New Zealand

A new development in New Zealand is the lowering of the bar for trademark applications to be deemed offensive by the Maori Advisory Committees; this is being done in an attempt to enhance the recognition of cultural IP rights and to stem the misappropriation of Maori names on the marketplace. Another change for brand owners to be aware of concerns geographical indications; the Geographical Indications (Wine and Spirits) Registration Act 2006 came into force in July 2017 allowing for the registration of wine and spirits geographical indications. The law firm market in New Zealand is stable, but the acquisition of AJ Park by Australian IP holding company IPH was major news.

Firms

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

AJ Park

“A long-established gold standard-setter when it comes to intellectual property,” AJ Park maintains the biggest trademark practice in New Zealand. Proficient at processing large volumes of work, it also consistently provides “well-considered, timely and pragmatic strategic counsel”. A trailblazer throughout its illustrious 125-year history, AJ Park was acquired by IPH Limited Group in late 2017 to become the country’s first IP outfit to join a holding company. Damian Broadley embodies many of the firm’s virtues. A revered trademark virtuoso, he is a great first port of call for top-level strategic advice. John Hackett is another popular choice among Kiwi heavy-hitters – Manuka Health New Zealand and ZESPRI being two examples – for a holistic approach to brand protection. Colleen Cavanagh nurtures brands with care and attention; she has vast experience and is easy to draw inspiration from. Overseeing much of the ensemble’s “extensive presence in the Pacific Islands”, Lynell Tuffery Huria displays “unsurpassed” responsiveness and attention to detail. With a large base of South Pacific clients and IP office contacts, Huria has carved out a niche as the country’s foremost authority on Maori law and cultural icon protection. Technology and blue-chip clients from Australia, New Zealand and the United States flock to the “diligent” Jonathan Aumonier-Ward for “practical and no-nonsense” guidance on prosecution and contentious issues. “Time differences can be difficult to overcome but you never notice that when you work with Jonathan – he always stays in direct contact.” Last but not least, star litigator Kim McLeod is always on hand to tackle the knottiest of contentious conundrums.

Baldwins

“Reliable, creative and resourceful”, Baldwins – the second largest IP player in New Zealand – maintains a well-rounded trademark practice in the service of an extensive and devoted domestic and foreign client base. Seamless operation across the contentious/non-contentious divide is one of the chief attractions for the slew of new clients who have joined the firm recently. Patrons of Wellington-based trademarks head Penny Catley are in “safe and capable hands”. “Approachable and highly efficient”, Catley possesses “deep knowledge and experience and impressive business acumen”. In Auckland, cross-border strategist Sue Irwin Ironside turns heads with her superior client service. “Never selfish with her time and expertise, Sue briskly resolves the most complicated of problems. It also helps that she has an extensive network of reliable foreign associates.” She is an ideal choice for overseas brand expansions. In Christchurch, Angela Searle dispenses discerning advice to South Island concerns.

Bell Gully

Collaborating seamlessly with their corporate and litigation colleagues, Bell Gully’s IP specialists acquit themselves with distinction when it comes to major disputes and IP-rich commercial transactions. They also manage trademark portfolios with assuredness on behalf of marquee internationals. Incredibly efficient and well organised, Sooyun Lee is the go-to for portfolio work; she performs flawlessly for Unilever in respect of clearance searches, registrations, maintenance and strategic counselling on infringement. On the transactional side, she recently conducted due diligence for a NZ$660 million acquisition of UDC Finance on behalf of China’s HNA Group.

Buddle Findlay

Corporate outfit Buddle Findlay’s well-rounded trademark offering strikes a chord with rights holders looking for commercially infused branding advice. Many flock to the firm for the “highly reliable and responsive” John Glengarry. “Measured, calm and sensible,” Glengarry brings more than 30 years of expertise to the table. He takes a collaborative approach in formulating and implementing “crystal-clear, coordinated strategies”. Like Glengarry, Hamish Selby is a versatile operator. An essential contact for “complex registration and enforcement problems”, Selby can be relied on for “quick responses, effective drafting and to-the-point advice”. His sophomore year in the WTR 1000 coincides with his appointment as special counsel. Litigants would do well to reach out to Anita Birkinshaw, a commercial litigator who has experience in the United Kingdom and France on her résumé. She recently scored successes in New Zealand Intellectual Property Office opposition proceedings on behalf of Ballance Agri-Nutrients.

Chapman Tripp

Chapman Tripp operates with “a high degree of professionalism, dependability and responsiveness” and as a result, it enters the WTR 1000 listings for the first time this year. The “excellent” firm is a magnet for companies grappling with multifaceted registration and contentious mandates, many of which are skilfully handled by Matt Sumpter. Sumpter has been incredibly busy of late; he succeeded in an opposition for a major dairy player, saw Fast Retailing Co’s UNIQLO device mark to grant after oppositions and has been busy defending Hyundai Motor Company from an opposition brought by Kona USA Inc. He is a noted authority on matters crossing between IP and unfair competition law. Kelly McFadzien makes Chapman Tripp a destination for commercial IP work, too. The experienced corporate and commercial lawyer handles multi-jurisdictional Asia-Pacific deals with aplomb.

Duncan Cotterill

Peers and foreign associates are full of praise when talking about Duncan Cotterill, which has a “small, yet robust and focused” trademark practice. Famed for its “well-balanced approach” to trademark work, the firm’s specialised attorneys – such as IP practice co-leaders Scott Moran and Dan Winfield – are “highly adept operators”. Moran is a deft portfolio manager and an astute commercial lawyer who can sew up a contract blindfolded. Winfield’s practice encompasses all aspects of IP protection, enforcement and commercialisation.

Henry Hughes IP

Founded in 1882, Henry Hughes is one of the longest-serving IP establishments in New Zealand. “It is a steady ship built around superlative portfolio management services” which it renders to a “loyal international fanbase”. Elena Szentivanyi has been an influential voice on the New Zealand trademark scene for over 20 years. “Extremely capable, she gives solid advice and is a safe pair of hands, she really fights hard for her clients’ best interests.” Foreign clients are highly appreciative of Barbara Sullivan and David Moore. Sullivan directs the Henry Hughes law firm and IP agency with poise. One of the country’s most experienced practitioners, she draws on valuable work experience in Australia and the United Kingdom to approach branding from a truly international perspective. While Moore is a non-contentious doyen steeped in IP prosecution and commercialisation with experience working in Australia and the Middle East, which has given him an equally broad outlook.

Hudson Gavin Martin

Operating at the interface between intellectual property, technology and media, “results-oriented” Hudson Gavin Martin delivers clever and well-rounded solutions to its innovative clients. “Easy-to-deal-with” Jason Rudkin-Binks is a key name for the contact book. Having worked in-house for GlaxoSmithKline and Shell, Rudkin-Binks has a refined understanding of his clients’ needs.

James & Wells

In intellectual property, James & Wells has a cadre of “sterling practitioners” who possess a talent for extracting maximum value from IP portfolios. Efficient when it comes to registration and portfolio management practice, the set also has a reputation for being “aggressive” when it comes to cracking down on infringers. Patent and trademark maven Ceri Wells is an IP strategist of the highest order and a particular touchpoint for companies in the food and beverage, biotech and agribusiness sectors. Leader of the Auckland trademark team Carrick Robinson is also an authority on branding and trademarks in food, beverages and natural products. It pays to have litigation chief Ian Finch on speed dial; he has an encyclopaedia of attack plans up his sleeve, which makes for effective enforcement in any scenario.

Kensington Swan

Kensington Swan’s trademark team is in fine fettle; Jenni Rutter and Charlotte Henley have been going gangbusters on trademark filing and prosecution and have secured a slew of new clients in the past year. For example, one of Rutter’s major coups was winning a competitive tender to take over Danone’s New Zealand IP work; she was also instructed by Baker McKenzie to handle the local trademark work of General Motors; Lewis Road Creamery and Burger Fuel are others who have joined the fold because of her efforts. Henley, meanwhile, has continued to protect Tourism New Zealand and its 100% Pure New Zealand brand to the hilt across 15 countries, alongside advising others on strategic brand expansion. “Collegial, methodical and responsive”, the pair are “proactive and pragmatic IP advisers who are always looking to add value”.

MinterEllisonRuddWatts

“A firm fixture on the New Zealand trademark landscape”, MinterEllisonRuddWatts is fully integrated into the MinterEllison network, making it one of the most internationally oriented ensembles in the country. The outfit’s IP practitioners often assist in brand-rich M&A deals and other transactions, but also shine on prosecution and enforcement. The “distinguished” set is led by Christopher Young. He is an active participant in several industry forums, including INTA and the International Bar Association.

Potter IP

Winning effusive praise from peers, the “highly proficient” trademark contingent at Potter IP has a growing reputation for quality and hence earns its first appearance in the WTR 1000 rankings. The three-partner trademark team comprises “strategic operators” who cover prosecution, enforcement and transactions and who are “extremely good across the board”. The firm has “carved out a real niche” advising emerging businesses taking advantage of New Zealand government funded start-up and innovation programmes. A Simpson Grierson alumnus who was formerly managing director of AJ Park, gold-rated Alan Potter has an outstanding pedigree. He blends top-notch commercial expertise into his IP practice and possesses striking knowledge concerning international trademark law.

Simpson Grierson

For companies seeking specialised IP advice alongside the resources and wider commercial perspective of a general practice setup, Simpson Grierson fits the bill perfectly. The “impressive” firm – co-headed by Richard Watts and Earl Gray – is lauded for its “succinct advice”, “clear cost indications” and “timely and proactive approach”. The firm shines especially bright in high-value contentious and transactional mandates. Watts and Gray both win plaudits from their peers and clients; the “fantastic” Watts is “highly regarded in the industry” because of his “pragmatic and sensible style” and “refined understanding of the intricacies of IP law”. Recently, he orchestrated a successful defence on behalf of National Storage before the High Court and Court of Appeal in a trademark infringement and passing off matter brought by a competitor. Meanwhile, Gray’s “attention to detail and knowledge of his clients’ businesses ensure that he provides thorough, timely and practical advice whatever the instruction”.

Other recommended experts

The “remarkable” Rachel Colley is a “personable and effective” trademark attorney at CreateIP. Her practice focuses on portfolio management and IP commercialisation, but she is a versatile all-rounder. “Highly experienced” Kate Duckworth has recently transitioned from Catalyst Intellectual Property to her own eponymously titled firm; research respondents describe her as “shining in her new environment”. With a focus on the food and beverage sector, she has attracted plentiful prosecution and enforcement instructions since founding her business at the beginning of 2018. Ellis Terry founder and director Emily Ellis is a reliable guide at every stage of the trademark lifecycle. Her team manages an increasing variety of contentious matters alongside a growing volume of prosecution and portfolio development instructions. Hudson Gavin Martin founder Mark Gavin now has a new home; he recently joined Anthony Harper. An experienced soft-IP litigator, he also maintains a vibrant counselling practice in the advertising, consumer, privacy and food law areas.

Individuals: enforcement and litigation

  • Earl Gray - Simpson Grierson
  • Kim McLeod - AJ Park
  • Richard Watts - Simpson Grierson
  • Jonathan Aumonier-Ward - AJ Park
  • Anita Birkinshaw - Buddle Findlay
  • Kate Duckworth - Kate Duckworth IP
  • Ian Finch - James & Wells
  • Mark Gavin - Anthony Harper
  • 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
  • Sue Irwin Ironside - Baldwins
  • Alan Potter - Potter IP
  • Jason Rudkin-Binks - Hudson Gavin Martin
  • Lynell Tuffery Huria - AJ Park
  • Richard Watts - Simpson Grierson
  • Penny Catley - Baldwins
  • Colleen Cavanagh - AJ Park
  • Rachel Colley - CreateIP
  • Emily Ellis - Ellis Terry
  • John B Hackett - AJ Park
  • Charlotte Henley - Kensington Swan
  • Sooyun Lee - Bell Gully
  • 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
  • Ceri Wells - James & Wells
  • Dan Winfield - Duncan Cotterill
  • Christopher Young - MinterEllisonRuddWatts

Individuals: transactions

  • Earl Gray - Simpson Grierson
  • Charlotte Henley - Kensington Swan
  • Sooyun Lee - Bell Gully
  • Kelly McFadzien - Chapman Tripp
  • Jenni Rutter - Kensington Swan
  • Richard Watts - Simpson Grierson

New Zealand: The Bar

Other recommended experts

Senior counsel

“A meticulous advocate,” Bankside Chambers’ Andrew Brown QC enjoys a “stellar reputation” thanks to the pivotal role he has played in many of the country’s highest-profile trademark spats. Clive Elliott QC maintains a busy practice at Shortland Chambers; he was formerly head of the Baldwins litigation team. “Talented and experienced”, Julian Miles QC is an IP specialist at Richmond Chambers who most recently defended National Storage in a Court of Appeal trial against National Mini Storage.

Junior counsel

Clifton Chambers’ Greg Arthur is “probably the top non-silk barrister”. “He is good at telling you what needs to be done without being patronising about it. Thorough, timely and calm, he displays impeccable judgment.” Kevin Glover of Shortland Chambers is “arguably the most active IP junior counsel”. “He has a great reputation for being thorough and thoughtful.” Rosemary Wallis is an “excellent specialist” who works independently. “Sheana Wheeldon is a relatively new entrant to the bar but has a strong reputation as an IP litigator. She is incredibly organised and makes sure everything is well-presented and documented. She puts clients at ease and is really easy to work with.” She also practices independently. Rising star Daisy Williams works out of Shortland Chambers. She does a top job on IP cases as part of her broad commercial practice. At Richmond Chambers, Garry Williams is an IP and media law guru.

Junior counsel

  • Greg F Arthur - Clifton Chambers
  • Kevin Glover - Shortland Chambers
  • Rosemary Wallis - Barrister
  • Sheana Wheeldon - Barrister
  • Daisy Williams - Shortland Chambers
  • Garry Williams - Richmond Chambers

Senior counsel

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