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 trade mark services for multi-national clients including Alibaba Group, Marriott International, Bank of China, GHD, Yahoo!, Acushnet Company and the WWF - World Wide Fund for Nature.  We also advise prominent New Zealand clients including Earthwise, EnviroWaste, Freightways Group, Green Cross Health, Mr Apple, Sky Television and UMF Honey Association and act for a range of public sector clients such as Auckland Council and its CCO organisations (Eke Panuku Development Auckland and Tātaki Auckland Unlimited), various Ministries including the Ministry of Primary Industries, Waka Kotahi New Zealand Transport Agency, The University of Auckland and Ara.  We also provide IP advice to pro bono clients, including Common Good, Joyya and Speed Freaks.

  • New Zealand Trade Mark Firm of the Year - 2010 Asia IP Awards
  • Silver tier - WTR 1000


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


Our team

Hamish Selby

Partner, Auckland

Hamish specialises in intellectual property and leads the Buddle Findlay intellectual property team…

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  • M +64 21 473 529

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