New Zealand

“Business as usual” remains the pleasing narrative for Kiwi IP practitioners. Despite its small population and geographical isolation, New Zealand boasts one of the healthiest trademark systems in Asia-Pacific. With the Madrid system now bedded down, brand owners have taken equal liking to filing through both Madrid and the national route – a trend which is keeping many domestic practices happy. In addition, disputes have steadily increased since accession to Madrid. Enforcement generally takes the form of cease and desist letters, as the mature IP scene generally discourages full-blown litigation and anti-counterfeiting campaigns. Full-service groups and attorney firms alike have enjoyed stable workflows over the past year, owing in part to the overall vibrancy of the New Zealand market.

Firms

1
AJ Park
Simpson Grierson
2
Baldwins
Buddle Findlay
Hudson Gavin Martin
James & Wells
Kensington Swan
3
Bell Gully
Henry Hughes IP
Minter Ellison Rudd Watts
AJ Park
The perennial giant of the New Zealand IP scene, AJ Park sets the pace for the other outfits to follow. “It has a staggering amount of talent in-house and has always had the volume and loyalty from clients, due to the quality of its work.” Whether fighting the corner of brand owners in disputes or managing portfolio management, the boutique excels across the board. Few have as much substantive IP experience as three-decade veteran Colleen Cavanagh. As an integral consultant to the group, Cavanagh is a prime choice for meticulous prosecution. IP strategist John Hackett is a favourite of internationally minded brand owners and routinely acts for heavy-hitters such as Time Warner Inc and Les Mills International Group. Clients of Damian Broadley owe much of their success to the trademark virtuoso’s “attention to detail” on clearances, prosecution and long-term strategy. A go-to for US corporations with interests in New Zealand, Lynell Tuffery Huria is also a “guru” for trademarks relating to the Pacific Islands. Feared litigator and enforcement ace Kim McLeod is a sure bet for high-stakes disputes in the Antipodes.
Baldwins
Few firms can match the longevity and IP know-how of New Zealand institution Baldwins. One satisfied client enthuses: “I appreciate that it doesn’t have pre-packaged, one-size-fits-all-service plans. It is forward looking and can translate your company vision and strategy into a plan that fits your needs and budget.” Whether enforcing marks or devising incisive prosecution game plans, it keeps its sights firmly set on the international arena. Sue Irwin Ironside has over two decades of experience in cross-border brand strategy and sits on the International Trade Association Madrid System Sub-committee, as well as Marques’ Famous and Well-Known Marks Team. Head of trademarks Penny Catley is sought out by conglomerates and small and medium-sized enterprises (SMEs) alike in need of clairvoyant commercial counsel. WTR 1000 debutante Angela Searle holds down the fort in the Christchurch office and is an integral adviser to rights holders on the South Island.
Bell Gully
The full-service Bell Gully parlays equal strengths in IP and corporate matters to keep a diverse clientele happy. Transactional and enforcement instructions are the order of the day at this heavily garlanded firm, which has won several awards for its M&A work. Deputy chairman and robust litigator Ian Gault is the main man on the brand protection front; IP disputes feature prominently in his wide-ranging practice.
Buddle Findlay
Rising to the silver tier this year, commercial heavyweight Buddle Findlay shines as a rare full-service outfit that devotes a considerable proportion of its substantial resources to intellectual property. Its wide-ranging capabilities are a credit to its trademark division, which synergises with the financial and corporate wings to secure favourable results for multinationals and SMEs alike. Racking up awards for its smooth execution of lucrative commercial deals, the five-partner IP team is a smart choice for both contentious and prosecution matters. The sure-handed steward of portfolios for the likes of UMF Honey Association Inc and SKY Network Television Limited, John Glengarry commands respect for his mastery of all things prosecution. Graeme Hall makes a well-deserved entry into the WTR 1000 as a savvy litigator and familiar face at the High Court.
Henry Hughes IP
With a history almost as long as that of the country itself, Henry Hughes wins acclaim for the quality and dedication of its highly specialised IP attorneys. From filings to oppositions and court battles, it handles all briefs with an eminently personal touch. “It places great emphasis on direct involvement with matters. Client matters are not just passed off to associates; directors have close contact with clients, so they keep coming back.” An authority on non-traditional marks, 25-year veteran Barbara Sullivan operates flawlessly on both sides of the contentious/non-contentious divide. Foreign clients appreciate David Moore for his global perspective on prosecution and commercial issues; he is an active member of the International Trademark Association. WTR 1000 newcomer Elena Szentivanyi joins the elite ranks as an IP litigator who has made her mark in several precedent-setting High Court cases.
Hudson Gavin Martin
The darling of major entertainment and media players, Hudson Gavin Martin is one of the “most focused and specialised boutiques in the country”. Eschewing the cookie-cutter practices of some traditional filing factories, the nine-year-old firm takes a sophisticated strategic approach and provides customised prosecution solutions. Anti-counterfeiting and transactions are further strong suits of the commercial team, which acts for the likes of Lion and Louis Vuitton Pacific Limited. Clients and competitors alike recognise veteran Mark Gavin as one of the most versatile trademark litigators in the country, whose ability spans industries from pharmaceuticals to liquor. Prosecution and commercial ace Jason Rudkin-Binks “is a consummate professional and practises with a huge smile on his face. He takes time in getting to understand clients and makes each feel as though it is the only client he has to deal with.”
James & Wells
“You will always get excellent advice at James & Wells. Its practitioners demonstrate the perfect mix of deep IP knowledge and personal attention to clients’ interests.” Well into its fourth decade of operation, the medium-sized boutique remains a fresh, dynamic choice for brand owners throughout the country. Though best known for its work with local enterprises, the flexible group has made a considerable impact with foreign stakeholders seeking “the full brand protection package”. A prize fighter in the patent space, Ian Finch keeps the gloves on in branding disputes for household names and start-ups alike. Carrick Robinson is a natural commercial talent who draws astutely on his accountancy skills in devising prosecution strategy.
Kensington Swan
Renowned for its contentious and transactional prowess, corporate outfit Kensington Swan has achieved admirable milestones in the prosecution space. With brand strategy and enforcement the bread and butter of its nimble IP team, the likes of HSBC, Planet Hollywood, Elizabeth Arden Inc, Haribo and Tiger Airways all flock to its doors with their diverse trademark needs. Recent contentious work of note includes staunch representation of Kellogg Company in a case involving shape marks for cereal. All-rounder Jenni Rutter combines a strong multinational background with close business connections to the delight of her heavyweight clients. No stranger to high-stakes disputes, Charlotte Henley cuts an impressive figure in the contentious sphere, with clients’ interests always front and centre. “Charlotte is a true pleasure to work with. She is thorough, responsive and diligent in her handling of our matters.”
Minter Ellison Rudd Watts
Maintaining perhaps the closest integration with the Australian market of any New Zealand outfit, full-service Minter Ellison Rudd Watts is ably equipped to tackle the full range of trademark matters. Bolstered by an extensive Asia-Pacific network, it adroitly dispatches brand protection briefs from across the wider region. Assisting the likes of Sumitomo Corporation, SKYCITY Entertainment Group Limited and ASOS Plc, group head Christopher Young receives effusive praise from local and foreign patrons alike. “Chris’s personality and service ethnic stand him apart from his peers. He consistently provides sound legal advice, taking into account the specific commercial environment, and takes a proactive approach to all assignments.”
Simpson Grierson
Ascending to the gold tier of the WTR 1000 this year, full-service ensemble Simpson Grierson wins effusive praise for its A-to-Z trademark offering. One foreign associate avers: “It is simply the best in New Zealand.” Easily matching – if not eclipsing – the capabilities of the country’s most formidable boutiques, the squad enjoys the loyal patronage of prestigious names such as the New Zealand Olympic Committee, Mars Group and Jaguar Land Rover Ltd. Clients “feel totally safe with Simpson Grierson. Other full service groups don’t really match the level of commitment to intellectually property that its partners show.” Department co-head and multi-talented practitioner Earl Gray leads the charge for multinational blue-chips in both contentious and non-contentious engagements. The trusted ally of numerous pharmaceutical and IT giants, “commercially gifted” Richard Watts rises to the gold tier in the prosecution tables. Aside from his astute advocacy before the Supreme Court, Watts also stands out as one of the only New Zealanders dual qualified as a UK trademark attorney. “Crisis solver” Tracey Walker is an assertive litigator with a flair for untangling complex disputes.

Individuals: enforcement and litigation

Mark Gavin - Hudson Gavin Martin
Earl Gray - Simpson Grierson
Kim McLeod - AJ Park
Richard Watts - Simpson Grierson
Kate Duckworth - Catalyst Intellectual Property
Ian Finch - James & Wells
Ian Gault - Bell Gully
Graeme Hall - Buddle Findlay
Jenni Rutter - Kensington Swan
Barbara Sullivan - Henry Hughes IP
Matt Sumpter - Chapman Tripp
Elena Szentivanyi - Henry Hughes IP
Tracey Walker - Simpson Grierson

Individuals: prosecution and strategy

Damian Broadley - AJ Park
John Glengarry - Buddle Findlay
Earl Gray - Simpson Grierson
John B Hackett - AJ Park
Sue Irwin Ironside - Baldwins
Alan Potter - Potter IP
Jason Rudkin-Binks - Hudson Gavin Martin
Richard Watts - Simpson Grierson
Penny Catley - Baldwins
Colleen Cavanagh - AJ Park
Charlotte Henley - Kensington Swan
David Moore - Henry Hughes IP
Carrick Robinson - James & Wells
Angela Searle - Baldwins
Barbara Sullivan - Henry Hughes IP
Lynell Tuffery Huria - AJ Park
Christopher Young - Minter Ellison Rudd Watts

New Zealand: The Bar

Senior counsel

Andrew Brown QC - Bankside Chambers
Clive Elliott QC - Shortland Chambers
Julian Miles QC - Richmond Chambers

Junior counsel

Greg F Arthur - Thomas More Chambers
Kevin Glover - Shortland Chambers
Rosemary Wallis -
Sheana Wheeldon -
Garry Williams - Richmond Chambers

Senior counsel

One of the most experienced barristers in New Zealand, Andrew Brown QC of Bankside Chambers has played a key role in many of the country’s most influential trademark suits. Practitioners applaud Shortland Chambers’ Clive Elliott QC for his ability to turn weak cases around involving matters ranging from brand protection to information technology. Consummate cross-examiner Julian Miles QC is the star IP barrister at Richmond Chambers.

Junior counsel

Former AJ Park litigation head and patent attorney Greg Arthur brings a “thorough and trusted approach” into battle. Her previous life as a commercially attuned solicitor means that Sheana Wheeldon can delicately balance the demands of the courtroom with the needs of clients. Former Baldwins partner Rosemary Wallis is another favourite of practitioners seeking a barrister with genuine brand owner empathy. WTR 1000 newcomers Kevin Glover and Garry Williams have impeccable reputations on the IP scene; Glover is a tireless advocate at Shortland Chambers, while clients flock to Richmond Chambers’ Williams for his crystalclear plans of attack.

Close

Register for more free content

  • Read more World Trademark Review blogs and articles
  • Receive the editor's weekly review by email
Register now  
Issue 67