© 2017 Kate Duckworth Intellectual Property Limited. 

Cases & career highlights

Notable cases
Here are some fun ones ...

 

  • Fast Future Brands Pty Limited v Valleygirl New Zealand Limited (2011-2013) (High Court) - complicated trade mark infringement case before the High Court relating to the ownership of the trade marks VALLEYGIRL and TEMT in New Zealand.

  • Crocodile International Pte Limited v Lacoste (2008 to 2012) – long standing international dispute between Crocodile International and Lacoste in relation to the word CROCODILE and images of crocodiles used on fashion.

  • Te Runanga O Toa Rangatira Incorporated v Prokiwi International Limited [2012] NZIPOTM 14 (1 June 2012) – 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.

  • L'Acme v Gallagher - High Court - procedural case in the High Court about when a patent opposition is considered launched.

  • Viscount Plastics - High Court - design and copyright infringement considering the design of bread crates that stack into racks in supermarkets.

  • Visitec Australia Pty Limited v Airwear International Limited [2012] NZIPOTM 6 (22 February 2012) – 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.

 

  • Le Cordon Bleu International B.V. [2011] NZIPOTM 44 (25 November 2011) – 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.

 

  • The Eden Park Trust v Cinq-Huitiemes SA [2011] NZIPOTM 33 (20 September 2011) – an unusual case where a French company opposed the Eden Park Trust’s trade mark application for EDEN PARK because it already owned trade marks in New Zealand that included the words EDEN PARK.

 

  • The Zone Corporation Limited v American Express Marketing & Development Corporation CIV-2011-485-1274 7 September 2011 (High Court) – 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.

 

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

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

 

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

 

  • Charlie's Trading Company Limited v Frucor Beverages Limited (2007-2009) – 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.

  • New Zealand Post Limited v Freightways Express Limited [2009] NZIPOTM 2 (12 January 2009) – 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. 

  • Vans, Inc v Pacific Brands Limited (2006) CIV-2006-485-1036  29 September 2006 (High Court) – Vans sued Pacific Brands in relation to its release of look-alike black and white checkered shoes.

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

 

  • Automobile Club de L’Ouest, ACO v South Pacific Tyres Limited (2004-2005) (High Court) – 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.

 

  • Dalgety Spillers Foods Limited v Heinz-Wattie's Limited [2004] NZIPOTM 28 (15 December 2004) – 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.

 

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

Just some of the clients or brands I have been proud to advise over the years
  • Harley Davidson

  • Resene

  • Corona

  • te Pā  Winery Marlborough

  • Nutricia

  • Cadbury

  • Toyota

  • New Zealand Post

  • Cadbury

  • Lacoste 

  • Victoria's Secret

And some more cases I have represented clients in ...

 

  • 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.

 

  • Rising Dragon International Co Limited and New Zealand Rising Dragon International Co Limited v Nutricia [2012] NZIPOTM 42 (29 November 2012) – opposition to Rising Dragon’s trade mark application for Kerikari on the basis of Nutricia’s KARICARE trade mark.

 

  • Zoggs International Limited v Sexwax Incorporated [2012] NZIPOTM 31 (15 October 2012) – DR ZOGG’S SEXWAX is a famous brand of wax for surfboards and it opposed Zoggs trade mark applications covering mostly swimming gear.

 

  • John Anton Szangolies v Bavaria N.V. [2012] NZIPOTM 25 (14 August 2012) – Netherlands company Bavaria N.V. the producer of beer branded as BAVARIA opposed the trade mark application BAVARIAN BEER CAFÉ.

 

  • NV Nutricia V Cambricare New Zealand Limited CIV-2011-485-002076 15 June 2012 (High Court) – Nutricia opposed Cambricare’s trade mark for CAMBRICARE on the basis of its KARICARE trade mark for infant formula.

 

  • Instinct Clothing Limited v Puma AG Rudolf Dassler Sport [2011] NZIPOTM 28 (30 August 2011) – 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.

 

  • Honda Motor Co Limited [2011] NZIPOTM 25 (18 August 2011) – this case considered whether ST was a distinctive trade mark and eligible for registration.

  • Transworld International Trading Limited v Northwest Natural Products, Inc [2011] NZIPOTM 8 (11 May 2011) – long dispute in relation to the trade marks GUMMY VITES for vitamins.

 

  • Foot Steps Orthotics Pty Limited v Foot Science International Limited [2011] NZIPOPAT 5 (11 April 2011) – patent opposition to an orthotic insert.

 

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

 

  • Elan Polo Australia Pty Limited v Omega S.A. [2009] NZIPOTM 25 (23 November 2009) – opposition by the famous Swiss watch makers OMEGA to trade mark applications including the word OMEGA for shoes.

 

  • Malik M Hasan v Ministry of Health, Accident Compensation Corporation, Telecom New Zealand Limited [2009] NZIPOPAT 6 (5 May 2009) – patent opposition to a system for normalising health care data so that it can be exchanged between health care providers.

 

  • EGO Pharmaceuticals Pty Limited v Novartis AG [2009] NZIPOTM 10 (20 April 2009) – Novartis opposed EGO’s trade mark application for ZATAMIL on the basis of its ZATAFLIT trade mark.

  • Wyeth v Sanofi Pasteur [2008] NZIPOTM 36 (17 December 2008) – a case involving revocation of Wyeth’s trade mark application BENEFIX.

  • Brand Management, Inc. [2008] NZIPOTM 21 (4 August 2008) – this case considered whether Victoria’s Secret’s trade mark application for STRAWBERRIES & CHAMPAGNE was distinctive.

 

  • New Zealand Mint Limited v New Zealand Post Limited [2008] NZIPOTM 15 (9 June 2008) – an interesting case involving New Zealand Mint’s trade mark application for SILVER FERN.
     

  • Green Spot (Thailand) Limited v Vitasoy International Holdings Limited [2007] NZIPOTM 21 (16 July 2007) – Vitasoy opposed Green Spot’s trade mark applications for VSOY in light of its VITASOY trade mark for soy milk.

 

  • Beaute Prestige International  [2006] NZIPOTM 20 (18 September 2006) – trade mark applications for the shape of the Narcisco Rodriquez perfume bottle.
     

  • Carabao Tawandang Company Limited v Red Bull GmbH (2006) CIV-2005-485-1975 (High Court) – Red Bull opposed registration of trade marks that included bulls heads.

  • Henkel KGAA V Holdfast New Zealand Limited SC 43/2006 30 November 2006 (Supreme Court) – copyright infringement case brought by Henkel against Holdfast in relation to packaging for adhesives.

  • Telecom IP Limited V Beta Telecom Limited CIV 2004 485 2789 27 September 2006 (High Court) – appeal to the High Court in relation to the trade mark BETA TELECOM.

 

  • Lloyd IP Limited [2006] NZIPOTM 11 (26 June 2006) – involved reinstatement of a trade mark application.

 

  • Dene Andre v Cadbury Confectionery Limited [2005] NZIPOTM 29 (31 October 2005) – Dene Andre applied for the trade mark OJAFFS and Cadbury successfully opposed on the basis of its JAFFA trade mark.

  • Cadbury Ireland Limited v Societe des Produits Nestle S.A. [2005] NZIPOTM 26 (19 September 2005) – a trade mark revocation considering removal of various Cadbury trade marks for VAPOR ACTION.

 

  • Showa Co v Ansell Services Inc. [2005] NZIPOTM 20 (27 June 2005) – an unusual trade mark application for the colours green and yellow as applied to gloves.

 

  • Societe Des Produits Nestle SA v Cadbury Confectionery Limited and Effem Foods Limited [2005] NZIPOTM 14 (9 May 2005) – Cadbury opposed Nestlè’s trade mark application for the shape of the Life Saver lolly.

 

  • Reed Executive PLC v Reed Elsevier Group PLC [2005] NZIPOTM 6 (15 February 2005) – this case involved the consideration of extensions of time in an opposition.

 

  • Etam v Tommy Hilfiger Licensing Inc. [2005] NZIPOTM 4 (31 January 2005) – trade mark opposition by Tommy Hilfiger to an application by Etam for TAMMY.

 

  • Novartis AG v Glaxo Group Limited [2003] NZIPOTM 31 (30 July 2003) – the question in this opposition was whether ZANLAN was similar to ZANTAC for pharmaceuticals.

 

  • JY Network Group Limited v Thierry Mugler Parfums [2003] NZIPOTM 22 (26 May 2003) – a potential opposition to the trade mark ANGEL DISCOVERY on the basis of an existing trade mark for ANGEL for perfume.