Earl Gray

BA(Hons), LLB(Hons), LLM(Cantab)

Earl Gray

BA(Hons), LLB(Hons), LLM(Cantab)

Bio

Earl is an independent barrister specialising in disputes and advisory covering all aspects of intellectual property, and related fields such as sales and marketing, life sciences, sports and franchising. He was previously a partner for 21 years and head of IP with Simpson Grierson.

With 30 years’ experience in the field, Earl has appeared in IP cases in New Zealand's Supreme Court, Court of Appeal, High Court, District Court and Intellectual Property Office, and has run disputes before New Zealand's Advertising Standards Complaints Board and Copyright Tribunal, and various domain name dispute tribunals.

He has been ranked as leading in all major IP, sports law and life sciences directories for many years. Earl also writes the Trade Marks title for Laws of New Zealand, and significant sections of the LexisNexis Copyright and Design publication.

Memberships

  • Intellectual Property Society of Australia and New Zealand
  • New Zealand Bar Association
  • International Bar Association
  • International Trademark Association
  • International Association for the Protection of Intellectual Property (AIPPI)
  • New Zealand Law Society
  • Auckland District Law Society

Contact Details

To contact Earl, please use the details below.

Recognition

The International Who's Who Legal - Thought Leaders - Global Elite - Trademarks (one of only three New Zealand lawyers across all areas of law)

Asia IP’s Best of the Best: Litigation - one of only two NZ lawyers that achieved this ranking

Asia Pacific Legal 500 Intellectual Property - Leading Lawyer

Chambers Asia-Pacific Intellectual Property - Leading Lawyer

Chambers Asia-Pacific Sports Law - Leading Lawyer

AsiaLaw Leading Lawyers Guide Intellectual Property - Market-leading Lawyer

The International Who's Who Legal Life Sciences - Leading Lawyer

The International Who's Who Legal Trademarks - Leading Lawyer

World Trademark Review - Leading Lawyer

Lex Mundi, Intellectual Property Practice Group - Past chair

Auckland City Centre Advisory Board - Deputy chair 2005-2015

Committee for Auckland - Director 2005-2015

International Trademark Association (INTA) - Asia-Pacific Subcommittee of the International Amicus Committee - Past chair

International Trademark Association (INTA) - Member of Indigenous Rights committee, previous member of Legislation and Regulation and Non-Traditional Trademarks committees

Mount Cook Alpine Salmon Ltd - Past chair and current Director

Lion Rock Group of Companies (owners of rights in Buzzy Bee) - Chair and Director 2002-2015

Selected Publications

LexisNexis Copyright & Design - Co-author

LexisNexis Laws of New Zealand, Trade Marks title - Author

Brookers' An Introduction to E-commerce Law in New Zealand - Co-author

Webvertising: Unfair Competition and Trademarks on the Internet - New Zealand chapter (with T Walker and E Coppins) (Kluwer 1999)

Māori Culture and Trade Mark Law in New Zealand – chapter in New Frontiers of Intellectual Property Law (Max Planck Institute and IEEM, 2005)

AdWords and Trade Mark Infringement (Again) - A Response to the Honourable Raynor Asher QC (2021) 126 Intellectual Property Forum 41 (Journal of the Intellectual Property Society of Australia and New Zealand)

A Critical Look at Ownership Jurisprudence under the Trade Marks Act 2002 (2019) 9 NZIPJ 1 (with R Batty)

How Indigenous Rights and Intellectual Property Can Work Together 74 INTA Bulletin No. 7, 15 April 2019 (Journal of the International Trademark Association)

Lowering the Bar – Implications of Canterella Bros for Registrability of Trade Marks in New Zealand (2016) 7 NZIPJ 293

Public Issue No. 1: When the Public is Not the Public – Issuing to the Public Under s 16(1)(b) of the Copyright Act 1994 (2015) 7 NZIPJ 209

The ‘Full Strength” RADLER Trade Mark Decision, NZ Lawyer, 9 Sept 2011

Does a residual discretion not to revoke a trade mark exist? (with K Horstmans) (2008) 4 NZIPJ 182

Out of Commission? The Copyright (Commissioning Rule) Amendment Bill 2008 (with K Walters), (2008) 75 Intellectual Property Forum 63

Non-Traditional Trade Marks – A New Zealand Perspective (2007) 71 Intellectual Property Forum 56

Eddie Irvine – a new driver for personality rights (with P Casey) (2002) NZIPJ 121

Notable Experience

SKY Network Television v Fairfax; SKY Television v Television New Zealand, NZME and Mediaworks – High Court interim injunction application and litigation and successful resolution for SKY with New Zealand media entities relating to their use of SKY’s sports footage

Moola (NZ Fintech) v Wallet Wizard (Credit Corp Australia – High Court interim injunction and leave to appeal applications relating to use of Moola's registered trade mark as an AdWord

Omega v Guru Denim – Court of Appeal and High Court appeals of intellectual Property Office trade mark opposition decision for Guru relating to the True Religion “horseshoe” logo

DB Breweries v Lion Breweries – High Court passing off and Fair Trading Act interim injunction litigation for DB relating to DB’s “Summer Ale” brand

Lucas Mill v Peterson Portable Sawmills; Peterson v Warren Lucas – lengthy Court of Appeal and High Court patent and copyright litigation for Lucas with former manufacturer: covering patent amendment application, unjustified threats of patent infringement proceedings, enforcement of settlement via strike, strike out of copyright infringement proceedings, strike out of proceedings for unjustified threats of registered design infringement proceedings

Pacific Magazines v Seven Network – High Court copyright and contract dispute for Seven about images in magazines imported into New Zealand

Austin Nichols v Stichting Lodestar – Supreme Court and Court of Appeal appeals for Austin Nichols of trade mark opposition proceedings relating to “Wild Turkey”: the first trade mark case before the Supreme Court and leading authority on the nature of a general appeal

Benchmark Building Supplies v Mitre 10 – successful appeal for Benchmark to Court of Appeal of copyright, moral rights and trade mark infringement proceedings by Mitre 10 in relation to comparative advertisements

AstraZeneca v Novartis– Court of Appeal and High Court patent infringement and patent invalidity interim injunction application and litigation for Novartis

Specialized v Sheppard Industries– Court of Appeal and High Court copyright infringement interim injunction application and litigation for Specialized relating to designs of bicycles

Siemens v General Electric – Court of Appeal and High Court interim injunction application and litigation for General Electric relating to confidentiality in gas turbine workings

Jaguar LandRover v Beacham – High Court trade mark infringement and Fair Trading Act litigation for JLR relating to branding and advertising of parallel imported Jaguar and LandRover vehicles

OTOY v Kozlov – High Court without notice interim injunction application and litigation for OTOY against former employee for infringement of copyright in software

Mars New Zealand v Butch Petfoods – Court of Appeal and High Court appeals and Intellectual Property Office trade mark opposition for Mars relating to Butch’s OptimizePro logo application

Mars New Zealand v HeinzWattie’s – High Court appeal and Intellectual Property Office trade mark opposition for Mars relating to Mars’  ADVANCE ADVANCED PET NUTRITION trade mark

New Zealand Rugby Football Union v Canterbury International - High Court trade mark infringement, passing off and Fair Trading Act interim injunction application and litigation for NZRFU relating to branding for replica clothing merchandise

New Zealand Rugby Football Union v Saint Publishing - High Court trade mark infringement, passing off and Fair Trading Act interim injunction application for NZRFU relating to use of branding for a calendar

Flow Imports v Torpedo7 & Aber - defence for Aber of High Court claims of copyright infringement relating to designs for tents

TomTom Communications v TomTom International – High Court appeal and Intellectual Property Office trade mark opposition for TomTom Communications relating to International’s TOMTOM application

Flow Software v Hart - High Court breach of confidence proceedings and interim injunction application for Flow Software against former director and CEO alleged to be misusing sensitive security information belonging to Flow

Testing and Report Services Provider – Acting for defendants in High Court copyright infringement and Fair Trading Act proceedings relating to software and content for testing and report products, involving questions of copyright work identification and subsistence in multiple jurisdictions, and Fair Trading Act jurisdiction and strike out issues.

Guru Denim - advice for all steps to achieving criminal prosecutions and substantial reparation orders for two individuals who imported and sold counterfeit True Religion jeans

Tasman Insulation v Knauf – High Court expert witness relating to steps trade mark owners take to avoid genericism

New Zealand House of Representatives (Parliament), Commerce Select Committee – advice on new technologies amendments to the Copyright Act 1994

Earl Gray

BA(Hons), LLB(Hons), LLM(Cantab)

Bio

Earl is an independent barrister specialising in disputes and advisory covering all aspects of intellectual property, and related fields such as sales and marketing, life sciences, sports and franchising. He was previously a partner for 21 years and head of IP with Simpson Grierson.

With 30 years’ experience in the field, Earl has appeared in IP cases in New Zealand's Supreme Court, Court of Appeal, High Court, District Court and Intellectual Property Office, and has run disputes before New Zealand's Advertising Standards Complaints Board and Copyright Tribunal, and various domain name dispute tribunals.

He has been ranked as leading in all major IP, sports law and life sciences directories for many years. Earl also writes the Trade Marks title for Laws of New Zealand, and significant sections of the LexisNexis Copyright and Design publication.

Memberships

  • Intellectual Property Society of Australia and New Zealand
  • New Zealand Bar Association
  • International Bar Association
  • International Trademark Association
  • International Association for the Protection of Intellectual Property (AIPPI)
  • New Zealand Law Society
  • Auckland District Law Society

Contact Details

To contact Earl, please use the details below.

Recognition

The International Who's Who Legal - Thought Leaders - Global Elite - Trademarks (one of only three New Zealand lawyers across all areas of law)

Asia IP’s Best of the Best: Litigation - one of only two NZ lawyers that achieved this ranking

Asia Pacific Legal 500 Intellectual Property - Leading Lawyer

Chambers Asia-Pacific Intellectual Property - Leading Lawyer

Chambers Asia-Pacific Sports Law - Leading Lawyer

AsiaLaw Leading Lawyers Guide Intellectual Property - Market-leading Lawyer

The International Who's Who Legal Life Sciences - Leading Lawyer

The International Who's Who Legal Trademarks - Leading Lawyer

World Trademark Review - Leading Lawyer

Lex Mundi, Intellectual Property Practice Group - Past chair

Auckland City Centre Advisory Board - Deputy chair 2005-2015

Committee for Auckland - Director 2005-2015

International Trademark Association (INTA) - Asia-Pacific Subcommittee of the International Amicus Committee - Past chair

International Trademark Association (INTA) - Member of Indigenous Rights committee, previous member of Legislation and Regulation and Non-Traditional Trademarks committees

Mount Cook Alpine Salmon Ltd - Past chair and current Director

Lion Rock Group of Companies (owners of rights in Buzzy Bee) - Chair and Director 2002-2015

Selected Publications

LexisNexis Copyright & Design - Co-author

LexisNexis Laws of New Zealand, Trade Marks title - Author

Brookers' An Introduction to E-commerce Law in New Zealand - Co-author

Webvertising: Unfair Competition and Trademarks on the Internet - New Zealand chapter (with T Walker and E Coppins) (Kluwer 1999)

Māori Culture and Trade Mark Law in New Zealand – chapter in New Frontiers of Intellectual Property Law (Max Planck Institute and IEEM, 2005)

AdWords and Trade Mark Infringement (Again) - A Response to the Honourable Raynor Asher QC (2021) 126 Intellectual Property Forum 41 (Journal of the Intellectual Property Society of Australia and New Zealand)

A Critical Look at Ownership Jurisprudence under the Trade Marks Act 2002 (2019) 9 NZIPJ 1 (with R Batty)

How Indigenous Rights and Intellectual Property Can Work Together 74 INTA Bulletin No. 7, 15 April 2019 (Journal of the International Trademark Association)

Lowering the Bar – Implications of Canterella Bros for Registrability of Trade Marks in New Zealand (2016) 7 NZIPJ 293

Public Issue No. 1: When the Public is Not the Public – Issuing to the Public Under s 16(1)(b) of the Copyright Act 1994 (2015) 7 NZIPJ 209

The ‘Full Strength” RADLER Trade Mark Decision, NZ Lawyer, 9 Sept 2011

Does a residual discretion not to revoke a trade mark exist? (with K Horstmans) (2008) 4 NZIPJ 182

Out of Commission? The Copyright (Commissioning Rule) Amendment Bill 2008 (with K Walters), (2008) 75 Intellectual Property Forum 63

Non-Traditional Trade Marks – A New Zealand Perspective (2007) 71 Intellectual Property Forum 56

Eddie Irvine – a new driver for personality rights (with P Casey) (2002) NZIPJ 121

Notable Experience

SKY Network Television v Fairfax; SKY Television v Television New Zealand, NZME and Mediaworks – High Court interim injunction application and litigation and successful resolution for SKY with New Zealand media entities relating to their use of SKY’s sports footage

Moola (NZ Fintech) v Wallet Wizard (Credit Corp Australia – High Court interim injunction and leave to appeal applications relating to use of Moola's registered trade mark as an AdWord

Omega v Guru Denim – Court of Appeal and High Court appeals of intellectual Property Office trade mark opposition decision for Guru relating to the True Religion “horseshoe” logo

DB Breweries v Lion Breweries – High Court passing off and Fair Trading Act interim injunction litigation for DB relating to DB’s “Summer Ale” brand

Lucas Mill v Peterson Portable Sawmills; Peterson v Warren Lucas – lengthy Court of Appeal and High Court patent and copyright litigation for Lucas with former manufacturer: covering patent amendment application, unjustified threats of patent infringement proceedings, enforcement of settlement via strike, strike out of copyright infringement proceedings, strike out of proceedings for unjustified threats of registered design infringement proceedings

Pacific Magazines v Seven Network – High Court copyright and contract dispute for Seven about images in magazines imported into New Zealand

Austin Nichols v Stichting Lodestar – Supreme Court and Court of Appeal appeals for Austin Nichols of trade mark opposition proceedings relating to “Wild Turkey”: the first trade mark case before the Supreme Court and leading authority on the nature of a general appeal

Benchmark Building Supplies v Mitre 10 – successful appeal for Benchmark to Court of Appeal of copyright, moral rights and trade mark infringement proceedings by Mitre 10 in relation to comparative advertisements

AstraZeneca v Novartis– Court of Appeal and High Court patent infringement and patent invalidity interim injunction application and litigation for Novartis

Specialized v Sheppard Industries– Court of Appeal and High Court copyright infringement interim injunction application and litigation for Specialized relating to designs of bicycles

Siemens v General Electric – Court of Appeal and High Court interim injunction application and litigation for General Electric relating to confidentiality in gas turbine workings

Jaguar LandRover v Beacham – High Court trade mark infringement and Fair Trading Act litigation for JLR relating to branding and advertising of parallel imported Jaguar and LandRover vehicles

OTOY v Kozlov – High Court without notice interim injunction application and litigation for OTOY against former employee for infringement of copyright in software

Mars New Zealand v Butch Petfoods – Court of Appeal and High Court appeals and Intellectual Property Office trade mark opposition for Mars relating to Butch’s OptimizePro logo application

Mars New Zealand v HeinzWattie’s – High Court appeal and Intellectual Property Office trade mark opposition for Mars relating to Mars’  ADVANCE ADVANCED PET NUTRITION trade mark

New Zealand Rugby Football Union v Canterbury International - High Court trade mark infringement, passing off and Fair Trading Act interim injunction application and litigation for NZRFU relating to branding for replica clothing merchandise

New Zealand Rugby Football Union v Saint Publishing - High Court trade mark infringement, passing off and Fair Trading Act interim injunction application for NZRFU relating to use of branding for a calendar

Flow Imports v Torpedo7 & Aber - defence for Aber of High Court claims of copyright infringement relating to designs for tents

TomTom Communications v TomTom International – High Court appeal and Intellectual Property Office trade mark opposition for TomTom Communications relating to International’s TOMTOM application

Flow Software v Hart - High Court breach of confidence proceedings and interim injunction application for Flow Software against former director and CEO alleged to be misusing sensitive security information belonging to Flow

Testing and Report Services Provider – Acting for defendants in High Court copyright infringement and Fair Trading Act proceedings relating to software and content for testing and report products, involving questions of copyright work identification and subsistence in multiple jurisdictions, and Fair Trading Act jurisdiction and strike out issues.

Guru Denim - advice for all steps to achieving criminal prosecutions and substantial reparation orders for two individuals who imported and sold counterfeit True Religion jeans

Tasman Insulation v Knauf – High Court expert witness relating to steps trade mark owners take to avoid genericism

New Zealand House of Representatives (Parliament), Commerce Select Committee – advice on new technologies amendments to the Copyright Act 1994