Asialaw Profiles
The Guide to the legal markets of the Asia-Pacific

AJ Park is one of the largest IP firms in the country, and its practice employs over one third of all patent attorneys in New Zealand. The team is also supported by patent experts with science and engineering backgrounds.

With many of the top one hundred New Zealand companies among its clientele, the firm has dominated the New Zealand IP scene for years and shows little sign of loosening this grip. Custodian of a mammoth share of New Zealand IP work, AJ Park is unmatched by any other firm in the country.

“Greg Arthur remains my pick as the leading IP litigator in the market,” says one competitor. Partner Bryan Thompson also receives universal acclaim for his performance in the trade mark space, and is “highly regarded for his experience”, says a peer.

This leading IP specialist firm retains its position after another strong year advising clients locally and internationally. The firm contributes to the development of intellectual property law and the patent attorney profession in New Zealand through its active participation in various professional bodies.

The past year has seen the firm continue its growth with the internal promotions of Kate Duckworth, Shelley Rowland and Chris Ross to the partnership.

The firm advised on LanzaTech’s successful entry into the Chinese market, which had considerable significance for the biotechnology and associated industries in New Zealand. LanzaTech attracted US$18 million in funding, and entered alliances with China’s largest steel and iron conglomerate Baosteel and the Chinese Academy of Sciences to commercialise its technologies for the production of ethanol from steel mill gas emissions.

James & Wells has four regional offices around New Zealand, and this included the largest IP presence on the South Island. The firm has established itself as a market leader and acts for some of the largest domestic corporates including Gallagher Group, AgResearch and Bomac Research.

The firm acted for Healthy Food Guide International in licensing the brand and content of well known New Zealand publication Healthy Food Guide to Eye to Eye Media. This was for the purpose of creating a UK edition of the magazine.

Another notable highlight was advising companies operating the award winning Esquires Coffee Houses franchise in New Zealand and Australia on IP issues on a sale and purchase transaction.

“Simpson Grierson’s legal expertise is excellent. I would characterise its advice as practical and well informed”, says one client.

Practice head Earl Gray is noted by one client as “outstanding, and has great commercial acumen and an innovative approach”. Competitors are also impressed, saying: “Earl’s advice is both legally sound, as well as highly practical.”

The Simpson Grierson team’s strength in depth extends to partner Richard Watts, who is also commended by clients for his “strong knowledge of local law and the broader media, entertainment and communications industry, with a commercial focus on achieving outcomes”.

The firm advised Specialized Bicycle Components on a matter involving copyright infringement and breach of contract claims against a former distributor in relation to bike glove and bike frame designs. The case examined the interplay between copyright and contract, and raised issues of bridging benefits from a distributorship relationship.

Buddle Findlay’s intellectual property team advises a wide range of public and private sector clients on all IP related issues. The firm is extremely experienced on patent and brand protection matters for foreign and domestic companies.

The firm acted for Sky Network Television in a successful proceeding before the Domain Name Commissioner in New Zealand to obtain the transfer of a domain name from a cyber squatter. Meanwhile, on a multi-jurisdictional case, the team represented Active Manuka Honey Association in a brand protection review and related strategies.

“Chapman Tripp is recognised experts in the IP field in New Zealand,” says one client. “Its solutions are commercially astute and exactly matched our needs.” Partner Matt Sumpter “is one of the most respected individuals in his field in New Zealand”, says a client. “His advice is always spot-on and his guidance in the lead up to, and during, a litigation process is invaluable.”

The firm retains its role as principal copyright and commercial IP counsel to Microsoft New Zealand, and it is continuously involved in providing cutting-edge copyright advice on matters ranging from emerging content and distribution issues to enforcement and law reform.

Hudson Gavin Martin is a boutique law firm that was established by three of New Zealand’s leading intellectual property practitioners in Wayne Hudson, Mark Gavin and Simon Martin.

The past year saw the team act on the initial opposition application for a range of MY prefixed trade marks, including MY INSURANCE at the Intellectual Property Office of New Zealand. The matter involved the majority of large insurers in New Zealand and was an important trade mark matter for the industry.

Kensington Swan’s intellectual property team advises a broad range of international and local clients on the protection and enforcement of their intellectual property assets. Partner Sheana Wheeldon is “one of New Zealand’s leading IP lawyers”, says one competitor.

The firm acted for Cottonsoft and its Indonesian parent against SCA Hygiene Australasia and its Swedish parent, PUREX, in defending a trade mark infringement case. The claim brought by the SCA parties alleged trade mark infringement, passing off, and breach of the Fair Trading Act.

Minter Ellison Rudd Watts’ dedicated IP practice covers all IP matters. Led by IP specialist Christopher Young, the team includes specialist  Richard Wells and John McCay.

Last year’s highlight saw the firm represent SCA Hygiene and Aktieloget SCA Finans, the owner of the PUREX brand, against PT Purinusa Ekapersada and Cottonsoft to prevent adoption of the Paseo Pure brand. This complex case required an application for an injunction to prevent release of the confusingly similar brand Paseo Pure by a competitor.