Kiwi company takes first round in Amex trademark battle

A Wellington company has won the first round in a legal battle against American Express.

Justice Robert Dobson on Thursday granted an interim injunction against the credit card giant, following a high court hearing last week where Zone IP, an intellectual property consultancy, took action against Amex to stop the American company from using Zone IP’s trademarks as part of an internet-based trading house it planned to launch.

The injunction granted by Justice Dobson effectively prevented American Express from using the trademarks, as well as marketing or advertising using the trademarks, in New Zealand until the full trial, which will probably late next year, Zone IP principal consultant Theodore Doucas said.

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

Mr Doucas said that the decision was significant as, while similar approaches had been taken elsewhere and it was not an unexpected result, it appeared to be the first time that a foreign web business with a global reach had been restrained in New Zealand in this way.

Zone IP is active in New Zealand and Australia and while the injunction doesn’t prevent Amex from operating in Australia and elsewhere, those operations cannot extend to New Zealand under the injunction.

Mr Doucas, a former assistant commissioner of trademarks in New Zealand, said while the interim injunction doesn’t mean Amex was necessarily infringing Zone IP’s trademarks, the high court ruled that there was sufficient similarity for there to be a real issue to be decided and the balance of convenience favoured Zone IP.

Colin Williscroft
Fri, 09 Sep 2011

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Kiwi company takes first round in Amex trademark battle