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Small WGTN company wins first round in trademark battle

8 September 2011

Small Wellington company wins first round in trademark battle with American Express

A small Wellington company today won the first round in a legal battle with American Express when the High Court granted an interim injunction against the credit card giant.

Zone IP, an intellectual property consultancy based in Wellington, has taken American Express to the High Court to stop the American company from using Zone IP’s trademarks.

Amex is seeking to launch an internet based trading house/consultancy with a global reach using trademarks owned in NZ by Zone IP. The interim injunction granted by Justice Robert Dobson effectively prevents American Express from using the trademarks, as well as marketing or advertising using the trademarks, in New Zealand until the full trial, probably late next year some time.

In his judgement Justice Dobson remarked that Zone IP has built up a “not insubstantial” business from modest beginnings and after three years in operation is the fifth largest filer of trademarks in New Zealand.

Intellectual property expert, Theodore Doucas of Zone IP, said that the decision is significant because while similar approaches have been taken elsewhere and it was not an unexpected result, it appears to be the first time that a foreign web business with a global reach has been restrained in New Zealand in this way.

Zone IP is active in NZ and Australia and while the injunction doesn’t prevent Amex from operating in Australia and elsewhere, those operations cannot extend to NZ without raising issues under the injunction granted.

The injunction stops American Express from having a “New Zealand” country drop box on its website, as well as any electronic dealings or dialogue with parties in this country, until trial.

Mr Doucas – himself a former Assistant Commissioner of Trade Marks here in New Zealand – said while the interim injunction doesn’t mean Amex are necessarily infringing Zone IP’s trademarks, the High Court has ruled that there was sufficient similarity for there to be a real issue to be decided and the balance of convenience favoured Zone IP.


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