Wellington company strikes back at AmEx

A small Wellington IP consultancy has won the first round in a legal trademark battle against credit card giant American Express.

A small Wellington IP consultancy has won the first round in a legal battle with American Express after the High Court granted an interim injunction to stop the credit card giant using its trademarks.

Justice Robert Dobson awarded an injunction that effectively prevents American Express from using trademarks owned in New Zealand by Zone IP as part of an online trading house AmEx intends to launch.

It also stops AmEx from using the trademarks in any marketing or advertising, having a “New Zealand” country dropbox on its website or any electronic dealings or dialogue with parties in this country until a full trial is held next year.

Intellectual property expert Theodore Doucas of Zone IP said the decision was significant because although similar approaches have been taken elsewhere, it appeared to be the first time a foreign web business with a global reach has been restrained in New Zealand in this way.

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

Zone IP is active in NZ and Australia and while the injunction does not prevent Amex from operating in Australia and elsewhere, those operations cannot extend to New Zealand.

Doucas – a former Assistant Commissioner of Trademarks in New Zealand – said while the interim injunction did not necessarily mean AmEx was infringing upon Zone IP’s trademarks, the High Court ruled that there was sufficient similarity for there to be a real issue, with the balance of convenience favouring Zone IP.

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