Cases and Career Highlights

Hover over each circle for more information. Some interesting cases are highlighted in yellow.

2015

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3
15 April 2015

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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A long dispute between New Zealand Milk Brands (Fonterra) and an Australian company Anchor Foods over the ANCHOR trade mark and whether Fonterra had used its ANCHOR trade marks for products other than dairy and dairy alternatives and whether Anchor Foods could register its ANCHOR trade mark for food products other than dairy.

New Zealand Milk Brands Limited & Anor V Anchor Foods Pty Limited CIV-2012-404-003824 (High Court)
22 January 2013

2013

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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 A procedural case in the High Court about when a patent opposition is considered launched.

L'Acme v Gallagher - High Court

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Design and copyright infringement considering the design of bread crates that stack into racks in supermarkets.

Viscount Plastics - High Court

2012

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Opposition to Rising Dragon’s trade mark application for Kerikari on the basis of Nutricia’s KARICARE trade mark.

Rising Dragon International Co Limited and New Zealand Rising Dragon International Co Limited v Nutricia [2012] NZIPOTM 42
29 November 2012

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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DR ZOGG’S SEXWAX is a famous brand of wax for surfboards and it opposed Zoggs trade mark applications covering mostly swimming gear.

Zoggs International Limited v Sexwax Incorporated [2012] NZIPOTM 31
15 October 2012

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Netherlands company Bavaria N.V. the producer of beer branded as BAVARIA opposed the trade mark application BAVARIAN BEER CAFÉ.

John Anton Szangolies v Bavaria N.V. [2012] NZIPOTM 25
14 August 2012

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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An application for revocation by Fresha Export against Manhaas who claimed that the reason it had not used its OCEAN QUEEN trade mark was because of a lack of supply of fish.

Manhaas Industries (2000) Limited V Fresha Export Limited HC WN CIV-2011-485-001255 (High Court)
24 July 2012

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Acting for Prokiwi in opposing a trade mark application by Te Runanga against its applications to register KA MATE and other elements of the famous haka traditionally performed by the New Zealand All Black rugby team.

Te Runanga O Toa Rangatira Incorporated v Prokiwi International Limited [2012] NZIPOTM 14
1 June 2012

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Nutricia opposed Cambricare’s trade mark for CAMBRICARE on the basis of its KARICARE trade mark for infant formula.

NV Nutricia V Cambricare New Zealand Limited CIV-2011-485-002076 (High Court)
15 June 2012

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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The makers of the famous Dr Marten’s shoes and boots opposed an application for AIRWEAR by an Australian company Visitec because Dr Marten’s uses the word AIRWEAR as part of its Dr Marten’s branding.

Visitec Australia Pty Limited v Airwear International Limited [2012] NZIPOTM 6 
22 February 2012

2011

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Complicated trade mark infringement case before the High Court relating to the ownership of the trade marks VALLEYGIRL and TEMT in New Zealand.

Fast Future Brands Pty Limited v Valleygirl New Zealand Limited (High Court) 
2011-2013

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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An interesting case considering whether the words LE CORDON BLEU were a distinctive trade mark in relation to meat products given that “cordon bleu” is used to describe a crumbed meat product stuffed with ham and cheese.

Le Cordon Bleu International B.V. [2011] NZIPOTM 44
25 November 2011

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Trade mark infringement proceedings brought by a local trade mark practitioner operating under various ZONE trade marks against American Express in relation to its IP ZONE trade mark for trading in intellectual property assets.

The Zone Corporation Limited v American Express Marketing & Development Corporation (High Court)
7 September 2011

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Puma opposed a trade mark application by Instinct Clothing for a leaping cat trade mark that Puma said looked like its leaping puma trade mark.

Instinct Clothing Limited v Puma AG Rudolf Dassler Sport [2011] NZIPOTM 28
30 August 2011

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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This case considered whether ST was a distinctive trade mark and eligible for registration.

Honda Motor Co Limited [2011] NZIPOTM 25
18 August 2011

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Long dispute in relation to the trade marks GUMMY VITES for vitamins.

Transworld International Trading Limited v Northwest Natural Products, Inc [2011] NZIPOTM 8
11 May 2011

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Patent opposition to an orthotic insert.

Foot Steps Orthotics Pty Limited v Foot Science International Limited [2011] NZIPOPAT 5
11 April 2011

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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New Zealand Milk Brands Limited (Fonterra) is the owner of the trade mark PRIMO, a brand of flavoured milk, in opposing a trade mark application by Pabst to register PRIMO for beer.

New Zealand Milk Brands Limited v Pabst Brewing Company [2011] NZIPOTM 3
30 March 2011

2010

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Frucor, the manufacturer of V energy drinks in New Zealand, sued Red Bull in relation to its use of the trade mark POCKET ROCKET for a new concentrated form of energy drink.

Frucor Beverages Limited v Red Bull GmbH (2010) CIV-2009-404 -6525 (High Court)
12 February 2010

2009

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Opposition by the famous Swiss watch makers OMEGA to trade mark applications including the word OMEGA for shoes.

Elan Polo Australia Pty Limited v Omega S.A. [2009] NZIPOTM 25
23 November 2009

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Patent opposition to a system for normalising health care data so that it can be exchanged between health care providers.

Malik M Hasan v Ministry of Health, Accident Compensation Corporation, Telecom New Zealand Limited [2009] NZIPOPAT 6
5 May 2009

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Novartis opposed EGO’s trade mark application for ZATAMIL on the basis of its ZATAFLIT trade mark.

EGO Pharmaceuticals Pty Limited v Novartis AG [2009] NZIPOTM 10
20 April 2009

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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An opposition by Freightways to New Zealand Post’s application for the colour red and an application by Freightways to strike out New Zealand Post’s application.

New Zealand Post Limited v Freightways Express Limited [2009] NZIPOTM 2
12 January 2009

2008

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Long standing international dispute between Crocodile International and Lacoste in relation to the word CROCODILE and images of crocodiles used on fashion.

Crocodile International Pte Limited v Lacoste
2008 to 2012

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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A case involving revocation of Wyeth’s trade mark application BENEFIX.

Wyeth v Sanofi Pasteur [2008] NZIPOTM 36
17 December 2008

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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A case that went on appeal to the High Court where Zespri opposed Enza’s trade mark applications for trade marks that were going to be used as stickers on fruit.

Zespri Group Limited V ENZA Limited HC WN CIV 2008-485-1072 (High Court)
18 September 2008

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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This case considered whether Victoria’s Secret’s trade mark application for STRAWBERRIES & CHAMPAGNE was distinctive.

Brand Management, Inc. [2008] NZIPOTM 21
4 August 2008

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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An interesting case involving New Zealand Mint’s trade mark application for SILVER FERN.

New Zealand Mint Limited v New Zealand Post Limited [2008] NZIPOTM 15
9 June 2008

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Opposition by Frucor to Charlie’s trade mark applications for HONEST on the basis that HONEST is a word that other beverage makers might want to use.

Charlie's Trading Company Limited v Frucor Beverages Limited
2007-2009

2007

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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An appeal to the Court of Appeal in relation to Cadbury’s application for the word PURPLE and Effem Foods (owner of the MARS trade marks) opposition to that application.

Cadbury Limited v Effem Foods Limited CA CA274/05 (Court of Appeal)
20 July 2007

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Vitasoy opposed Green Spot’s trade mark applications for VSOY in light of its VITASOY trade mark for soy milk.

Green Spot (Thailand) Limited v Vitasoy International Holdings Limited [2007] NZIPOTM 21
16 July 2007

2006

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Red Bull opposed registration of trade marks that included bulls heads.

Carabao Tawandang CompanyLimited v Red Bull GmbH CIV-2005-485-1975 (High Court)
2006

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Copyright infringement case brought by Henkel against Holdfast in relation to packaging for adhesives.

Henkel KGAA V Holdfast New Zealand Limited SC 43/2006 (Supreme Court)
30 November 2006

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Vans sued Pacific Brands in relation to its release of look-alike black and white checkered shoes.

Vans, Inc v PacificBrands Limited (2006) CIV-2006-485-1036 (High Court)
29 September 2006

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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An appeal to the High Court in relation to the trade mark BETA TELECOM.

Telecom IP Limited V Beta Telecom Limited CIV 2004 485 2789 (High Court)
27 September 2006

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Trade mark applications for the shape of the Narcisco Rodriquez perfume bottle.

Beaute Prestige International  [2006] NZIPOTM 20
18 September 2006

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Involved reinstatement of a trade mark application.

Lloyd IP Limited [2006] NZIPOTM 11
26 June 2006

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Dene Andre applied for the trade mark OJAFFS and Cadbury successfully opposed on the basis of its JAFFA trade mark.

Dene Andre v Cadbury Confectionery Limited [2005] NZIPOTM 29
31 October 2005

2005

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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A trade mark revocation considering removal of various Cadbury trade marks for VAPOR ACTION.

Cadbury Ireland Limited v Societe des Produits Nestle S.A. [2005] NZIPOTM 26 
19 September 2005

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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An unusual trade mark application for the colours green and yellow as applied to gloves.

Showa Co v Ansell Services Inc. [2005] NZIPOTM 20
27 June 2005

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Cadbury opposed Nestlè’s trade mark application for the shape of the Life Saver lolly.

Societe Des Produits Nestle SA v Cadbury Confectionery Limited and Effem Foods Limited [2005] NZIPOTM 14
9 May 2005

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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This case involved the consideration of extensions of time in an opposition.

Reed Executive PLC v Reed Elsevier Group PLC [2005] NZIPOTM 6 
15 February 2005

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Trade mark opposition by Tommy Hilfiger to an application by Etam for TAMMY.

Etam v Tommy Hilfiger Licensing Inc. [2005] NZIPOTM 4
31 January 2005

2004

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Acted for the owners of the famous LE MANS car race in France in opposing an application for the trade mark LE MANS by South Pacific Tyres before the Intellectual Property Office of New Zealand and the High Court.

Automobile Club de L’Ouest, ACOv South Pacific Tyres Limited (High Court)
2004-2005
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Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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The FELIX trade mark for cat food had been being used by Heinz-Wattie for cat food in New Zealand and the question was whether Heinz-Wattie still had a reputation in that trade mark.

Dalgety Spillers Foods Limited v Heinz-Wattie's Limited [2004] NZIPOTM 28 
15 December 2004

2003

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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The question in this opposition was whether ZANLAN was similar to ZANTAC for pharmaceuticals.

Novartis AG v Glaxo Group Limited [2003] NZIPOTM 31
30 July 2003

Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 (15 April 2015)

 

A trade mark opposition involving the trade marks POWERING THE WORLD OF WORK and SHAPING THE WORLD OF WORK.

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Potential opposition to the trade mark ANGEL DISCOVERY on the basis of an existing trade mark for ANGEL for perfume.

JY Network Group Limited v Thierry Mugler Parfums [2003] NZIPOTM 22 
26 May 2003

Clients & brands I have been proud to advise over the years