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.
Trademark infringement row over logo for campaign to buy New Zealand-made products02 March 2021
A white supremacist group misused the trademark on social media.
3rd IP & Innovation Researchers of Asia (IPIRA) Conference on March 24-27, 202104 February 2021
What to expect from one of Asia’s major annual academic gatherings
NZ trademark suit highlights issue of discrepancy between colour swatch and written description21 January 2021
Description indicates one shade of green while colour swatch shows another.
Fashion and intellectual property: Some designers are sharing, selling their garment patterns14 December 2020
What are the risks and how can fashion designers prevent misuse of intellectual property?
Vote for the Best IP Firms in Asia Pacific!19 November 2020
Voting for the 2020 Asia IP Awards is now live. Have your say now!
People and places
There has been no new IP legislation in New Zealand. However, the govern-ment is planning changes to the country’s Patents Act 2013 and Trademarks Act 2002. Some lawyers believe these changes should include clarification of IP ownership. New Zealand’s IP laws remain vague when it comes to ownership of AI-created IP, assuming that all IP is created by a real person.
The IP scene is likewise seeing an increase in direct filings from local in-dividuals or overseas entities using local address details, eliminating assistance from New Zealand and Australian agents. This trend has led to rising numbers of applications without good basis and a spike in opposition and invalidity actions.
Lawyers also cite an increasing need for the country to develop a global IP strategy.
Difficulties with enforcement of trademarks in overseas jurisdictions also present challenges to IP owners.
• • •
AJ Park houses a leading IP practice for both contentious and non-con-tentious works, further boosted by its acquisition of Baldwins in October 2020. Thus, in addition to its already dynamic team of lawyers, the firm’s capabili-ties 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 itself, judged as Asia IP copyright firm of the year for New Zealand in 2020, is part of IPH Limited, the intellectual property company holding company.
Full-service firm Anthony Harper has offices in Auckland and Christ-church, 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 pri-vacy. 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, commer-cialization 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. General practice law firm Buddle Find lay offers both contentious and non-conten-tious work with an emphasis on trademarks and copyright matters. The firm, named Asia IP trademarks firm of the year for New Zealand in 2020, 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 Amer-ican 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 pat-ent 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 in-dustrial 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 commercial-ization of IP assets. 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, Den - tons 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 Mi-cro 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.
IP boutique Ellis Terry has offices in Auckland and Wellington, and pro-vides a full suite of IP advice throughout New Zealand. Its software and electron-ics patent practice is one of the largest in New Zealand. Director John Terry is an established patent practitioner; director Blayne Peacock is a highly-regarded patent attorney. 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.
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 inven-tor, Mr. Hughes founded Henry Hughes Limited in 1882 which eventually devel-oped 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 um-brella firm for two law offices, Henry Hughes delivers top-quality service, espe - cially 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 trade-marks 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 ad-vertising 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 is-sues, including trade mark 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.
Asia IP patents firm of the year for New Zealand in 2020 James & Wells is a strong boutique player in New Zealand. Christchurch-based co-founding part-ner 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. Mike Flint joined the firm in September 2021 as a partner in its Christchurch office; Flint joined from Marks & Clerk in Hong Kong, where he worked extensively on mainland China matters. 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 innova-tion 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. Partners Adam Luxton and Nick Mountford are new hirees.
The IP team at Minter Ellison Rudd Watts has been growing under leader-ship of partner Chris Young. “He is very knowledgeable in the area of New Zea-land 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 law-yer 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 under- standing of the commercial importance of intellectual assets. Key contacts at the firm include Matt Howe, Simon Murphy and Leonard Cousins. Clients include Pultron Composites, WaikatoLink, Fastmount, Am-cor, DROPIT and Stretch Sense.
Pipers is a boutique IP specialist based in Auckland and Wellington. Founder and principal Jim Piper is a qualified patent at-torney in both New Zealand and Australia and a well-connected litigator who has been working with international companies, uni- versities and government departments. Ian Cockburn is another key contact for patent matters.
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 Narly Kalupahana, 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 corpo-rates and organizations in the telecommuni-cations, 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 Interna-tional 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 de-livering topnotch services in intellectual property, media, defamation, reputa-tion management and public law. Among them is key practitioner Laura Carter, a barrister and registered patent attorney in New Zealand and Australia. Specializ-ing 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 prose-cution work is particularly praised. Sony, Coca-Cola, Google and Novartis, etc. are among its notable clients. Partner Richard Watts, known for his trademark enforcement and border protection actions, heads the IP group. Sarah Chapman is a leading practitioner.
Tompkins Wake, which merged with Lowndes on September 1, 2021, spe-cializes in the following: trademarks, copyright, designs, IP commercialization, brand strategy, domain name registration and disputes, licensing and Fair Trad-ing Act/Passing Off actions. The firm counts NZ Plumbing World Group, Bar-foot and Thompson, a large New Zealand food producer and a leading industrial engineering company among its reputable clients. 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.
Woodhouse IP was launched as a boutique IP law practice in 2017 by Mar-cus Woodhouse, a former trademark and copyright lawyer at AJ Park. The firm works with local and overseas businesses seeking protection and enforcement of their IP rights in New Zealand, Australia and the Pacific Islands as well as local exporters seeking protection and enforcement of their rights in overseas markets. Lucy Hudson joined the firm from Baldwins in 2021 as an owner/ director; together, she and Woodhouse boast a combined 44 years of experience in all aspects of trademark, copyright, personality law and other IP matters.