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Enforcement of IP rights

Kensington Swan is a market-leading specialist in IP rights enforcement and dispute resolution. Our team advises on infringement of IP rights, including trade marks, copyright and patents, passing off, and issues arising under the Fair Trading Act.

We are passionate about protecting our clients’ IP rights, and bring a wealth of experience and insight to the task. From persuading trade mark hearing officers to convincing High Court judges, you can trust us to advocate successfully for you.
 

Creative dispute resolution

We are attuned to achieving the best possible outcome for our clients and usually focus on a commercial resolution, to avoid a prolonged and expensive battle if at all possible. Many IP disputes can be resolved without the need for costly court action and you’ll find us agile and creative in our approach to dispute resolution.

Our highly skilled litigators have extensive experience in seeking urgent court relief when necessary, to protect a client’s valuable IP rights and the market from misleading and deceptive trading.
 

Notable projects

Kensington Swan’s IP litigators have been involved in many high-profile and important cases over the lpast few years, some of which have set important precedents. These include:

  • Rainbow Technologies Inc v Logical Networks Ltd [2003] 3 NZLR 553
  • Containerlift Services Ltd v Maxwell Rotors Ltd (2003) 10 TCLR 807
  • Vans, Inc v Pacific Brands Ltd (2006) CIV-2006-485-1036, High Court Wellington, 29 September 2006, Simon France J; 29 TCL 43/5; [2006] BCL 960
  • Carabao Tawandang Company Ltd v Red Bull GmbH (2006) CIV-2005-485-1975, High Court Wellington, 31 August 2006, Clifford J; 29 TCL 39/8
  • Acting for Eli Lilly & Co in a significant pharmaceutical patent infringement and revocation case concerning Pfizer’s patents relating to Viagra, which concluded in early 2007
  • Frucor Beverages Ltd v Red Bull GmbH (2010) CIV-2009-404 -6525, High Court Auckland, 12 February 2010, Potter J
  • Aventis Pharma SA v Pharmaco (NZ) Ltd (2010) CIV-2010-404-1670, High Court Auckland, 4 June 2010, Harrison J
  • Big Blak Saks Ltd v D & A Marketing Limited (2011) CIV-2011-404-3773, High Court Auckland, 16 August 2011, Williams J.


Recent experience


Preventing free-riding

We recently issued High Court interim injunction proceedings against a lookalike range of rubbish bags that infringed our client’s rights in its own well known black rubbish bags. The Court granted an injunction to our client, after a hard fought hearing. This case clearly spelt out our client’s position to the market, preventing unfair competition and free-riding on the back of its valuable branding and goodwill.


Pharmaceutical industry

Kensington Swan acted for a defendant in a patent infringement case concerning a cancer chemotherapy drug. We successfully defended an interim injunction application, in a novel case that included a judicial review application challenging a decision of the Commissioner of Patents, to allow certain amendments to the patent the plaintiff was suing on. Our successful defence of the injunction application enabled our client to continue supplying its product to New Zealand hospitals.


Academy of Motion Pictures, Arts and Sciences

Our lawyers took enforcement action against various parties for selling and hiring out counterfeit OSCAR® statuettes. We protected the client’s intellectual property rights from infringement and dilution in the New Zealand market and raised awareness of the proprietary rights in the OSCAR® brand and design.


McCain Foods (Aust) Pty Limited

We acted for McCain against Heinz Watties on trade oppositions and litigation concerning the term STEAM FRESH, which is used on frozen vegetables. We defended our client in infringement proceedings and reached a satisfactory resolution on terms acceptable to our client, at an early stage of litigation.


 

Related legal services

Brand development and protection
Patent infringement
Copyright law
Anti-counterfeiting

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