Trade Marks & Branding

Expertise

Our team has extensive experience working with many world-famous brands and has helped to create numerous household brands in New Zealand.  We also work directly into Australia, offering a seamless trans-Tasman service and via our network of trusted agents, can ensure your overseas work is handled effectively.

We advise on all stages of a brand’s lifecycle, including:

‍Searching and clearance: We can conduct comprehensive searches to uncover any potential legal or practical hurdles that might prevent a trade mark from being registered or used. If there are hurdles, we’ll help navigate them.

Trade mark filing, prosecution and registration: We prepare trade mark applications designed to secure appropriate protection that is commercially reasonable and reduces the likelihood of conflict. We don’t over protect, which keeps costs down. We assist clients directly in New Zealand and Australia, and we can help internationally via the Madrid Protocol or our network of overseas agents.

Trade mark oppositions, invalidity actions and revocations: We deliver practical and effective strategies for resolving disputes within the Intellectual Property Office of New Zealand (IPONZ) and IP Australia. Our lawyers regularly appear in hearings before IPONZ and IP Australia to protect and defend trade marks in both New Zealand and Australia.

Trade mark infringement and enforcement: We deliver and pursue practical and effective strategies for resolving trade mark disputes, be that enforcing rights or defending allegations of infringement.

Trade mark portfolio management: We proactively engage with clients to ensure that protection is always appropriate, right-sized and current, ensuring renewals are addressed early and proactively to ensure continued relevant protection.

IP and brand strategy: Filing a trade mark is not always the most appropriate action; we will not shy away from advising not to file, or to file in a novel manner.  Trade mark protection should never be robotic.  We work with clients to craft forward-looking intellectual property strategies that align with their future growth and long-term goals.

Anti-counterfeiting, border protection notices and domain name squatting: Counterfeit goods or someone hijacking your brand online can seriously damage your reputation and revenue.  We can help to stop counterfeits at the New Zealand border or to take down online brand squatters.

Launch of a new product or service needs to be compliant with New Zealand’s regulatory regime. Our wider team can assist with all consumer related aspects of the launch, including compliance with the Fair Trading Act and the Food Code, labelling advice, negotiating geographical indications and ensuring promotional activity complies with our gambling legalisation so that your customer’s data and privacy are handled correctly.

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Experience

• Acting for a major New Zealand telecommunications operator on its complete rebrand, including choice of name and strategy for protecting its new name.
• Assisting leading New Zealand clothing retailers with a range of IP matters, including trade mark protection, clearance of new product lines, third party infringement, collaborations with a local designers and international influencers, and environmental certification of products and supply chain.
• Advising a New Zealand supermarket chain on a change of its house brand, the use of several new taglines, promotional schemes, the launch of several new product brands.
• Assisting a New Zealand-based environmental certification provider with the clearance and protection of its brand internationally and in New Zealand, including defending a key environmental certification mark from third party use.
• Helping a number of well-known brand owners gain rights in novel marks, including sounds, animations and colours.
• Advising the owner of a new professional football team in New Zealand on branding and commercialisation.
• Advising a major New Zealand energy company on its brand strategy and trade mark filing programme for the rebrand of one of its retail energy brands.
• Advising a New Zealand-based dairy and food company on the launch of new product ranges and brands, both in New Zealand and overseas, including conducting clearance searches, Food Code compliance and creating a brand strategy to launch in new markets.
• Assisting a premium coconut butter brand with brand protection and clearance in a range of offshore territories including Australia, Canada, China, Europe and the United States.
• Advising several high-profile global sporting organisations in relation to their intellectual property rights and brand strategy in New Zealand, including anticounterfeiting and opposition proceedings against infringing parties.
• Assisting several well-known artists and sports people to protect their personal brands and identities.
• Advising a global public broadcaster on a new brand direction, including conducting brand clearance and advice in relation to New Zealand trade mark registration and the defending its rights to a globally famous cartoon character.
• Advising a major New Zealand energy and communications company on a broad range of IP issues including a new house brand and new product branding.
• Using a novel strategy to assist a New Zealand financial services provider to obtain and protect its preferred name
• Acting for a well-known European luxury fashion brand in relation to trade mark opposition proceedings in Australia and New Zealand relating to a key brand.
• Acting for a prestigious English university in trade mark opposition proceedings in New Zealand.
• Acting for the owners of a well-known Chinese herbal tea brand in various trade mark revocation and opposition proceedings regarding the rights to the brand.
• Assisting one of the most well-known luxury brands in the world protect and grow its New Zealand presence.