Strategic thinking

Our intellectual property team offers clients a full range of intellectual property services based on wide experience gained at international law firms, patent attorney firms, and in public sector policy and industry roles. 

We act for a wide range of public and private sector clients on intellectual property related issues, including patent and brand protection, both in New Zealand and overseas.

Buddle Findlay’s intellectual property team includes Australian and New Zealand registered patent attorney, John Glengarry.  With harmonisation of Australian and New Zealand intellectual property rules opening the 2 markets to practitioners from both countries, the team regularly files and prosecutes trade mark and design applications directly in Australia and New Zealand. 

The team files directly in a number of Pacific Island nations and has a network of experienced trade mark agents and other intellectual property practitioners throughout the world which it uses to help protect clients’ brands and other intellectual property elsewhere.

Given the multitude of copyright issues in the intellectual property area, all our practitioners are experienced in copyright law.  We also offer patent advisory and dispute services.  We help select and brief appropriate patent attorneys for patent registry matters.

Services

We provide intellectual property establishment, registration, management and transactional services and complement this by offering a full range of dispute resolution services, including litigation. 

Our services include:

  • Creating trade marks and clearing trade marks and designs for use and registration
  • Registering trade marks and designs, preventing registration and getting trade marks and designs off registers
  • Managing trade mark and design portfolios, including trade mark watching services and renewals
  • Documenting and recording intellectual property transfers such as assignments and licences
  • Securing intellectual property for financiers
  • Strategic intellectual property advice including due diligence and intellectual property registration programmes
  • Unregistered trade mark protection (passing off and the Fair Trading Act)
  • Domain name registration and domain name disputes
  • Advertising standards complaints and broadcasting standards complaints
  • Patent advisory, dispute resolution and litigation
  • Copyright
  • Transactional support (financing and structuring, licensing, franchising, and research and development)
  • Anti-counterfeiting

  • Dispute resolution including registered and unregistered trade mark, patent and copyright litigation.

Recent work

  • Advising Suntory on the intellectual property aspects of its purchase of the Frucor beverage business, including the “V” and “MIZONE” brands, from Danone, including reviewing Frucor’s domestic and international trade mark portfolio
  • Advising Unitas Capital and Ontario Teachers Pension Plan on the intellectual property aspects of their purchase of the Yellow Pages business, and providing ongoing intellectual property portfolio management services
  • Advising Unitas Capital on the intellectual property aspects of their joint purchase with Pacific Equity Partners of the brand heavy Independent Liquor New Zealand business
  • Advising on anti-counterfeiting for Paul Frank, British American Tobacco and Colgate-Palmolive including Customs' notices for trade marks and copyright assets, and direct action against importers and sellers
  • Advising on anti-typosquatting and other domain name disputes to recover domain names for rightful owners using New Zealand’s administrative Dispute Resolution Service
  • Advising on copyright and patent litigation regarding truck mounted container cranes
  • Developing and implementing intellectual property policy for Auckland City Council and trade mark policy for one of New Zealand’s major trading banks
  • Advising on .com domain name disputes
  • Advising on copyright disputes for international fashion clothing client
  • Managing New Zealand and Pacific Island trade mark portfolios for British American Tobacco
  • Managing New Zealand trade mark portfolios for Colgate-Palmolive, PPG Industries, Freightways Group, Virtual Spectator, Mr Apple, Woosh Wireless, Vector, SabreMark and Yahoo!
  • Managing and implementing worldwide brand protection roll outs for Infiniti Capital, Equity Partners, Mr Apple and Woosh Wireless
  • Providing patent infringement and opposition advice
  • Providing copyright advisory services for Sky Television
  • Advising Learning Media on a wide range of incoming and outgoing copyright licensing issues
  • Advising Massey University on commercialisation structures and contractual arrangements
  • Advising a New Zealand singer songwriter on an exclusive music publishing arrangement
  • Advising National Library of New Zealand on copyright issues associated with its websites, on-line availability of collections and the deposit of electronic documents
  • Securing intellectual property for financiers of recent major New Zealand business purchases
  • Advising on research and development and licensing advice and agreements for AgResearch
  • Advising Radio New Zealand and New Zealand Sound Archive on copyright issues associated with sound recording archives and licensing

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