Expertise

Trade marks

Overview

Our firm is a long-standing brand champion on behalf of its clients, providing a full range of trade mark services.  Uniquely among New Zealand law firms, we have continuously provided trade mark registration and portfolio management services since the 1940s.

Our specialists file and prosecute trade mark applications directly in New Zealand, Australia and a number of Pacific Island nations, and we have a network of experienced trade mark agents throughout the world to assist us in protecting our client’s brands internationally.

Our trade mark registration practice is supported by a sophisticated computer system which reduces risks and provides efficiencies.

We provide a full range of trade mark legal services including:

  • Creating trade marks

  • Clearing trade marks for use and registration

  • Registering trade marks, preventing registration and getting marks off registers

  • Managing trade mark portfolios, including watching services and renewals

  • Documenting and recording transfers such as assignments and licensees

  • Securing trade marks for financiers

  • Strategic advice including due diligence and trade mark registration programmes

  • Anti-counterfeiting

  • Dispute resolution including domain name disputes and litigation.

We provide these services for New Zealand and internationally, and our clients include: British American Tobacco, Colgate-Palmolive, PPG Industries, Yahoo!, Suntory, Random House/Doubleday, SabreMark, Bank of New Zealand, Muir Electrical, Freightways Group (New Zealand Couriers, Post Haste, Castle Parcels, DX Mail, Sub60, Online Records Management, Document Destruction Service, Data Security Services, Fieldair), Ngāi Tahu Tourism, Abano Healthcare Group, Red Badge Group, Mr Apple, Saint Clair Family Estate Wines, Auckland City Council, Life Pharmacy (PharmacyBrands, Unichem, Dispensary First and Amcal) and Robbie Williams.

  • New Zealand Trade Mark Firm of the Year - 2010 Asia IP Awards


Work highlights

Advising on brand protection

including strategic advice, trade mark availability searches, trade mark registration, trade mark oppositions and trade mark disputes in New Zealand and overseas

Advising on anti-counterfeiting for Paul Frank, British American Tobacco and Colgate-Palmolive

including Customs' notices and direct action against importers and sellers

Managing British American Tobacco's

New Zealand and Pacific Island trade mark portfolios

Managing New Zealand trade mark portfolios

for Colgate-Palmolive, PPG Industries, Yahoo!, SabreMark, Freightways Group, Ngāi Tahu Tourism, Abano Healthcare Group and others

Managing and implementing worldwide brand protection roll outs

for Infiniti Capital, Equity Partners, Mr Apple and Woosh Wireless

Developing and implementing comprehensive intellectual property policy

for Auckland City Council
more

Our team

Amy Ryburn

Amy Ryburn

Partner, Wellington

Amy specialises in commercial contracting and procurement, in particular in relation to technology, media and telecommunications...

  • DDI +64 4 462 0904
  • M +64 21 242 5889

Email

Graeme Hall

Graeme Hall

Partner, Auckland

Graeme specialises in litigation and dispute resolution. He has broad experience in commercial litigation including Court action...

  • DDI +64 9 358 7046
  • M +64 21 632 178

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John Glengarry

John Glengarry

Partner, Auckland
Patent Attorney | Trade Marks Attorney

John specialises in intellectual property law and has extensive experience in New Zealand and overseas. John's practice covers the...

  • DDI +64 9 357 9391
  • M +64 21 678 198

Email