New Zealand

As a mature IP jurisdiction, New Zealand boasts an exceptionally robust, user-friendly trademark system. There have been few significant developments to report in the past year, although the launch of a geographical indications register for wines and spirits is a positive change for those in the food and beverage sector. Sources report that, with the economy in such good shape, more clients are willing to enforce their trademark rights, leading to a slight uptick in litigation; companies are also more proactive when it comes to rebranding efforts.

Firms

1
AJ Park
Simpson Grierson
2
Baldwins
Buddle Findlay
Hudson Gavin Martin
James & Wells
Kensington Swan
3
Bell Gully
Duncan Cotterill
Henry Hughes IP
MinterEllisonRuddWatts
AJ Park
AJ Park is “by far the biggest IP player in New Zealand” and “dominates the market”. A compelling choice for brand owners with large international portfolios on account of its finely tuned management systems, it represents virtually half of the Fortune 500; however, the lawyers here can switch gears effortlessly and also give smaller domestic innovators the close attention they need. The seven-partner trademark team has ample star power, but managing partner Damian Broadley must be counted as one of the group’s most eminent experts. “A smart tactician who can see the wood for the trees”, he has the deftest touch on clearance, protection and portfolio management briefs. New Zealand Rugby Union is one client he has been busy with lately, providing advice around the Major Events Management Act under which nationally significant events can be granted special protection. Another canny trademark strategist is chair of partners John Hackett, whose dynamism and love for intellectual property is an inspiration for clients and colleagues. Auckland partner Colleen Cavanagh maintains a broad brand protection and commercialisation practice, but also brings anti-counterfeiting expertise to the table. A global thinker who develops close, longstanding relationships with clients, she can call on over three decades of experience to deliver crisp results on every file. The top name on the litigation team roster is Kim McLeod, who provides gold-standard representation in must-win IP disputes of all stripes. Having worked in Hong Kong, he is an abundant source of insight on IP enforcement in Hong Kong and China, and has cultivated a strong cross-border element in his practice. The group has specialists for just about every occasion; Lynell Tuffery Huria, for example, is a leader when it comes to indigenous law and the protection of cultural icons. By virtue of recommendations from US associates, Jonathan Aumonier-Ward makes his debut in the WTR 1000 this year. He has a nose for commercial solutions to diverse trademark and copyright issues.
Baldwins
A loyal band of high-calibre clients – from exciting start-ups to foreign multinationals – unanimously champion the sophisticated trademark services on offer at Baldwins. The storied boutique has a reputation for managing large filing programmes with brisk efficiency, but also stands out for its international trademark protection expertise; the firm leverages an outstanding network of foreign associates to secure watertight cross-border protection. Worthy of special mention is the set’s penchant for helping clients to expand their brands and business in China; it recently constituted a China desk in Auckland, staffed by fluent Chinese speakers. Leading the team is Wellington-based Penny Catley, a commercial IP lawyer who loves nothing more than maximising her clients’ brand value. The “immensely experienced” professional has a nuanced understanding of several industries, including wine, fashion and energy. The recipient of effusive client praise, Auckland-based former firm chair Sue Irwin Ironside is another expert to keep on speed dial. “She fully understands your business and the markets you operate in, and is someone you can bring into strategy and annual shareholder meetings. She works with exceptional diligence to achieve the best outcomes, and is a committed and utterly professional lawyer with great integrity. She goes the extra mile and provides training on important topics, and sends news items, educational articles or case decision summaries which are relevant to your business.” In Christchurch, Angela Searle is the person to reach out to for portfolio management, as well as anything contentious.
Bell Gully
Commercial outfit Bell Gully has a remarkable 175-year history and is plugged into the New Zealand business world like few others. Its many well-known domestic clients – not to mention a slew of global household names – entrust it with the protection of their most valuable brands, and the firm certainly delivers in this regard with a tip-top portfolio management and IP monetisation service. The team also knows how to lay a trademark dispute to rest – something of a speciality for deputy chair Ian Gault. In line with the firm’s overall philosophy, Gault gives straight-to-the-point advice which supports clients’ business development.
Buddle Findlay
The trademark squad at full-service operator Buddle Findlay provides “clear and easy-to-understand counsel” and exhibits “the highest degree of professionalism” in all of its client interactions, which are centred on the advancement of commercial objectives. It advises a plethora of famous international companies – Colgate-Palmolive is just one example – but has also become a leader in the start-up space. No matter who the client is, though, the team delivers with poise and finesse on all manner of prosecution, transactional and litigation mandates. John Glengarry, who captains the side, “is an absolute pleasure to deal with”. A versatile patent and trademark lawyer, he obtains IP rights, then manages, enforces and commercialises them without breaking a sweat. The pragmatism of his advice and the speed with which he dispenses it make him an incredibly cost-effective option. Auckland contentious team leader Graeme Hall is the man to turn to when things get really spicy. A constant presence in the High Court, he also knows a thing or two about alternative dispute resolution methods. New to the list this year is Hamish Selby, who garners excellent references. “He makes IP protection as simple and painless as possible and provides clear strategic guidance from the outset. He mitigates risks very well, and gets results.”
Duncan Cotterill
“Extremely knowledgeable and efficient, and rapid in its response to any query”, Duncan Cotterill is enthusiastically recommended and consequently makes its WTR 1000 debut for 2018. The compact team is applauded for its neatly packaged, practical advice on prosecution and disputes; it uses acutely commercial language – not legalese – to provide perceptive, crystal-clear counsel. Dan Winfield, labelled by one foreign associate as “among the very best local counsels we work with worldwide”, is “a fantastic trademark lawyer and a go-to lawyer for New Zealand and also Australia”. “He is highly motivated, friendly and responsive, and he really gets to the point in his advice – he can break down complex issues into easy-to-understand pieces.” He co-heads the practice with Scott Moran, who manages local and international portfolios in a commercially sensible way.
Henry Hughes IP
As IP practice has matured and developed in New Zealand, Henry Hughes has been there every step of the way – making its shrewd insights on trademark strategy a widely sought-after asset. A combination of patent and trademark attorney firm and law firm, it boasts an expert panel of professionals ready to deploy on any and all contentious and non-contentious briefs. A director of both arms of the organisation, Barbara Sullivan is one of the most experienced IP heads in the country. Litigation is one of her fortes and she recently hit the headlines with her successful representation of the plaintiff in an appeal to the Supreme Court in Crocodile International v Lacoste. Another individual who “can be counted on to get the job done” is Elena Szentivanyi, who blends deep industry knowledge and trademark expertise to great effect in her clearance, prosecution, administrative actions and IP auditing practice. The cosmopolitan David Moore is the man to turn to for an international perspective; he has practised in the Middle East and Australia, as well as New Zealand.
Hudson Gavin Martin
Hudson Gavin Martin has successfully positioned itself as a business ally to marquee technology and media entities, as well as numerous other IP-rich companies. It does a terrific job tailoring its work and service to the specific needs of different clients, and has a commercial sense that chimes with cutting-edge innovators. Its trademark service runs the gamut, from strategic advice around registrations to representation in infringement battles. “Top-quality lawyers” Mark Gavin and Jason Rudkin-Binks are the key names to note. Gavin is hailed as “an experienced IP litigator” who is “great for big-ticket cases”. Rudkin-Binks is distinguished by his extensive in-house experience – he previously worked for GlaxoSmithKline and Shell in the United Kingdom – and his intimate understanding of patrons’ business-critical concerns, including the need to work within tight budgets.
James & Wells
Three of the seven partners at James & Wells specialise in trademark law, and the team has an amazing breadth and depth of collective experience; this all makes for an uncommonly well-rounded branding practice. The firm also offers outstanding IP litigation services, providing sterling representation to brand owners when they need it most. With offices in all of New Zealand’s main commercial centres, it is within easy reach of domestic rights holders, which adds an extra layer of comfort. The firm was founded by patent and trademark ace Ceri Wells, an incisive brand strategist who is equally comfortable advising behind the scenes as he is on the frontlines of enforcement. “Efficient and easy to work with, Ceri has extensive knowledge of trademarks and never fails to come up with solutions. His international trademark expertise is also essential.” Ian Finch helms the contentious unit – a role he performs flawlessly – while at the same time contributing much to civic IP life in the country. Carrick Robinson comes from a tax background and is a font of knowledge on IP valuation and taxation; however, his trademark practice is extremely broad and his client base correspondingly diverse.
Kensington Swan
Wholeheartedly recommended by clients, Kensington Swan is “an excellent sounding board on any number of trademark matters” and a “responsive firm which produces great quality work”. Sources commend its flexibility on fee arrangements, but also note its reasonable rates in the first place. The glowing feedback extends to the individuals who make up this vibrant practice: Jenni Rutter, who specialises in IP enforcement and brand protection, is a “perspicacious, commercially driven and talented IP lawyer with excellent judgement”. Lately, she has been representing Unilever in a significant opposition. Fellow partner Charlotte Henley is “efficient, thorough and practical”, winning plaudits for her strategic counselling, clearance and enforcement acumen. Her recent highlights include advising Tourism New Zealand on the revamping of a logo in several jurisdictions and on enforcement of the body’s exclusive brand rights.
MinterEllisonRuddWatts
Award-winning New Zealand full-service player MinterEllisonRuddWatts does a sterling job of integrating its different departments so that clients get the benefit of holistic legal guidance. Helping to make this possible is a robust IP group capable of guiding enterprises down commercially sensible paths at every stage of a brand’s lifecycle. The division is captained by Christopher Young, who deploys his “impeccable attention to detail” to sew up propitious IP agreements and direct brand strategy.
Simpson Grierson
A business law firm that never takes its eye off intellectual property, Simpson Grierson makes its second consecutive appearance in the WTR 1000 gold tier this year. Specialised in high-end trademark work, the firm perennially features in the market’s most important IP litigations. A recent example includes its representation of National Storage in a trademark and passing-off case brought by National Mini Storage, which was seeking an injunction to prevent the former from trading under its name in the Auckland area; quick to get to grips with the case’s complex issues surrounding online infringement, geographical division of goodwill and similarity of descriptive marks was Richard Watts, “a terrific, results-oriented lawyer who knows what proper advocacy is all about”. He co-heads the practice with all-rounder Earl Gray, an erudite author on trademark and copyright law, but one with a commercially attuned – rather than purely academic – approach. Of late, he has successfully handled oppositions for Harkness & Young and Nexcorp, and conducted a thorough review of New Zealand Cricket’s trademark coverage.

Individuals: enforcement and litigation

Mark Gavin - Hudson Gavin Martin
Earl Gray - Simpson Grierson
Kim McLeod - AJ Park
Richard Watts - Simpson Grierson
Jonathan Aumonier-Ward - AJ Park
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
Dan Winfield - Duncan Cotterill

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
Rachel Colley - CreateIP
Charlotte Henley - Kensington Swan
David Moore - Henry Hughes IP
Scott Moran - Duncan Cotterill
Carrick Robinson - James & Wells
Angela Searle - Baldwins
Hamish Selby - Buddle Findlay
Barbara Sullivan - Henry Hughes IP
Lynell Tuffery Huria - AJ Park
Ceri Wells - James & Wells
Dan Winfield - Duncan Cotterill
Christopher Young - MinterEllisonRuddWatts

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 - Barrister
Sheana Wheeldon - Barrister
Daisy Williams - Shortland Chambers
Garry Williams - Richmond Chambers

Senior counsel

At Bankside Chambers, Andrew Brown QC is a highly respected IP specialist who has been on the frontlines of many heavy-hitting trademark spats before both the courts and the IP office. He keeps as up to date as one can get on trademark developments through his cuttingedge work and his extensive publishing activities. Clive Elliott QC is also clued up on everything that is happening in the market, partly as a result of his extensive involvement in various domestic and international IP organisations. The Shortland Chambers barrister, patent attorney and arbitrator currently serves as president of the New Zealand Bar Association. Julian Miles QC plies his trade out of Richmond Chambers. He has decades of contentious experience as a law firm partner and a member of the independent bar, and his whetted trial skills translate into success time and again in complex commercial and IP cases.

Junior counsel

Thomas More Chambers’ Greg Arthur is “extremely capable, knowledgeable and has faultless judgement. Having Greg on your side is immeasurably beneficial”. The erstwhile AJ Park managing partner recently prevailed at the Supreme Court for Crocodile International in a long-running dispute with Lacoste. Solicitor and patent attorney Sheana Wheeldon led Kensington Swan’s national IP team for a decade. Now, the solo practitioner is a favourite with global brands and law firms for handling the knottiest of court battles. Another solicitor to make the switch to the independent bar, Rosemary Wallis argues eloquently in administrative disputes, alternative dispute resolution forums and at all levels of the court system. Kevin Glover of Shortland Chambers takes “an understated, academic approach to cases, and presents arguments that are aligned with commercial realities. He is level-headed and great fun to work with”. Daisy Williams is a notable up-and-comer at Shortland Chambers; she is “very reliable and does a top job preparing for serious High Court litigation”. Experienced advocate Garry Williams of Richmond Chambers has a broad civil litigation practice, but is best known as a media and IP ace.

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Issue 71