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

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

LexisNexis Copyright & Design - Co-author

LexisNexis Laws of New Zealand, Trade Marks title - Author

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) - Previous member of Indigenous Rights, Legislation and Regulation and Non-Traditional Trademarks committees

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

Mount Cook Alpine Salmon Ltd - Past chair and Director

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

Notable Experience

SKY Network Television v Fairfax; SKY Television v Television NewZealand, 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

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 injunciton application and litigation for NZRFU relating to brandng for replica clothing merchandise

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

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

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