New Zealand’s trademark industry has come under the spotlight recently, with the IP Office of New Zealand (IPONZ) launching a consultation on the possible introduction of geographical indications in the country, after the government began formal negotiations on a free trade agreement with the European Union in June 2018. The New Zealand Ministry of Business, Innovation and Employment has also released a consultation paper on proposed changes to IP legislation. Meanwhile, with more than 25,000 trademark applications in 2018 alone, the export-driven economy has continued to experience a rise in trademark filings, particularly through the Madrid Protocol. To keep itself up to date, IPONZ unveiled its Trade Mark Check in July 2019 – a new tool that helps the general public to navigate the trademark register more easily. The office has also updated its trademark practice guidelines to include definitions of terms and clarifications about the application process. Over in private practice, the takeover of AJ Park by Australian IP holding company IPH remains the talk of the town, as small IP boutiques consisting of one or two lawyers continue to pop up all over the country.
- 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
- Potter IP
“By far the largest trademark firm in town, AJ Park is well staffed by an efficient team,” offering “in-depth specialist advice on IP matters”. Of its 28 professionals, six are ranked this year – the highest number in the WTR 1000’s New Zealand chapter. With almost 130 years’ experience behind the IP boutique, it is “the best source” for local and overseas entities seeking assistance from lawyers who “are pragmatic and business orientated, and provide a legal and commercial perspective, with a quick turnaround when required”. Although the firm was acquired by IPH Limited Group in late 2017, business has continued as usual; it still dominates the trademark market as the representative for over a third of the Fortune 500 and 85 of the top 100 local businesses. A well-regarded and trusted partner for trademark portfolio management, managing director Damian Broadley oversees the trademark practice. His team consists of the crème de la crème: with a career spanning 45 years, John B Hackett is “a legend” in the local profession, “very knowledgeable and a good collaborator”, while trans-Tasman patent attorney Colleen Cavanagh follows closely behind with more than 30 years of experience and a largely local practice, focusing on IP strategy and trademark portfolio management. Meanwhile, over in Wellington, Jonathan Aumonier-Ward advises multinationals and non-profit organisations. The firm is not limited to prosecuting trademarks either. Renowned local expert on indigenous law and Māori intellectual property Lynell Tuffery Huria has carved a niche for herself in the Pacific Islands. Co-chair of INTA’s international indigenous rights initiatives and policy analysis sub-committee, she possesses “unsurpassed thoroughness, timeliness and attention to detail” and “has quickly become the go-to attorney in town”, with “feedback from clients that is highly complimentary of her practical advice”. Busy resolving trademark disputes in the High Court lately, Matthew Hayes debuts in the enforcement and litigation table this year.
Despite being dealt a huge blow in 2018 with the departure of Sue Ironside and Angela Searle, Baldwins continues to hold its own in the local IP industry – as it has for the past 120 years. Enhanced by recent international hires, including a German-qualified IP lawyer and a UK-qualified solicitor, 14 lawyers and patent attorneys with a high level of practical experience and academic qualifications make up the second largest IP specialist firm in New Zealand. Clients cannot help but rave about the service it offers: “Even as a small client, I feel that Baldwins’ consultants really value us and they always take the time to deliver the best outcome. They are extremely generous with their time and I appreciate the no-nonsense advice that they provide.” Penny Catley emerges in the gold tier this year. The current president of the New Zealand Institute of Patent Attorneys (NZIPA) has almost three decades of experience in the field, putting her in prime position to provide guidance on all IP matters. Now leading the Wellington office’s dispute resolution team, Thomas Huthwaite joins his peers in the enforcement and litigation table. His colleague Kate Giddens is praised for “really understanding our requirements and taking the time to understand our business and needs to ensure we have the right trademark coverage, so that we can maintain our competitive advantage”.
As one of the three largest general commercial firms in New Zealand, Bell Gully takes on a significant volume of corporate-driven work, while providing “a full service for foreign trademark owners, handling everything from small applications to bigger IP litigation matters”. Unlike other local groups, it has a strong and longstanding relationship with Magic Circle firms. For years, it has served a long list of Fortune 500 companies, including Vodafone Group, Qingdao Haier, Abbvie, Reckitt Benckiser, Unilever and BMW, many of which rely on Bell Gully entirely for their IP matters. Among the outfit’s biggest accomplishments of 2019 was advising Vodafone in one of the largest ever M&A transactions in New Zealand – a deal worth NZ$3.4 billion – and assisting Apax Partners LLP on its successful bid for New Zealand’s largest e-commerce company, Trade Me, for NZ$2.56 billion. “Bell Gully handles cases very efficiently and you will still learn about the local trademark laws. You really can rely on them.” Sooyun Lee heads the trademark practice, overseeing some of the biggest portfolios in the country with a keen eye. “She is very astute and immediately understands our problems and finds a solution. She is able to summarise a case in a way that you understand everything without reading long emails.” IP litigator Alan Ringwood is often mentioned by satisfied clients as well. “Alan is very good at pushing through various elements of the settlement while ensuring that the client’s interests are protected. Besides providing options to issues that could have brought negotiations to a dead end, he always sets out a detailed, clear and practical way forward.”
A popular choice for an array of blue-chip global clients, full-service law firm Buddle Findlay is a force to be reckoned with, particularly in the trademark contentious space. Not only does it regularly appear before the High Court and Court of Appeal, it also boasts a 100% success rate in domain name disputes. What is more, “the firm provides personal care and attention.” “The team is extremely responsive, pragmatic and commercially minded, and gets to grips with even the most technical issue with consummate ease. Problem solving is key to what they do; business is conducted in an extremely professional manner. It is the combination of these attributes, delivered constantly, which makes them stand out above the crowd.” “Buddle Findlay demonstrates leadership and unique competence in bringing the team together. They are very open about the strategies required for success and how each team member contributes.” Little wonder then that high-profile organisations such as the Manuka Honey Appellation Society, Auckland Group, Alibaba Group and Earthwise Group have entrusted the practice with their trademark portfolios in New Zealand and around the world. Sitting atop the gold tier of the prosecution and strategy table for the 10th year in a row, John Glengarry wields more than three decades of experience in the IP field. One client states: “He is my go-to person for all New Zealand trademark work, be that simple prosecution or more meaty opposition and infringement matters.” Alongside Glengarry, Hamish Selby manages trademark portfolios with a learned hand. “John and Hamish provide efficient, cost-effective services. They are not just reliable, they also provide wise advice.” “Hamish tends to all our needs and recommends the practitioner who will best meet our requirements. He possesses a repository of information, with the scale and depth to assist in a variety of matters, while remaining highly responsive. His knowledge of marketing and branding is fantastic, which ensures that we secure the right level of registration for our various marks.” Newly promoted special counsel Anita Birkinshaw leads the IP litigation practice, keeping busy with local and international litigation, arbitration and alternative dispute resolution matters.
With over 140 years’ experience in the legal market and 20 for its IP practice, Chapman Tripp possesses vast knowledge and global expertise to cover a broad range of IP matters for Fortune 500 companies. As well as advising Philip Morris on its trademark strategy, the firm has recently secured global giants Amazon and Netflix for its client portfolio, propelling the top commercial practice to the silver tier this year. “An exceptional practitioner whose easy-going style and engaging manner, accompanied by a sharp wit and intelligence, serve his clients well, Matt Sumpter is highly responsive, effective and solutions focused, with a vast knowledge of all things IP-related in New Zealand.” The renowned sharpshooter has been busy counselling global and local companies, including Hyundai Motor Company, SuperDry and Fonterra Co-operative Group Limited, in trademark opposition proceedings. “Ably assisting Matt in the IP corporate, commercial and competition arena,” Kelly McFadzien is a master at the negotiating table, having acted for HgCapital in its acquisition of Orion Health’s Rhapsody business, which included cross-border licensing arrangements.
Dentons Kensington Swan
Corporate law firm Dentons Kensington Swan is catapulted to the top spot in New Zealand this year. Not only does it closely partner with famous local brands and blue-chip multinationals such as Crimson Education and Unilever, respectively, it is also a regular before the High Court and Court of Appeal, where it ensures that clients’ trademark rights are fully protected. Further, the firm’s standalone national IP group establishes that practitioners focus fully on IP matters, blending “highly professional service” with top-notch expertise to deliver superb results. An enforcement and anti-counterfeiting specialist, Jenni Rutter breaks into the gold tier of the enforcement and litigation table. After more than two decades working with top businesses on cross-border IP enforcement matters, the UK-qualified lawyer now receives the most glowing endorsements in the New Zealand chapter, with one interviewee describing her as “by far the most impressive external lawyer I work with”. “She is the kind of external lawyer that you dream of – she is hugely supportive of our in-house team, not only in responding to our requests for expert advice, but in sharing market intel and signalling developments that are occurring across the market that can assist our broader business strategy, as well as co-building strategy with us. She is technically excellent and supports me in navigating complex contentious and non-contentious work, including an aggressive, multi-jurisdictional trademarking strategy.” Not to be outdone, her Wellington-based colleague Charlotte Henley draws high praise from her clients too: “From the outset, Charlotte has been approachable, friendly and tactical. Her level of professionalism is outstanding even when dealing with non-legal commercial-based questions, while providing overarching solutions and outcomes that are beneficial and legally sound, and ultimately protect the business. Charlotte is also particularly timely, manages every project with the same level of professionalism and always provides updates along the way to a satisfactory conclusion.” A commercial IP lawyer by trade, she is especially popular among government entities and manages the international trademark portfolios of organisations such as Tourism NZ and the Cancer Society of New Zealand.
With offices in Auckland, Wellington, Nelson and Christchurch, full-service law firm Duncan Cotterill can quickly and effectively deliver IP services to its export-focused local client base, which includes Trade Me, Smiths City and Sealord Group. The New Zealand member of TerraLex – a global network of legal professionals based in more than 100 countries – focuses its practice on brand protection and enforcement, in addition to wider commercial and litigation support. Scott Moran leads the IP team, advising not-for-profit organisations, including renowned national charities. Before the sad passing of Dan Winfield in January 2020, he helped companies across industries to make commercially sound IP decisions.
“A family business that relies on good service and putting the customer first,” Ellis Terry rides a wave of praise into the WTR 1000 this year. “Large enough to offer world-class services using a whole-team approach, yet small enough to still be friendly and available,” the IP boutique “treats each matter attentively – a manner that inspires confidence”. As an increasing number of international companies seek out the ensemble for comprehensive IP advice, it nevertheless remains a popular choice among local businesses on account of being “transparent, approachable, timely, cost-effective and able to discuss matters practically and provide prompt and knowledgeable action”. “Ellis Terry does an excellent job of understanding our business and makes prudent recommendations. It guides us to make the right decision for the long-term protection of our business and its brand value.” For this reason, it is distinguished as “a quality firm of the highest capability”. With more than 20 years’ experience under her belt, including stints in London and France, Emily Ellis is a learned hand at managing IP portfolios and settling contentious matters. Garnering fantastic praise from an array of clients, Rachael Koelmeyer makes a well-deserved entrance into the WTR 1000. “Rachael’s work is distinguished by responsiveness, thoughtful counselling and a deep knowledge of both substantive legal areas and paths for negotiation when contentious matters arise. Communications are clear and concise, yet detailed. Follow-up is handled appropriately and matters are addressed diligently.” “Rachael is extremely efficient, organised and knowledgeable – she works within our timeline and budget constraints. She always provides reasoned recommended options and manages our trademark portfolio with all the care as if she were an in-house lawyer.”
Henry Hughes IP
Established in 1882, Wellington-based Henry Hughes IP is the first firm to combine patent and trademark attorneys in New Zealand. Backed by a rich history of supporting diverse global and domestic clients in all IP matters, the team has been a reliable partner to companies in every industry for more than a century. On the non-contentious side, director David Moore wields extensive experience in Australasia and the Middle East, enabling him to prosecute trademarks with an international outlook. Elena Szentivanyi holds the fort on the contentious side with more than two decades of practice in the IP industry, where she continues to be a key figure.
Hudson Gavin Martin
“One of the most innovative and tech-savvy firms in Australasia,” Hudson Gavin Martin places in gold this year. Through a blend of in-house and multi-jurisdictional experience, the commercial law firm delivers “superb service” in a variety of trademark matters, including brand strategy for BBC Studios Distribution Limited and Woolworths Group Limited, assisting with NBA Properties’ global anti-counterfeiting programme in New Zealand and advising on brand development for the Blind Foundation New Zealand. No wonder clients cannot help but rave about its practitioners: “We appreciate their efforts to really get to know our business, as well as value their strategic approach to matters and considered, thorough and well-thought-out advice.” “They are extremely responsive and always take a very commercial and practical approach.” Having practised for more than two decades in intellectual property and worked in-house for GlaxoSmithKline and Shell, Jason Rudkin-Binks is a well-known name in the industry, who is occasionally involved in South Pacific matters as well. “He has been my preferred counsel in New Zealand for more than a decade. One of the country’s leading soft IP specialists with a specialty in trademarks, he provides commercially focused, cost-effective but high-quality advice to clients.” On the enforcement side, Tim Mahood joins the ranking this year. Wielding trans-Tasman IP and commercial litigation experience, he has been assisting LG Australia in a large commercial distribution dispute and offering strategic trademark enforcement advice to a telecoms giant.
James & Wells is an unwaveringly independent IP boutique that rises to the coveted gold spot this year. Besides being one of the highest trademark filers in New Zealand, the team of “trustworthy, strategic counsellors” is “good at thinking outside the box” and offering “reliable and top-quality trademark advice”; attorneys there “work together, enabling us to get a combined opinion on complex IP issues”. A diverse range of local and global enterprises – including Gallagher Group, a client of more than three decades – enjoy “efficient, friendly and professional” service. “The speed of response has always impressed me. They make the whole process of registering new brands very simple; they are always willing to talk matters through over the phone if further details are required. Their reminders for renewals are always timely, with enough time set aside for action, along with reminders to ensure we do not miss deadlines.” To support the growing amount of work in China, Japan and South Korea, the firm also has six bilingual practitioners in the Asia team on call. A past president of NZIPA, founding partner Ceri Wells is a familiar face in the domestic scene. “Ceri has been in the industry for a long time; he is totally familiar and conscious of every aspect of it and is highly aware of how to make the best argument to ensure our trademark applications are successful. He is also well connected throughout the world and receives timely replies for questions about other jurisdictions.” Heading up the food and beverage innovation team is Carrick Robinson, who has carved a niche in natural products and dairy, assisting top brands such as Yealands. Gus Hazel and Ben Cain may be newcomers to the WTR 1000’s enforcement and litigation table, but clients and peers alike cannot praise them highly enough. “Gus is a good, high-profile trademark litigator,” while “Ben has been championing the relationship between us and his firm for over a decade, providing service and advice of the highest standard. He is always very prompt in responding to requests and offers a balanced view of perceived and/or real risks. He has a detailed understanding of our business and the challenges we face; thus, he is instrumental in developing our strategy and provides immense value to us.”
One of the biggest commercial law firms in New Zealand, MinterEllisonRuddWatts has a prolific IP practice that handles everything from prosecution and portfolio management to enforcement and litigation. As a part of its Australasian practice, the group prides itself on being a truly international firm that is often instructed by a diverse spectrum of local businesses, including Zespri, New Zealand Hops Limited and SKYCITY Entertainment Group Limited, to advise on domestic and multi-jurisdictional IP matters. Besides trademark registrations and portfolio management, the core IP team of seven takes on contentious proceedings for clients. Head of the IP practice Christopher Young has spent more than 20 years advising global and local clients, as well as emerging brands. While his true expertise lies in commercial IP matters, he is well versed in all things trademark and a master strategist.
Locally recognised as an excellent trademark firm, Potter IP makes its sophomore appearance in the WTR 1000. A reputable IP boutique that specialises in trademarks, branding, IP portfolio management and IP strategy, it was selected by the New Zealand Trade and Enterprise as a regional development partner and a preferred specialist innovation IP provider after successfully leading Callaghan Innovation’s Innovation IP programme. The innovative team is also the brains behind AI trademark goods and services automation system Sortify.tm – a business diversification into technology tools that sets the outfit apart from its counterparts. Sitting atop the gold tier, founder Alan Potter has more than 25 years of experience in intellectual property behind him, including as a partner at Simpson Grierson and managing partner at AJ Park. As his peers attest, he is a “very clever and experienced practitioner, who provides robust and strategic advice for IP commercialisation”.
Despite Earl Gray’s departure in 2018, Simpson Grierson has “maintained its level of advice and professionalism”. At 17 strong, the outfit boasts the largest “approachable, pragmatic, knowledgeable and helpful” IP team among local general law firms. Not only does it provide high-end IP services, it dominates the sports and IT sectors, with the New Zealand Olympic Committee, New Zealand Cricket and NZ Baseball as just some of its high-profile clients. Local businesses in other sectors also seek the group out, including the a2 Milk Company, Chorus and NZ Fintech. What is more, the firm recently emerged victorious before the Court of Appeal on behalf of National Storage Ltd in the country’s most complex branding case of the year. “Very experienced, particularly on the commercial side of intellectual property,” UK-qualified and gold-rated New Zealander Richard Watts is the only individual to be ranked in all three prosecution, enforcement and transactions tables. “We highly value his extensive knowledge of domestic and international trademark law and developments. He is always alert to the application of other legal principles to the trademark matter at hand and provides comprehensive advice. Most significantly, his knowledge of our business and the business environment makes him stand out in the industry. I trust that whatever the instruction, Richard will be thorough, pragmatic and timely.” Accompanied by strong recommendations from her peers, Baldwins alumnus Sarah Chapman joins the prosecution and strategy table this year. Given her specialty in non-contentious trademark law, the former New Zealand chair of the Intellectual Property Society of Australia and New Zealand is a favourite among local businesses for advice on brand strategy and portfolio management.
Other recommended expertsStraddling both sides of the contentious and non-contentious divide, Rachel Colley of CreateIP has “a busy, motivated and vivacious practice that centers on local businesses”. Litigation specialist Kate Duckworth founded Kate Duckworth IP, where she has been involved in a variety of contentious trademark work for domestic companies in the fashion and wine industries. As one client states: “She is good at her job and very prompt with her replies.” In 2018 Mark Gavin swapped the firm he founded, Hudson Gavin Martin, for Anthony Harper, where he now advises top domestic and international clients on IP and contentious issues. Another former partner at Baldwins, gold-rated Sue Irwin Ironside set up Ironside McDonald with Rachel McDonald in 2019. Based in Auckland, the “exceptionally friendly, personable, knowledgeable and diligent” duo are working with innovative clients across industries, educating them about intellectual property through a “thorough and attentive service based on many decades of work”. “They have always been available for any questions I may have and respond in a timely manner. It has been an extremely smooth process.” “Not only are Sue and Rachel both phenomenal people, their work ethic and performance exceed all expectations. I feel extremely valued as a client. They always have my best interests at heart and 100% have my back. They have also gone above and beyond to help me network and expand my opportunities as a business; it is a very special personal touch.” After leaving Baldwins, Angela Searle founded Christchurch-based Infinity Intellectual Property Ltd, where she has established a niche serving small and medium-sized enterprises in the south island. One satisfied client concurs: “Angela always follows up and makes time to ensure we are on target. If need be, she will actually drop in with armfuls of files to make sure we dot all the i’s and cross all the t’s. Her attention to detail and personal touch make doing business with her easy.” Reiterating that she is “easy to work with”, foreign associates also have the utmost praise for her: “Angela has an encyclopedic knowledge of IP law in the region and her organised and reassuring approach facilitates client service at the highest levels. You can always trust her to provide honest feedback regarding legal issues and client considerations.” “Angela is an exceptional practitioner, who gives high-quality advice with a real client focus. Her practice is new and dynamic – not something you could say about other local firms.”
Individuals: enforcement and litigation
- Jenni Rutter - Dentons Kensington Swan
- Richard Watts - Simpson Grierson
- Ben Cain - James & Wells
- Mark Gavin - Anthony Harper
- Matthew Hayes - AJ Park
- Gus Hazel - James & Wells
- Matt Sumpter - Chapman Tripp
- Elena Szentivanyi - Henry Hughes IP
- Anita Birkinshaw - Buddle Findlay
- Kate Duckworth - Kate Duckworth IP
- Thomas Huthwaite - Baldwins
- Tim Mahood - Hudson Gavin Martin
Individuals: prosecution and strategy
- Damian Broadley - AJ Park
- Penny Catley - Baldwins
- John Glengarry - Buddle Findlay
- Sue Irwin Ironside - Ironside McDonald
- Alan Potter - Potter IP
- 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
- David Moore - Henry Hughes IP
- Scott Moran - Duncan Cotterill
- 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
- Charlotte Henley - Dentons Kensington Swan
- Sooyun Lee - Bell Gully
- Kelly McFadzien - Chapman Tripp
- Richard Watts - Simpson Grierson
- Christopher Young - MinterEllisonRuddWatts
- John B Hackett - AJ Park