreement which will impact the former’s copyright laws. The New Zealand-UK Free Trade Agreement includes a provision to extend copyright term in New Zealand by 20 years. This means the copyright term for an author will cover the years that constitute his lifetime and the next 50 years after his death, plus 20 years after this period. The World Trade Organization’s standard for a copyright term is the author’s lifetime plus 50 years.
The Commerce Amendment Bill was also introduced which will repeal the current IP exception in the Commerce Act. This will mean that some businesses won’t be able to enforce their IP rights if doing so will have the likely effect of substantially lessening competition in a market.
2021 also saw an increase in the number of New Zealand applications for trademark registration particularly in the following cases: applications containing “NFT” or “digital token” soared in number by 524 percent; those containing “cryptocurrency” climbed by 160 percent, while those with the word “blockchain” grew in number by 67 percent.
Expected for release in 2022 is an exposure draft of the IP Laws Amendment Bill. It aims to change the criteria covering the registration of series trademarks, provide a limit to the number of marks that may be part of a series trademark, eliminate the ‘aggrieved person’ requirement for the invalidation of a trademark registration, among other key features.
The New Zealand Plant Variety Act is being reviewed at present.
AJ Park houses a leading IP practice for both contentious and noncontentious works, further boosted by its acquisition of Baldwins in October 2020. Thus, in addition to its already dynamic team of lawyers, the firm’s capabilities have been heightened with the addition of former attorneys from Baldwins. These lawyers include Penny Catley and Thomas Huthwaite for trademarks; Wes Jones and Chris Way for patents; and Paul Johns for copyright. AJ Park, which was named New Zealand copyright firm of the year at the 2021 Asia IP Awards, is part of IPH Limited, the intellectual property holding company.
Full-service firm Anthony Harper has offices in Auckland and Christchurch, from which it provides advice across the spectrum of intellectual property work. It offers services in IP transactions, commercialization of IP, trademarks, disputes and enforcement, IP advisory, data protection and privacy. One of its key practitioners is partner Mark Gavin, who has extensive experience in IP litigation.
The IP team at Bell Gully has done work for notable clients such as Danone and Sony. The firm has a sound reputation for its contentious work on covering brand protection, trade mark registration, confidential information, commercialization of intellectual property, licenses and assignments of IP, copyright, patent and information technology issues, and IP enforcement. Partner Dean Oppenhuis is a primary contact for IP matters.
Wellington-area Blue Penguin IP specializes in life sciences work. Leading the way at the firm are principal Jo Shaw, who has 17 years of patent attorney experience in New Zealand and Australia, and principal Jon Ashen, who has 12 years of similar experience. Shaw is a specialist in chemical patent matters including small molecule & antibody-drug conjugates/anti-cancer vaccines; chemical synthetic processes and methodologies; food technologies including preservation, storage and encapsulation products and processes, probiotics and dairy products and processes; and others. Ashen is a former patent examiner at the United States Patent and Trademark Office and the Intellectual Property Office New Zealand, and a specialist in biological patent matters including plant variety rights.
The lawyers at Bowie Yorke in Auckland are specialists in commercializing clients’ IP. Partners Allan Bowie and Scotte Yorke have made a career of acting for everyone from high-profile MNCs to Kiwi startups, including Comvita, Fisher & Paykel Appliances, Otago and Massey Universities, AUT, The Warehouse, Pacific Edge, Tyco Electronics, Les Mills, Air New Zealand, Fletcher Building, Pumpkin Patch, Fonterra and Formway Furniture. Both have previous experience at some of the largest IP law practices in New Zealand.
General practice law firm Buddle Findlay offers both contentious and noncontentious work with an emphasis on trademarks and copyright matters. The firm, which was named New Zealand trademark firm of the year at the 2021 Asia IP Awards, also handles patent advisory, dispute resolution and litigation work, and carries out anti-counterfeiting actions as well as provides transactional support to IP owners. Partner John Glengarry, a specialist intellectual property lawyer with extensive experience both in New Zealand and overseas, heads up the trademark team and co-leads the IP practice. British American Tobacco and Yahoo! are counted among the firm’s clients.
Boutique firm Catalyst Intellectual Property is made up of two law firms: Catalyst Intellectual Property Patent Attorneys and Catalyst Intellectual Property Law Limited, an incorporated law firm. It houses a small but well-experienced team of professionals. With the technical backgrounds of its partners, the firm has developed particular strength in patent work. Greg Lynch is a registered patent attorney with expertise in chemistry. Garth Hendry is another key contact for patents.
Chapman Tripp is a full-service firm with 56 partners and a team of over 200 staff in Auckland, Wellington and Christchurch. The IP practice’s notable work includes representing Twentieth Century Fox in copyright litigation over geo-blocking circumnavigation technology, and acting as counsel for global industrial player Allegion to defend patent infringement allegations in a three-week High Court trial. Partner Matt Sumpter is a key contact noted for his work in IP, competition law and civil litigation.
CreateIP has considerable expertise in the management and commercialization of IP assets including patents, designs, copyright, trademarks, domain names, commercialization and litigation. It advised the Motion Picture Association of America, Microsoft (on its anti-piracy and copyright enforcement programme) and Starbucks, among others. The firm was founded by partner Robert Snoep, a Christchurch-based registered patent attorney who specializes in mechanics and engineering.
Dentons and Kensington Swan in New Zealand have combined to form Dentons Kensington Swan. With new offices in Auckland and Wellington, Dentons can now connect clients to a team of more than 100 lawyers in New Zealand who can meet the needs of clients across a wide range of industries. Kensington Swan had acted for Micro Mobility in defending its well-known trademark Micro and for the New Zealand Drag Racing Authority in a High Court proceeding regarding its event name. Partners Jenni Rutter, Charlotte Henley and Hayley Miller are key contacts. Dentons Kensington Swan was named New Zealand patent firm of the year at the 2021 Asia IP Awards.
Duncan Cotterill is a full-service law firm with offices across New Zealand offering services ranging from agribusiness to trusts, as well as IP, technology, and data protection and privacy. Partners Michael Moyes and Scott Moran are key contacts. Moyes has, among other things, advised on all legal matters required to launch a business, from brand protection to privacy policies and compliance to app user terms and development contracts. Moran manages the IP portfolios of a range of New Zealand, Australian and international businesses, assisting with branding strategies, copyright issues, trademarks and licensing, in particular.
IP boutique Ellis Terry has offices in Auckland and Wellington, and provides a full suite of IP advice throughout New Zealand. Its software and electronics patent practice is one of the largest in New Zealand. Director John Terry is an established patent practitioner; director Emily Ellis is a key contact for branding and copyright matters. Among the firm’s top-performing lawyers in recent years are principals Mathew Campbell for patent prosecution and Rachael Koelmeyer for trademark prosecution and trademark contentious. Former director Blayne Peacock has left the firm and is now working in Singapore as an angel investor.
Henry Hughes refers to both Henry Hughes IP and Henry Hughes Law. The former is composed of registered trademark and patent attorneys while the latter is a team of barristers and solicitors whose focus is intellectual property law. Henry Hughes is also the name of the firm’s founder. A steam engine inventor, Mr. Hughes founded Henry Hughes Limited in 1882 which eventually developed into Henry Hughes IP. Meanwhile, Henry Hughes Law used to be known as Henry Hughes & Co. which was established in 1991 to take on the increasing workload consisting of litigation, copyright and licensing matters. As the umbrella firm for two law offices, Henry Hughes delivers top-quality service, especially for prosecution work. Director Frank Callus, a registered patent attorney in New Zealand and Australia and also qualified in the UK and the European Union, is known for his patent work and expertise in chemistry and pharmaceuticals.
Hudson Gavin Martin focuses on trademarks and designs. Based in Auckland, it has done notable work for Sony, A88 and Intel; many of its clients are from the FMCG, fashion and advertising sectors. Founding partner Mark Gavin left the firm in February 2018.
Ironside McDonald lawyers in Auckland bring a combined 40 years of experience to the table, having worked alongside some of the most ambitious and innovative brands in Australiasia. The firm advises on both local and international IP issues, including trademark protection, copyright, designs, IP enforcement and defence, as well as IP licenses and agreements. The firm was formed in May 2019 by former Baldwins partner Sue Ironside and former Baldwins senior associate Rachel McDonald; both bring a wealth of experience, particularly in trademarks work. New hirees include technology and IP lawyer Sean Brogan as commercial consultant.
James & Wells is a strong boutique player in New Zealand. Christchurch-based co-founding partner Ceri Wells is known for his work in the Society of Beer Advocates case against DB Breweries, and served as a past president for the New Zealand Institute of Patent Attorneys. Wells represents Architectural Profiles, a leading manufacturer of aluminum window and door joinery, sheet glass and plastics products in New Zealand, with a large trademark portfolio. Hamilton-based partner Ian Finch is a key contact for litigation. The firm’s trademark team in Auckland is led by partner Carrick Robinson, who also has a focus in food & beverage innovation and related IP implications. Key practitioners are Jonathan Lucas and Jason Rogers in the patent practice, Gus Hazel for copyright, Jason Wach, Tim Walden and Andrew Scott. Patent partner Mike Flint has joined the firm.
Kate Duckworth Intellectual Property was founded in 2017 by the former Catalyst IP partner of the same name. Duckworth founded her boutique firm with a focus on taking new products and businesses to market. “I enjoy untangling the complexities of intellectual property law for clients,” she said. Her clients have included Harley Davidson, Victoria’s Secret, Novartis, Toyota, Cadbury, Nutricia and the creator of the cronut, Dominique Ansel. Some of her favourite domestic clients have included Stoked, which makes luxurious wood fired hot tubs; te Pā winery, which makes wines in Marlborough; Swift Fly Fishing, a maker of fly rods and fishing films; craft beer brewery Cargo Brewery in Central Otago; and former Tall Black Frank Mulvihill, who makes basketball gear under his Triple Threat label.
Little Tree IP in Auckland was founded by Sooyun Lee, the former head of trademarks and special counsel at Bell Gully. Lee has managed a number of the largest trademark portfolios in New Zealand, and has advised on the IP aspects of many of the country’s most significant M&A transactions in recent years. She is regarded for providing smart, sensible and straightforward advice.
The IP team at Minter Ellison Rudd Watts has been growing under the leadership of partner Christopher Young. “He is very knowledgeable in the area of New Zealand intellectual property law, and he consistently provides excellent value for money and is very personable,” says a client who has worked with him for more than five years. Other contacts include partner Richard Wells, a commercial lawyer with particular expertise in technology, media and telecommunications law, intellectual property, commercial contracting and sport
Origin IP is a team of senior patent attorneys with a thorough understanding of the commercial importance of intellectual assets. Key contacts at the firm include Matt Howe, Simon Murphy and Leonard Cousins. Aside from trademark and patent attorney services, the firm also delivers IP business intelligence that helps shape business decisions as well as strategy and capability workshops. Clients include Pultron Composites, WaikatoLink, Fastmount, Amcor, DROPIT and Stretch Sense.
Potter IP operates primarily in the trademark, design, branding and IP portfolio management, and IP strategy space, eschewing patent and commercial law matters. The firm’s clients include many recognizable names, such as ASB, Air New Zealand, Invivo & Co., Fonterra, Blunt and Container Door. Key contacts at the firm include directors Jullion Nelson Parker and Jane McHenry. The firm also runs a well-regarded training programme designed to help businesses fully maximize their IP.
Russell McVeagh is a commercial law firm in Auckland and Wellington; its IP clients include major local and international corporates and organizations in the telecommunications, pharmaceutical, food and beverage, FMCG, media and sporting sectors. Partner Liz Blythe is trusted by clients for her advice on complex transactions in technology; she has assisted several large New Zealand-based organizations in connection with cyberattack responses, and advised Auckland International Airport on its partnering arrangements with Vision-Box in relation to its introduction of biometric e-gates. Partner Joe Edwards is a key litigator; he leads the firm’s marketing law, media and IP team. His IP advice extends to both contentious and non-contentious matters.
Auckland-based Sangro Chambers boasts of seasoned civil litigators and specialists whose past experiences in major law firms give them the edge in delivering topnotch services in intellectual property, media, defamation, reputation management and public law. Among them is key practitioner Laura Carter, a barrister and registered patent attorney in New Zealand and Australia. Specializing in IP disputes, Carter advises and acts on trademark, patent, copyright, Fair Trading Act disputes and others.
Simpson Grierson has a strong IP practice. The firm’s trademark prosecution work is particularly praised. Sony, Coca-Cola, Google and Novartis, etc. are among its notable clients. The firm has worked on the biggest trademark cases in the country, including Rescue v. RestQ, Perpetual AU v. Perpetual NZ and one involving a Federal Court appeal in Australia regarding the registrability of the A2 Milk mark, among others. In addition, the firm handled brand protection and enforcement strategy for the New Zealand Olympic Committee in connection with the 2020 Olympics, brand protection for Paralympics NZ for the Paralympic Games, brand protection and border protection strategy for Proctor & Gamble, and others. Partner Richard Watts, known for his trademark enforcement and border protection actions, heads the IP group. Other leading practitioners are Sarah Chapman, Ashton Welsh, Jania Baigent, Anita Birkinshaw and Raymond Scott.
Tompkins Wake, which merged with Lowndes on September 1, 2021, specializes in the following: trademarks, copyright, designs, IP commercialization, brand strategy, domain name registration and disputes, licensing and Fair Trading Act/Passing Off actions. The firm counts NZ Plumbing World Group, Barfoot and Thompson, a large New Zealand food producer and a leading industrial engineering company among its reputable clients. In the last 12 months, the firm has provided advice regarding copyright ownership of NFTs for one of its NFT start-up clients and advice regarding potential copyright infringement by a national newspaper of a client’s NFT, among others. The staff is composed of 125 professionals in the firm’s Auckland, Hamilton, Tauranga and Rotorua offices. Shelley Slade-Gully, Kate Cornege, Kerri Dewe and Robert Bycroft are the key practitioners. Lowndes founder Mark Lowndes is the newest addition to the team following the merger.
Wellington-based Zone Group is led by Zone Law, an IP and business law firm, and Zone Patents, which provides a full range of patent services, from drafting patent specifications to novelty and freedom to operate searches to specialist litigation services. Julie Ballance, Theodore Doucas and Jeremy Hunter lead the firm, between them bringing well over 50 years of experience in IP work. Ballance has advised many well-known MNCs, particularly in the pharmaceutical and chemical industries; Doucas is a former assistant commissioner of patents, trademark and designs at IPONZ; and Hunter joined the firm after running his own commercial practice for more than a decade.