New Zealand

One of few countries to win international praise for its response to the pandemic, New Zealand has managed comparatively well throughout the crisis. The country’s IP practices have stayed busy; though some report international clients are keener to hold on to their money, the general trend is that the total number of trademark filings are going up as more and more companies realise the importance of intellectual property. Where international work is lacking, local business owners with an entrepreneurial spirit are stepping up to fill the gap. Predictably, some sectors are doing better than others under these unusual circumstances. The health sector is among those experiencing a boost as a result of an increased demand for personal protective equipment and disinfectants, while the retail sector has seen a slow-down. Earlier in the year, amendments to the New Zealand Trademarks Act came into effect. Under these changes the grace period to renew a trademark registration after its expiry date has halved from 12 to six months. Further, the commissioner of trademarks no longer has the discretion to choose not to revoke a registration for non-use, while the owner of a certification trademark cannot own another trademark registration for the same goods and services.

Firms

  • AJ Park
  • Dentons Kensington Swan
  • Hudson Gavin Martin
  • James & Wells 
  • Buddle Findlay
  • Chapman Tripp
  • Simpson Grierson
  • Bell Gully
  • Duncan Cotterill
  • Ellis Terry
  • Henry Hughes IP
  • MinterEllisonRuddWatts
  • Potter IP

AJ Park

“By far the largest trademark firm in New Zealand, AJ Park is well-staffed by an efficient team managing IP matters for domestic and overseas entities.” Over the course of nearly 130 years, the firm has built one of Australasia’s largest teams of IP lawyers. Spread across two offices in Auckland and Wellington, the side handles trademark work for a slew of Fortune 500 companies, as well as numerous well-known Australian and New Zealand enterprises. In June 2020, it announced its acquisition of rival IP firm Baldwins to further boost its IP team. Managing director Damian Broadley is a respected practitioner advising multinationals on global protection strategies, while colleague Colleen Cavanagh brings 30 years of experience advising clients from a range of industries on IP issues. Jonathan Aumonier-Ward “consistently provides accessible and business-friendly advice. With a cool head when it comes to enforcement matters, he offers solutions that anticipate and facilitate the client’s business objectives. He also has a knack for making complex tasks look very easy.” “Jonathan provides strategic and contextualised advice based on the client and the industry within which they operate.” Chair of INTA’s Indigenous Peoples’ Rights Sub-committee Lynell Tuffery Huria “has an excellent reputation as an indigenous IP rights and Māori law expert” who “works through the complex factors involved in such matters and identifies functional alternatives to the typical western IP model”. Coming from Baldwins, gold-ranked Penny Catley brings her astute commercial insights and a wealth of experience to the team, while Thomas Huthwaite is an excellent addition to the litigation side. “He is absolutely fantastic. Young, incredibly smart, his legal analysis is great.” “Thomas is an exceptional lawyer. His advice is considered, sound and relevant. He is like the captain of a ship in stormy waters; calm and providing clear guidance at all times. His expert guidance in invaluable.”

Bell Gully

One of New Zealand’s three largest general commercial firms, Bell Gully serves an impressive list of blue-chip clients. Internationally famous brands such as Vodafone Group, Qingdao Haier, Abbvie, Reckit Benckiser, Unilever and BMW all rely on the outfit to manage their portfolios and protect their IP rights in New Zealand and the Pacific Islands. The side enjoys a strong reputation internationally and has long-established relationships with Magic Circle firms. Over the past year, the multidisciplinary IP team has been kept busy by a number of high-profile disputes, as well as several significant commercial transactions. Entrusted with some of the region’s largest portfolios while handling high-stakes transactional work with confidence and ease, Sooyun Lee oversees all trademark matters here. Supporting her on the litigation side is Alan Ringwood, an experienced lawyer with the expertise and skill required to tackle the most complex of cases. Ringwood helms Bell Gully’s IP team with a steady hand.

Buddle Findlay

Full-service law firm Buddle Findlay boasts a team of highly experienced IP practitioners who work for clients across the industry spectrum. “Extremely helpful in coordinating clients’ Pacific Islands portfolios,” the side has made a name for itself as the place to go for work in the region. For the past several years, the outfit has been one of the top three trademark filers among commercial firms in the country. Besides prosecuting trademarks, the skilled team regularly represents clients in complex matters before the commissioner of trademarks, the High Court, and the Court of Appeal. After more than 30 years in the field, John Glengarry has accumulated vast amounts of knowledge on IP law. Not only does he “work extremely hard”, Glengarry “is an excellent practitioner who is easy to work with and provides clear advice. He is very thorough and always prompt in his response. A true problem solver.” Special counsel Hamish Selby’s practice focuses exclusively on intellectual property. He also handles much of the transactional work there. “There is no doubt that if Hamish can’t achieve the outcome you want, nobody can. He finds solutions to the most challenging of cases.” Clients also appreciate how Selby manages to “explain things in lay terms and with a personable touch, meaning that besides getting us the results we want, he makes the entire process empowering, enjoyable and informative”. Meanwhile, lead litigator Anita Birkinshaw’s smarts and strategic thinking makes her the go-to for IP disputes.

Chapman Tripp

Drawing upon two decades of experience, Chapman Tripp offers stellar comprehensive IP services to some of New Zealand’s best-known businesses and world-renowned multinationals alike. Not one to back down from a challenge, the team regularly handles complex trademark matters for Hyundai Motor Company, Amazon, Netflix, Philip Morris and Fonterra. Captaining the group of highly skilled trademark professionals is Matt Sumpter, a respected commentator on IP and competition law, who can handle anything thrown at him, from IP enforcement to commercialisation. An expert on corporate and commercial law with a focus on intellectual property, Kelly McFadzien is the person to call for issues related to technology, media and telecomms.

Dentons Kensington Swan

In early 2020, Kensington Swan combined with Dentons to offer its outstanding services to an even greater range of clients. “Not just able to expertly manage a portfolio” and “very well-connected globally”, the team can now draw upon a network of lawyers in 74 countries across the world to serve household domestic names and large multinational corporations. Through exponential growth over the past five years, the IP ensemble has become highly regarded for its strategic trademark filing advice and personable approach, something which is made possible by having a tight-knit group of practitioners who know their clients’ business inside out. Enforcement and brand developing expert Jenni Rutter “has an ability to explain complex strategies and technical details in a way that is easy to understand. She does not adopt a ‘one size fits all’ legal approach but tailors her advice to each client, so you know she really has your best interest in mind. Jenny is not just professional and extremely responsive at all times of the day, but also warm and genuinely interested in the work and growth of each client’s business.” Managing partner at the Wellington office Charlotte Henley also wins praise for her personability: “Charlotte is both approachable and meticulous. Her advice is always clear, dependable, and perfectly tailored to the client’s needs.” Besides being popular among businesses, Henley is a trusted advisor to government entities and has unique expertise in plant variety rights.

Duncan Cotterill

Among the top 10 filers in New Zealand for the past five years, full-service law firm Duncan Cotterill keeps commerciality and practicality front of mind when it comes to crafting trademark advice. Established by Scott Moran, the trademark practice has been growing 20% year on year for the last five years. “Scott is extremely personable and takes the time to understand the client’s needs. His advice is commercial, clear and to the point. Rather than providing a generic response, he tailors it to each client and goes above and beyond to look at how a particular issue fits into a larger strategic picture.” The overwhelmingly positive feedback extends to the rest of the team: “The lawyers at Duncan Cotterill have deep knowledge of the law and are all incredibly easy to work with, intuitively understanding what a client requires. The advisors are pragmatic and their understanding of IP fits into a larger commercial context.” Joining the rankings this year is recent hire Michael Moyes, who brings with him over 20 years of experience working in intellectual property.

Ellis Terry

With a “compact team of highly experienced practitioners” and a personal touch, full-service IP boutique Ellis Terry provides top-notch services to both domestic and international enterprises. The firm’s trademark experts assist with identifying, protecting, enforcing and commercialising intellectual property, guiding clients through the process from start to finish. A specialisation in mobile applications and mobile gaming businesses sets Ellis Terry apart from its competitors. The pragmatic team is also skilled at settling matters outside of court as well as managing a growing portfolio of pre-litigation matters. With more than two decades of IP experience under her belt, Emily Ellis adeptly manages the portfolios of SMEs and large companies across a range of industries, while colleague Rachael Koelmeyer brings to the table deep expertise in international clearance searching and advice, filing and prosecution matters.

Henry Hughes IP

The first firm in New Zealand to combine patent and trademark attorneys, Henry Hughes was established in 1882 by the inventor of the same name. Having assisted international and local clients in protecting their valuable IP rights for more than a century, the attorneys rely on a wealth of accumulated knowledge. Besides New Zealand, David Moore has experience practising in both the Middle East and Australia, focusing on non-contentious and IP commercialisation matters. Current vice-president of the New Zealand Institute of Patent Attorneys Elena Szentivanyi centres her practice on contentious trademark matters.

Hudson Gavin Martin

With world-renowned brands such as NBA and Vodafone among its clientele, corporate and commercial firm Hudson Gavin Martin once again secures a spot in the gold tier. The outfit distinguishes itself through its specialisation on technology and media-related IP matters. Relying on a team of highly qualified lawyers with in-house and multi-jurisdictional experience, the outfit is a valuable asset to any business seeking to protect and make the most out of its intellectual property in New Zealand. Satisfied customers speak of advice that is “simply communicated in a very timely manner” and an attitude which “takes into account our commercial imperatives”. On the non-contentious front, Jason Rudkin-Binks is an “excellent lawyer, highly responsive, approachable and easy to deal with. His advice is always pragmatic.” He is also a member of INTA’s Indigenous Rights Committee. The go-to person at the firm for litigious matters, Tim Mahood bases his practice on a wealth of Trans-Tasman IP, commercial litigation and in-house experience.

James & Wells 

Having had a year to settle in comfortably into the gold tier among the top firms in New Zealand, James & Wells is a “full-service IP boutique with a recognised trademark practice”. The outfit is known for filing more trademarks than any other independent IP firm in the country, while its stellar reputation extends beyond its prosecution practice to encompass its “outstanding litigation department”. The IP team is well regarded, earning high praise from peers and clients and peers alike. “James & Wells features a group of highly experienced practitioners.” “Their team of experts ensures you get the most experienced person for each specific job.” On a mission to build and strengthen business relations among colleagues in Asia, James & Wells set up a dedicated Asia division to provide services for Asian IP firms assisting clients with IP protection in New Zealand, Australia and the Pacific Islands. A founding partner and also former president of the New Zealand Intellectual Property Association, Ceri Wells is frequently approached by companies looking for help with developing IP strategies to fit their business objectives. Food and beverage, biotech and agribusiness are his specialty areas. Captain of the trademark team Carrick Robinson’s background as a tax accountant serves him well as he assists clients with IP valuation. With litigation experience at all levels in Australia and New Zealand, it is no wonder that “excellent litigator” Gus Hazel attracts “deep respect” from his peers, who see him as a “great collaborator”. One to “always offer timely communication and clearly an expert in his field as evidenced by the quality of information, explanations and recommendations supplied”, Ben Cain “installs great confidence in his clients to make the best decision for their business”. His “awareness of commercial realities and realistic assessments of likely outcomes” are also appreciated.

MinterEllisonRuddWatts

The IP practice of MinterEllisonRuddWatts stands out for its successful work in IP commercialisation, corporate transactions and everything relating to branding strategy and portfolio management. Beyond trademark filing, clients can expect to receive advice that is strategic and part of a holistic approach. ASOS, Westpac and SPCA are among the clients relying on the firm to protect their intellectual property. Foreign associates admire Christopher Young, head of the national IP team, for his “deep knowledge about Australian and New Zealand trademark law and advice that is always grounded in the client’s objectives.” “Smart and efficient”, Young “excels over his peers, who may be competent, but never as responsive or sensible”. “In addition to his professional skills, Christopher’s interpersonal skills make him a real pleasure to work with. By being able to zone in on work instructions, he conveys comfort to clients and associate firms alike, while still engaging with them to explain how he proposes to achieve an outcome that addresses all their business needs.”

Potter IP

An “excellent boutique firm with a strong reputation,” Potter IP focuses its practice on branding, trademark portfolio management and IP strategy. Some of the country’s best-known companies – including Air New Zealand, Fonterra and MediaWorks – are only too happy to entrust the team of “very clever practitioners” with their trademark matters. The IP boutique also places great importance on education, putting substantial effort into training businesses on how to maximise their intellectual property and working with them to achieve it. It was recently chosen as a preferred specialist innovation IP provider after leading Callaghan Innovation’s Innovation IP programme. The New Zealand Trade & Enterprise selected it as a regional development partner too. “Known to assist in IP commercialisation with robust strategic advice,” Alan Potter comes highly recommended given that he has more than 25 years of experience.

Simpson Grierson

One of the largest firms in New Zealand, Simpson Grierson’s dedicated IP team offers top-end comprehensive IP services, with the capacity to handle the most complex, strategically important matters. A highly regarded trademark practice that has grown significantly over the past three years, it has attracted famous local brands, including New Zealand Comfort Group and a2 Milk Company. It is also a popular choice among business in the sports sector – the firm is overseeing the brand protection strategy of the New Zealand Olympic Committee and New Zealand Cricket, and recently acted for the International Olympic Committee in a trademark opposition case. A multi-talented trademark expert, Richard Watts appears in all three of WTR 1000’s transactions, enforcement and prosecution tables. “Richard is a quality lawyer who recognises that advocacy is about choosing the right approach to get the best outcome for his client.” Considered a “respected litigator and prosecutor” by peers, the eminent Watts works with numerous world-renowned companies on IP protection and has been involved in some of the country’s most important trademark cases. A past New Zealand chair of the Intellectual Property Society of Australia and New Zealand, special counsel Sarah Chapman specialises in non-contentious trademark law.

Other recommended experts

Over at CreateIP, trademark specialist Rachel Colley handles both contentious and non-contentious matters with ease. Kate Duckworth of eponymous Kate Duckworth IP specialises in trademark litigation and dispute resolution, portfolio management and brand protection. Anthony Harper’s Mark Gavin receives high praise form clients and peers alike. “Mark has a deep understanding of intellectual property and puts the clients’ interests above the firm’s.” “He is absolutely excellent. Very intelligent, extremely commercial and personable, he often works on important cases for multi-million dollar clients.” Since Sue Irwin Ironside and Rachel McDonald left Baldwins to set up Ironside McDonald in 2019, clients who have followed them to their new firm find that “it was an easy decision to continue working with them. The quality of work has only improved, because the small-firm environment allows them to pay personal attention to each case. To have all your matters handled by such experienced professionals personally is a huge advantage.” The pair offer “realistic assessments and a practical, solution-oriented approach to legal work”. “They are an extremely personable and energetic team, going out of their way to meet and exceed clients’ expectations. Their service is always tailored to each client’s specific situation”. Clients come to Angela Searle, founder of Infinity Intellectual Property Ltd, for her “outstanding service, experience and breadth of knowledge. She works proactively to support us and goes above and beyond to understand each business unique needs.” Clients looking for someone who “works hard to understand their business goals, and makes sure their advice fits into what can be a complex matrix of interconnected strategies” will find that in Searle, while foreign associates find her “a pleasure to work with. Her analysis is accurate and her strategies successful.”

Individuals: enforcement and litigation

  • Jenni Rutter - Dentons Kensington Swan
  • Richard Watts - Simpson Grierson
  • Ben Cain - James & Wells
  • Mark Gavin - Anthony Harper
  • Gus Hazel - James & Wells
  • Matt Sumpter - Chapman Tripp
  • Elena Szentivanyi - Henry Hughes IP
  • Anita Birkinshaw - Buddle Findlay
  • Kate Duckworth - Kate Duckworth IP
  • Thomas Huthwaite - AJ Park
  • Tim Mahood - Hudson Gavin Martin
  • Alan Ringwood - Bell Gully

Individuals: prosecution and strategy

  • Damian Broadley - AJ Park
  • Penny Catley - AJ Park
  • John Glengarry - Buddle Findlay
  • Sue Irwin Ironside - Ironside McDonald Intellectual Property
  • Jason Rudkin-Binks - Hudson Gavin Martin
  • Lynell Tuffery Huria - AJ Park
  • Richard Watts - Simpson Grierson
  • Jonathan Aumonier-Ward - AJ Park
  • Colleen Cavanagh - AJ Park
  • Sarah Chapman - Simpson Grierson
  • Rachel Colley - CreateIP
  • Emily Ellis - Ellis Terry
  • Charlotte Henley - Dentons Kensington Swan
  • Rachael Koelmeyer - Ellis Terry
  • Sooyun Lee - Bell Gully
  • Rachel McDonald - Ironside McDonald Intellectual Property
  • David Moore - Henry Hughes IP
  • Scott Moran - Duncan Cotterill
  • Alan Potter - Potter IP
  • Carrick Robinson - James & Wells
  • Jenni Rutter - Dentons Kensington Swan
  • Angela Searle - Infinity Intellectual Property Ltd
  • Hamish Selby - Buddle Findlay
  • Ceri Wells - James & Wells
  • Christopher Young - MinterEllisonRuddWatts

Individuals: transactions

  • Sarah Chapman - Simpson Grierson
  • Charlotte Henley - Dentons Kensington Swan
  • Sooyun Lee - Bell Gully
  • Kelly McFadzien - Chapman Tripp
  • Michael Moyes - Duncan Cotterill
  • Richard Watts - Simpson Grierson
  • Christopher Young - MinterEllisonRuddWatts