Cases
Set out below are details of some of the cases where I have acted as counsel. I was sole or lead counsel unless noted otherwise.
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Zuru v LEGO GroupanemptytextllineActing as senior counsel for the LEGO Group on claims against Zuru for trade mark infringement, passing off and breach of the Fair Trading Act. Opposing applications by Zuru for declarations of non-infringement. 12 day trial in the Auckland High Court in May 2023, judgment in favour of the LEGO Group (currently on appeal to the Court of Appeal). The High Court judgment was reported at (2023) 173 IPR 146.
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Oraka v GeostelanemptytextllineCounsel for two of the defendants, Geostel and its director Paul Daynes, since June 2016. The case relates to industrial copyright in the design of a component called a cup used in asparagus-grading machines. I was instructed just after the High Court had awarded damages of $4.1m against my clients and another party, Napier Tool & Die, in 2016 – the largest award of damages for copyright infringement in New Zealand history. That award was overturned by the Court of Appeal in 2016: reported at [2017] 2 NZLR 611. The High Court was directed to assess damages on a “user principle” (or notional licence fee) basis rather than lost profits. Geostel was awarded costs on Oraka’s abandoned application for leave to appeal to the Supreme Court: [2017] NZSC 79. There was a further six day trial in the High Court in 2017 including extensive expert evidence. The High Court set damages at $510,000, plus interest going back to 2005 which effectively doubled the amount due: reported at (2018) 131 IPR 363. This was reduced on appeal to $47,000: [2020] NZCA 256.
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Brands Limited v Bed Bath 'N' Table Pty LimitedanemptytextllineSenior counsel for New Zealand manchester and homewares retailer Bed Bath & Beyond in a claim for trade mark infringement, trade mark invalidity, passing off and breach of the Fair Trading Act by its competitor, Bed Bath N’ Table. Three week trial in the Wellington High Court held in July/August 2022.
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Confidential arbitrationanemptytextllineActing for the successful respondents in an arbitration regarding the validity of the expulsion of a partner from a firm. Issues included validity of the expulsion (interpretation of termination provisions, repudiation) and significant legal issues and expert evidence regarding quantum (future profits, valuation). Seven day arbitral hearing.
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Steelrite Engineering Limited v George Grant Engineering LimitedanemptytextllineActed for welding sub-contractor on proceedings to recover unpaid invoices based on debt/contract. Counterclaim by the defendant GGE was abandoned the day before trial and the claim admitted, my client was awarded costs on an indemnity basis.
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Acer Inc v Australian Council for Educational ResearchanemptytextllineActing for Acer Inc on various IPONZ trade mark proceedings, including successful application for partial revocation of the Council’s trade marks ([2023] NZIPOTM 29) and successful opposition to application for amend pleadings ([2023] NZIPOTM 3).
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Bayly v HicksanemptytextllineCounsel for the respondents in the leading case on partition under the Property Law Act 2007. This involved extensive expert evidence on valuation, surveying and planning issues, with several hearings in the High Court and the Court of Appeal over 7 years: 7 day hearing in the High Court, 2011, reported at (2011) 13 NZCPR 568; Court of Appeal, 2012, reported at [2013] 2 NZLR 401; three day hearing in the High Court, 2015, following appointment of Court-appointed valuers and surveyors; resolved after Court of Appeal hearing was adjourned part-heard, 2016.
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Justitiae Trustee Company Limited v NZF Nominees LimitedanemptytextllineCounsel for a respondent on a trust dispute. Successful in High Court ([2021] NZHC 659) and awarded increased costs with indemnity ([2021] NZHC 1585). Also successful in opposition to set aside statutory demand based on the costs award (reported at [2022] NZCCLR 10).
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Wendco v Wiri Licensing Trust and Auckland CouncilanemptytextllineCounsel for the Wiri Licensing Trust (junior to Graham Kohler QC) on a significant dispute with its tenant, the operator of Wendy’s New Zealand. We successfully opposed two applications for interim injunction in lease dispute (2014). I also acted on the opposition to an application for judicial review regarding non-notification of resource consent application which went to the Supreme Court: High Court, 2014; Court of Appeal, 2015, (2015) 19 ELRNZ 328; and Supreme Court, 2016, [2017] 1 NZLR 1008.
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Marr v ParkinanemptytextllineCounsel for the defendant on a High Court claim relating to purchase of a residential property (four day trial), with judgment for the defendant upheld on appeal. The issues included agency, knowing receipt, competing equitable priorities and the Credit Contracts and Consumer Finance Act. The Court awarded increased costs in relation to the proceeding and a related caveat matter: High Court, 2014; Court of Appeal, 2015; High Court costs judgment, 2015. In a separate proceeding between the same parties, the High Court made an order for possession of the property on summary basis (2015).
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Cooper Tire & Rubber Co v Cooper Tyres NZanemptytextllineCounsel for the NZ-based defendants in a passing off and Fair Trading Act claim in the High Court (plus trade mark invalidity application) brought by a major US corporation, which also involves a counterclaim for trade mark infringement, passing off and breach of the Fair Trading Act.
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Dr August Wolff v Combe InternationalanemptytextllineCounsel for the opponent owner of the VAGISIL mark on a successful trade mark opposition hearing before the Intellectual Property Office relating to the trade mark VAGISAN. I also acted on the appeal in the High Court, which upheld IPONZ’s rejection of the mark.
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Savernake Holdings v Waiwera LLCanemptytextllineCounsel for Savernake Holdings in relation to complex trade mark proceedings involving seven separate but inter-related applications and oppositions at IPONZ regarding trade marks which include the word “WAIWERA”. Savernake succeeded on all of its applications and oppositions, including a declaration of invalidity based on bad faith.
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Re Mosaic Enterprises LimitedanemptytextllineCounsel for a group of software developers and shareholders on a complex case involving a mixture of intellectual property, company, commercial and insolvency issues. Successful opposition to appointment of interim liquidators and then appointment of my clients’ preferred liquidator on a contested application.
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Jespersen v Secretary of the TreasuryanemptytextllineCounsel for the applicants in seeking orders for sale of a forestry right (with or without the underlying land) and division of the proceeds under the Property Law Act 2007. The case was heard in the Whangarei High Court. It was complicated by one of the shares in the forestry syndicate being owned by a person who had become bankrupt, and the Official Assignee disclaiming the share. The share was accordingly bona vacantia but was also the subject of various applications for orders vesting the property, claims and securities including caveats. As a result, 11 sets of respondents were involved and it was necessary to remove caveats and have detailed orders around the marketing and sale process as well as provide for rectification of unequal contributions which had been made over time. The Court granted the sale order and made payments directing the reimbursement of partners who had paid costs associated with the property. The proceeds relating to the disputed share were directed to be held in trust pending resolution of the claims regarding that interest.
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Sanitarium v A Little Bit of BritainanemptytextllineCounsel for the defendants in a high-profile case brought in the Christchurch High Court by Sanitarium against a specialty British goods retailer who imported and sold British Weetabix. The case involved novel trade mark issues including the operation of the Customs notice rules, and expert evidence on marketing issues. The case was reported at (2018) 15 TCLR 173.
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Craig v Social Media Consultants LimitedanemptytextllineCounsel for the appellant (briefed for the appeal), I successfully argued that the High Court should overturn the District Court’s decision to strike out the plaintiff’s claim for copyright infringement. The claim related to the publication on the Whale Oil blog of a poem written by Colin Craig, and also involved issues of breach of privacy and breach of confidence.