Our award winning intellectual property practice advises a wide range of national and global clients, from SMEs to large multinational companies across various industries. Chris Young heads our IP practice. He is consistently recommended in leading legal directories for his strategic and commercial approach to IP.
Our full service practice will provide practical advice on your IP throughout its lifecycle. We’ll advise you on strategies for the protection, commercialisation, and enforcement of your IP. We are leading advisers in New Zealand handling the IP aspects of a wide range of corporate transactions. Ranked 'Highly Recommended by Managing IP - IP Stars for Copyright and related rights', Chris and his team provide strategic advice for IP, brand and trade mark development and protection, and full trade mark portfolio registration and management services for a wide range of local and international businesses. We work closely with patent attorney colleagues at MinterEllison for patent strategy, prosecution, registration, infringement, and enforcement.
Chris has an extensive international network and is actively involved in the International Trademark Association (INTA) and the International Bar Association (IBA).
Our expertise includes:
Trade mark registration and portfolio management
- Branding and protection strategy (local and international)
- Assessing registrability / freedom to use
- Trade mark registration
- Oppositions and revocations
- Local and international portfolio management, renewals, status reports
- Monitoring competitors’ trade marks
Ownership of IP
- Assessing title to IP
- IP audits
- Due diligence
- Ownership structures
- Assignments
Strategy throughout the IP lifecycle
- R & D agreements
- Licensing
- Commercialisation and sale
- Confidentiality agreements/ NDAs
- Copyright arrangements
Marketing and advertising
- Marketing strategies
- Trade practices, trade mark and copyright issues
- Sponsorship and endorsement agreements
- Copy clearance
- Product labelling
Enforcement and dispute resolution
- Protection and enforcement of all IP rights, including copyright, trade marks, patents and confidential information
- Advice and strategy
- Trade mark opposition, revocation
- IP infringement (including cease and desist letters, injunctions, substantive litigation)
- Border protection/counterfeits/parallel importation
- Domain name disputes
- Settlement and co-existence agreements
- Removal of trade marks for non-use
Commercialising IP and IP in corporate/commercial transactions
- Assignments and transfers
- Licensing, including copyright, trade marks, know-how and patents
- Franchising
- Joint ventures and other commercialisation arrangements
- IP structuring, including brand splitting
- Partnering, joint ventures, and strategic alliances
- Fund raising, venture capital, structured finance, securitisation, business structuring
- IP taxation advice and structuring
- IP aspects of corporate transactions including mergers and restructuring, licensing
- IP due diligence
Management of IP
- Counterfeits programmes
- Portfolio management
- IP policies
- IP risk management audits
- Compliance programmes
Privacy
- Policies
- Consents
- Audits and compliance
Film and media
- Production agreements and structure
- Protection of rights
- Copyright advice and structure
- Trade mark protection and enforcement
- Structuring production to comply with New Zealand Screen Production Grant
Patents
We work with patent attorney colleagues at MinterEllison, and advise on patent strategy, prosecution, registration, infringement, and enforcement.
The IP practice at MinterEllisonRuddWatts is hallmarked by its strategic sophistication and impeccable transactional capabilities. The team can always be relied on to come up with the most commercially viable solution. Epitomising this is the dexterous head of IP Christopher Young, who has extensive involvement with many INTA committees and is always ready to deliver the top-notch brand protection and Trans-Tasman trademark law advice.
WTR1000 2022
Recent highlights
IP and trade mark strategy
Providing ongoing IP and worldwide strategy advice for SkyCity – a major New Zealand group and publicly listed company operating casinos, food and beverage and entertainment facilities in New Zealand and Australia.
Providing Westpac and Kiwibank (both major New Zealand banks) with their New Zealand IP advice, brand strategy, and trade mark portfolio management.
Managing Tourism Holdings Limited’s international IP portfolio and strategic IP advice worldwide. Assisting with IP strategy, branding, and management of their trade mark portfolio.
Advising Southern Cross Healthcare on its IP and brand strategy.
Advising Education New Zealand on its international brand and IP strategy and trade mark portfolio worldwide.
Ongoing IP advisory work including worldwide brand strategy and management of Synlait Milk Ltd’s trade mark portfolio in New Zealand, Australia and worldwide.
Advising a range of clients on strategy for rebranding including recently Trustpower (in relation to its new Manawa brand adopted after selling its retail business), Refining NZ (which has rebranded to Channel Infrastructure), and Kiwibank (in relation to its new branding).
Portfolio management, and local and international trade mark registration and enforcement for international brands
Advising numerous well known international brands in relation to local IP strategy and trade mark registration including ASOS, Anytime Fitness, Birkenstock, Univar, Sorbent, Tena, Havells, The Saul Zaentz Company, Scholastic Inc, Essity Hygiene and Health AB, and BSN Medical GmbH.
SMEs
Advising a wide range of local (including export based) businesses on their IP, brand strategy, and portfolio management locally and internationally including businesses with premium natural products including Storm & India and Karen Murrell Enterprises, apparel and retail businesses including Icebreaker, iLabb, Faradays, Dadelszen, and Zambesi, IT sector businesses including Soul Machines Ltd, Raygun and Vensa Health, sustainability focused businesses including Made for Good RX and Toha Foundry.
Advice and strategy on IP aspects of corporate transactions
Leaders in New Zealand with over 20 years’ experience handling the IP aspects of numerous M&A and other corporate transactions, including acting for multinationals buying local companies and for local businesses selling. Examples include SC Johnson’s acquisition of a local NZ IP based business / product that was then rolled out internationally by SC Johnson under its Raid brand, Froneri’s acquisition of Tip Top, and LIC’s sale of part of its business to MSD Animal Health (a division of Merck & Co, Inc).
Film and television
Advising major US and international studios on their film and television production in New Zealand including in relation to the IP, structural and grant requirements.
NZ Cricket signs with Amazon
Advising on the terms of the media rights agreement with Amazon for the grant of exclusive rights to transmit and use audio visual coverage of the New Zealand Men’s and New Zealand Women’s International cricket matches played in New Zealand (or in any location where New Zealand is considered the home side) on multiple media platforms within India.
Licensing, commercialisation and technology arrangements
Advising numerous clients on licensing arrangements, research agreements, and commercialisation of new technology, including strategy and contracts.
The team is extremely organised and very efficient with outstanding client-focused service. They have specialist expertise in the IP space and are very well-versed in the ins and outs of the world of IP. We confidently know that our IP and trademark work is in safe hands.
The Legal 500 Asia Pacific 2023
