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Trade Marks

A well protected brand can be a company's most valuable asset. 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 their protection, exploitation and enforcement.

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, providing:

  • Pre-filing advice
  • Trade mark filing and prosecution
  • Trade mark opposition and removal filing and defence
  • Infringement advice
  • 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.

Examples of our work

  • Bunnings - successful defence of copyright, moral rights and trade mark infringement proceedings by Mitre 10 in relation to comparative advertisements
  • Nextra Group – trade mark applications and associated revocation actions against Next Retail's registrations
  • Procter & Gamble - New Zealand brand protection and Customs' enforcement
  • Mars Group - New Zealand intellectual property strategy, including successful strategy to gain exclusivity for the colour purple for cat food packaging
  • Europcar - 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) - appeal to the High Court by Omega against 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 - defended opposition by Randstad to Hays' application to register the trade mark POWERING THE WORLD OF WORK
  • Jaguar Land Rover Ltd - 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 - 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
  • Trade mark and registered design portfolio work for a number of the leading local and international brands, including Mars Group, SPCA, Columbia Sportswear, Virgin, Volvo, DB Breweries, Netball New Zealand, New Zealand Rugby League, and Heart Foundation
  • Lexis Nexis Laws of New Zealand - Trade Marks - Author