Trade Marks

Trade marks are a way for companies to protect their brand identity and ensure that their products and services are easily identifiable in the marketplace.

Simpson Grierson has one of New Zealand's leading brand protection practices. Our trade mark specialists understand the importance of a client's brand and take a close and active role in protecting and commercialising them.

Led by internationally recognised trade mark lawyer Richard Watts, our practice provides a depth of expertise enabling us to provide timely and practical commercial advice.

We manage trade mark portfolios for many leading local and international brand owners. Our services include pre-filing advice, trade mark filing and prosecution, trade mark opposition and removal filing and defence, infringement advice and enforcement action.

As well as authoring Laws of New Zealand - Trade Marks, we are well represented internationally in leading trade mark organisations, including the International Trade Mark Association, Institute of Trade Mark Attorneys (UK), and the Technical Focus Group to the Intellectual Property Office of New Zealand.

Work Highlights

Bunnings 

We successfully defended copyright, moral rights and trade mark infringement proceedings by Mitre 10 in relation to comparative advertisements.

Nextra Group 

We advised on trade mark applications and associated revocation actions against Next Retail's registrations.

Procter & Gamble

We advise on New Zealand brand protection.

Mars Group 

We advise on New Zealand intellectual property strategy, including its successful strategy to gain exclusivity for the colour purple for cat food packaging.

Europcar 

We represented Europcar in New Zealand defending its "e" device from an opposition by Enterprise, and on related revocation applications against Enterprise registered marks.

Guru Denim (True Religion) 

We advised on an appeal to the High Court by Omega against the rejection by the Intellectual Property Office Assistant Commissioner of Omega's opposition to Guru Denim's application to register its U device for jewellery.

Hays Plc 

We defended opposition by Randstad to Hays' application to register the trade mark POWERING THE WORLD OF WORK.

Jaguar Land Rover Ltd 

We advised on High Court proceedings against Beacham for trade mark infringement, passing off, copyright infringement and breaches of the Fair Trading Act related to advertising and promotion of parallel imported Jaguar and Land Rover vehicles.

Austin Nichols, Inc (Wild Turkey) v Stichting Lodestar 

We represented Austin Nichols in the first and leading Supreme Court hearing of a trade mark matter in New Zealand, and New Zealand's leading trade mark case.

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