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Clive Elliott KC

Shortland Chambers

Tel: +64 9 307 9808

Mob: +64 21 389 121

Email: clive@cliveelliott.com

Practice Areas

Intellectual Property
Competition and Fair Trading
Defamation and Media
Employment

Qualifications

BA, LLB (Natal), LLM (VUW)

Barrister Sole: 2000

Took Silk: 2013

Profile

Clive is a barrister and arbitrator. Before going to the Bar, he was a dual solicitor and patent attorney, and partner and headed the litigation team at Baldwin Shelston Waters.

Clive is a past president of the New Zealand Bar Association.

He is a past council member of the Auckland Branch of the New Zealand Law Society and the Legal Practice Division of the International Bar Association (IBA). He is also a past co-chair of the Intellectual Property and Entertainment Law Committee of the IBA and a past president of the Intellectual Property Society of Australia and New Zealand (IPSANZ).

He was convenor of the Intellectual Property Committee of the New Zealand Law Society for a period of 10 years and remains a member of the Intellectual Property Committee.

He is a co-author of the Lexis Nexis loose-leaf texts: Copyright and Design; and Patents and Trade Marks.

He has in the past been a part time lecturer in the post-graduate Masters course at both the Department of Law and the Department of Commercial Law at Auckland University and has taught the course “Selected Aspects of IP”.

He is a frequent writer and commentator on IP and information technology issues and is a member of the Editorial Board of the Intellectual Property Forum.

He is named in the International Who’s Who of Patent Lawyers, the International Who’s Who of Internet & E-Commerce Lawyers and the World Trademark Review’s World’s Leading Trademark Professionals.

Professional Activities

Educational and Professional Qualifications

BA – University of Natal, Durban, 1978 LL.B. University of Natal, Durban, 1981
Practicing Certificate, District Law Society, Auckland, 1985 Registered Patent Attorney, 1990
LLM – Victoria University, Wellington, 1991 FAMINZ (Arb) 2008

Membership of Professional Bodies

Past president of the Intellectual Property Society of Australia and New Zealand (IPSANZ)
Past council member of the Legal Practice Division of the International Bar Association (IBA) and past co chair of the Intellectual Property and Entertainment Law Committee of the IBA
Past convener of the Intellectual Property Committee of the New Zealand Law Society
AMINZ (Arbitrators and Mediators Institute of New Zealand) Fellow and Arbitration Panel Member, Member of WIPO panel of arbitrators and domain name neutrals
Expert in the New Zealand Domain Name Resolution Service
Previously a fellow of the New Zealand Institute of Patent Attorneys: Previously convener, Legislation Committee.

Case History

Clive has acted as counsel in a number of major IP cases. He has handled diverse technologies and all aspects of IP, including patents, trade marks, trade secrets and copyright in the High Court, Court of Appeal and Privy Council/Supreme Court. He has acted as counsel in the number of arbitrations and is a fellow of the Arbitrator’s Institute. He was the first New Zealander to be appointed to WIPO’s panel of neutrals and has decided a number of international domain name disputes. He is also a member of the National Arbitration Forum and an Expert in the New Zealand Domain Name Resolution Service.

Selected Recent Cases

Clive has appeared as senior counsel in a number of leading intellectual property cases including:

Reported cases in which Clive has appeared as counsel

Publications and Seminars

Patents and Trade Marks (Intellectual Property Law) (Lexis Nexis) (co-author)
Copyright and Design in New Zealand (Lexis Nexis) (co-author)
Electronic Business Law (Lexis Nexis) (co-author)
“Computer Contracts” in Lexis Nexis New Zealand Precedents (co-author)
Electronic Business Law (Lexis Nexis) (co-author)
Copyright and Design in New Zealand (Lexis Nexis) (co-author)
Chapter on “Computer Contracts” in Lexis Nexis New Zealand Precedents (co-author) Contributing author, Law Society’s Legal Practice Manual, on the topic of intellectual property
Fast Track Update 2006, IP Accelerator, Lexis Nexis, November 2006
Giving Your IP Protection Some Teeth: [Practical] Monitoring and Enforcement [Strategies], July 2006
Patent Law and Enforcement – Biotechnology & the Law, Lexis Nexis, February 2005
Intellectual Property Update, Auckland District Law Society, October 2005
Internet Specific Issues, IP Accelerator, Lexis Nexis, October 2005
From Lenah Meats to Le Mans, Recent Developments in New Zealand IP Law, IPSANZ, Adelaide, Melbourne and Sydney, July 2005
The Copyright/Designs Overlap, IPSANZ National Conference, Noosa, 2004
Litigation Review – (Some Of) the Latest Developments Here and Abroad, Vision Conferences, 2004
Content on the Internet – the Competing Rights of Control and Access, Butterworths, 2002
Business Online – The Legal Issues, How to Identify, Protect and Capture Value in an Online Business, New Zealand Law Society, May 2002
The New Zealand Law Journal, August 2001 – Butterworths “The Napster Saga” Venture Magazine, May 2001 – Contributions to “Cover story”
New Zealand member of Editorial Board of International Journals: IP Asia
“Domain Name Disputes in a Cross-border Contract”, EIPR vol 21 issue 8, August 1999 The Internet – A New World without Frontiers – New Zealand Law Journal, November 1998 The Oggi Case – New Zealand Domain Grabber Dealt To – Trademark World, August 1998 “Informed Discussion Name of the Game” NZ Infotech Weekly, December 9, 1996
“Infoline Names and Telephone Numbers: A New Form of Intellectual Property?” Trademark World, p. 13, October 1996
“The Design/Copyright Overlap–Update on Reform Process”, Lawtalk, p. 7, July 22, 1996
“CER at the Crossroads: Business Law Harmonisation–Where to Now”, Commercial Law, p. 47, February 1995
“New Copyright Act”, International News, p. 10, February 1995
“Once a Copy Always a Copy”, Copyright World, Issue 43, p. 28, September 1994
“The Primetime Case in New Zealand–TV3 Network Services Limited v. Television New Zealand Ltd Fisher J, HC-Auckland CP50/93; 8th February 1993. Application for Interim Injunction Regarding Television Programme Name”, Copyright World, Issue 32, p. 44, August 1993
“The Common Law: Unfair Competition and sui generis Legislation–A Time for Reappraisal”, Copyright World, Issue 20, p. 25, January/February 1992
“Crucial Issues in IP Commercialisation”, Managing Intellectual Property, p. 13, November 1992 “Copyright Law–The ABC’s”, Design Z, December 1988
“Call for New Copyright Laws to Cover Computer Field”, Mercantile Gazette International, August 22, 1988
“Service Mark Registration Arrives”, NZ Business, p. 6, March 1988
“New Zealand–Imprudent Use of ‘Prudential’ Trademark”, IP Asia, p. 28, November 25, 1988
Marketing Magazine, contributing columnist on intellectual property topics (1985-1989)
Infolene Names & Telephone Numbers. A New Form of Intellectual Property, Trademark World, October 1996

Papers/Public Speaking Engagements

Chair, Biotechnology Law Conference, 2003, sponsored by LexisNexis “Where Biotechnology, Law and Commerce Converge”
Guest Speaker, The Protection of Traditional/Cultural Rights – Part II – Legal Perspectives, November 2000 Digital Copyright Seminar, April 2002, “Content on the Internet”
Workshop, September 2001 “Eﬀectively Structuring Joint Ventures Between Traditional Businesses and E Business”
NZLS – Guest Speaker at Seminar, August 2001 – “Enabling Your Clients to do Business Online”
Guest Speaker Conference, July 2001 “Intellectual Property Rights – An update on Key Developments”
Guest Speaker at Conference, June 2001 – “Untangling Web Law”
“Making the Rules Up As You Go!”, Multimedia Agreements, Australia and New Zealand LES Conference, Rotorua, April 1996
“Legal Issues for Intellectual Property and Packaging”, Intellectual Property–A Seminar sponsored by the International Trademark Association and the Packaging Industry Advisory Council
“Outline of the Major Provisions of the Copyright Act 1994 as They Relate to the Computer/Communications Industry”, The New Copyright Act, New Zealand Society for Computers and the Law Inc., Wellington, March 1995
“Intellectual Property Law–Understanding the Interface Between Australia and New Zealand”, Maximising Profit through Internationalising and Commercialising Intellectual Property, Sydney, November 1994
“Patents Update”, Intellectual Property, University of Auckland, July 1994
“Government Reform of Industrial Design and Copyright Law”, Auckland Manufacturers’ Association Inc., October 1992
“Workshop II–Commercialising Research from Universities and Crown Research Institutes”, The Commercial Benefits and Realities of Intellectual Property–Protect your Assets and Profits, Auckland, June 1992
“Maximising your Legal Protection, Part A: The Basic Issues, Part B: Advanced Issues in Software Copyright”, Computer and Database Law, Wellington, September 1992
“The Legalities of Computer Fraud”, Combating Fraud and Improving Security, Auckland, May 1991
“Market Entry Strategies”, Agents, Distributors and Licensees Seminar, Auckland Regional Chamber of Commerce, August 1991
“A Licensing Success Story and a Disaster: What went Right and Wrong?”, member of the panel of commentators, Licensing and your Export Business, Licensing Executives Society Australia and New Zealand, Auckland, November 1990
“Unfair Competition and sui generis Legislation–Necessary Evils?”, Institute of Patent Attorneys, September 1990
“Aspects of Copyright and Intellectual Property in GIS”, Getting it all Together with GIS, The First National GIS Conference, Wellington, June 1989
Presentation at Patents and Trademarks Seminar, Chamber of Commerce, Auckland, May 1990
“Legal Protection and the New Technologies–The Need for Reform”, thesis for LL.M. degree, Victoria University

Clive Elliott QC

Shortland Chambers

Tel: +64 9 307 9808
Mob: +64 21 389 121
Email : clive@cliveelliott.com

Areas of Practice

Intellectual Property
Competition and Fair Trading
Defamation and Media
Employment

Qualifications

BA, LLB (Natal), LLM (VUW)
Barrister Sole: 2000
Took Silk: 2013

General Background

Clive is a barrister, patent attorney and arbitrator. Before going to the Bar, he was a partner and headed the litigation team at Baldwin Shelston Waters.

Clive is the immediate Past President of the New Zealand Bar Association.

He is a past Council Member of the Auckland Branch of the New Zealand Law Society and the Legal Practice Division of the International Bar Association (IBA). He is also a past co-chair of the Intellectual Property and Entertainment Law Committee of the IBA and a past president of the Intellectual Property Society of Australia and New Zealand (IPSANZ).

He was convenor of the Intellectual Property Committee of the New Zealand Law Society for a period of 10 years and remains a member of the Intellectual Property Committee.

He is a co-author of the Lexis Nexis loose-leaf texts: Copyright and Design; and Patents and Trade Marks.

He is a frequent writer and commentator on IP and information technology issues and is a member of the Editorial Board of the Intellectual Property Forum.

Selected Recent Cases

Clive has appeared as lead counsel in a number of leading intellectual property cases including:

Dodson Motorsport Ltd v Logiical Performance Ltd [2019] NZHC 918 (30 April 2019 – copyright infringement, breach of confidence and breach of the Fair Trading Act in relation to modified aftermarket car parts)
NZ Fintech Ltd v Credit Corp Financial Solutions Pty Ltd [2019] NZHC 654 (interim injunction application regarding Google AdWords) and NZ Fintech Ltd v Credit Corp Financial Solutions Pty Ltd [2019] NZHC 1210 (application for leave to appeal decision to Court of Appeal)
Merisant Company, Inc v Flujo Sanguineo Holdings Pty Ltd [2018] NZCA 390, [2018] NZAR 1550 (appeal against decision to refuse a stay of proceedings for abuse of process)
Flujo Sanguineo Holdings Pty Ltd v Merisant Company Inc [2018] NZHC 54, [2018] NZAR 189, Fitzgerald J (application for stay – abuse of process)
Merial Inc v Intervet International BV [2017] NZHC 2918 (Appeal against Commissioner’s Decision regarding extension of time)
Goodman Fielder Consumer Foods Pty Ltd v Heinz Wattieʼs Ltd [2017] NZHC 177 (discovery of documents in trade mark removal proceedings
NSK Ltd v General Equipment Co Ltd [2016] NZHC 2721; NZK Ltd v General Equipment Co Ltd [2016] NZHC 1586; NSK Ltd v General Equipment Co Ltd [2016] NZHC 1424 (Discovery and confidentiality)
Assa Abloy New Zealand Ltd v Allegion (New Zealand) Ltd [2016] NZHC 1738 (patent infringement; patent revocation)
Doug Andrews and Ventilation Ltd v Dil [2015] NZSC 141 (application for leave to appeal)
Assa Abloy New Zealand Ltd v Allegion (New Zealand) [2015] NZHC 2760 (further discovery)
Jeanswest Corporation (New Zealand) Ltd v G-Star Raw C.V. [2015] NZCA 14, [2015] 13 TCLR 7873337 (copyright infringement)
Tasman Insulation New Zealand Ltd v Knauf Insulation Ltd [2015] NZCA 602, [2015] 116 IPR 352 (trade mark infringement and genericism; Fair Trading Act)
Tasman Insulation New Zealand Ltd v Knauf Insulation Ltd [2014] NZHC 960, [2014] 108 IPR 162 (trade mark infringement and genericism; Fair Trading Act)
Cure Kids v National Sids Council of Australia Ltd [2014] 113 IPR 526, [2015] 3 NZLR 90 (trade mark removal) Chettleburgh v Seduce Group Australia Pty Ltd [2014] NZHC 2220 High Court, Auckland, 12/9/2014, CIV 2014-485-4517, Fogarty J (further appeal from Commissioner’s decision – trade mark removal)
Ice SA (formerly named TKS s.a.) v Swatch AG (Swatch SA) (Swatch Ltd) [2013] NZCA 654 (admissibility of further evidence on appeal)
G-Star Raw C.V. v Jeanwest Corporation (New Zealand) Ltd [2013] NZHC 3337 (copyright infringement) Doug Andrews Heating and Ventilation Ltd v Dil [2013] 104 IPR 482 (patent infringement and validity)
International Photo Intellectual Property Ltd v Pacific Magazines NZ Ltd [2012] NZHC 1582, 9 July 2012, CIV 2011-404-841, Potter J (interlocutory application for further discovery)
Divett v Skeates [2012] NZHC 2214, 30 August 2012 (enforcement of settlement agreement)
Baycity Technologies Ltd v Uttinger, Auckland, 21/3/2012, CIV 2006-404-7709, Winkelmann J (application for further particulars of infringement)
Chettleburgh v Seduce Group Australia Pty Ltd [2012] NZHC 2563, [2012] 98 IPR 306 (appeal from Commissioner’s decision – trade mark removal)
Roby Trustees Ltd v Mars New Zealand Ltd (Court of Appeal – trade mark registration – 2012)
Mars New Zealand Ltd v Roby Trustees Ltd, HC Auckland, CIV-2011-404-4613, 7 December 2011, Venning J (appeal from Assistant Commissioner of Trade Marks regarding registrability)
Assa Abloy New Zealand Ltd v Aluminium Systems NZ Ltd, HC Wellington, CIV-2010-485-2, 7 March 2011, MacKenzie J, Noted: 34 TCL 18/5 (appeal from Commissioner of Patents regarding opposition)
Brand Developers Ltd v Ezibuy Ltd, HC Auckland, CIV-2010-404-7593, 4 February 2011, Asher J, Noted: 34 TCL 8/4 (interlocutory injunction – registered design)
Puredepth Ltd v NCP Trading Ltd [2010] NZCA 392, 25 August 2010 (patent infringement)
McInnes v Stallion Plastics Ltd [2010] NZCA 156, 30 April 2010 (leave to appeal; privilege and non-disclosure)
Stallion Plastics Ltd v McInnes, HC Wtn, CIV-2008-485-2250, 17 November 2009, Dobson J (pleadings; cause of action)
Peter Ward v Genesis Equipment (High Court – patent amendment- 2009) Sintes v Harris (High Court – patent infringement and revocation – 2008)
Peterson Portable v Lucas (Supreme Court – patent revocation – 2006)
Pacific Software v Perry Group (Court of Appeal – software commissioning – 2003) McCain Foods v Conagra (Court of Appeal – trade mark registration – 2002)
Ancare v Fort Dodge (Privy Council – patent revocation – 2002

Reported cases

Professional Activities

Educational and Professional Qualifications

A. University of Natal, Durban, 1978 LL.B. University of Natal, Durban, 1981
Practicing Certificate, District Law Society, Auckland, 1985 Registered Patent Attorney, 1990
LLM Victoria University, Wellington, 1991
FAMINZ (Arb) 2008

Membership of Professional Bodies

Immediate past president of the Intellectual Property Society of Australia and New Zealand (IPSANZ)
Past council member of the Legal Practice Division of the International Bar Association (IBA) and past co chair of the Intellectual Property and Entertainment Law Committee of the IBA
Member of the Law Reform Committee and convener of the Intellectual Property Committee of the New Zealand Law Society
AMINZ (Arbitrators and Mediators Institute of New Zealand) Fellow and Arbitration Panel Member, Member of WIPO panel of arbitrators and domain name neutrals
Expert in the New Zealand Domain Name Resolution Service
Fellow of the New Zealand Institute of Patent Attorneys: Previously convener, Legislation Committee.

Case History

Publications and Seminars

Patents and Trade Marks (Intellectual Property Law) (Lexis Nexis) (co-author)
Copyright and Design in New Zealand (Lexis Nexis) (co-author)
Electronic Business Law (Lexis Nexis) (co-author)
“Computer Contracts” in Lexis Nexis New Zealand Precedents (co-author)
Electronic Business Law (Lexis Nexis) (co-author)
Copyright and Design in New Zealand (Lexis Nexis) (co-author)
Chapter on “Computer Contracts” in Lexis Nexis New Zealand Precedents (co-author) Contributing author, Law Society’s Legal Practice Manual, on the topic of intellectual property
Fast Track Update 2006, IP Accelerator, Lexis Nexis, November 2006
Giving Your IP Protection Some Teeth: [Practical] Monitoring and Enforcement [Strategies], July 2006
Patent Law and Enforcement – Biotechnology & the Law, Lexis Nexis, February 2005
Intellectual Property Update, Auckland District Law Society, October 2005
Internet Specific Issues, IP Accelerator, Lexis Nexis, October 2005
From Lenah Meats to Le Mans, Recent Developments in New Zealand IP Law, IPSANZ, Adelaide, Melbourne and Sydney, July 2005
The Copyright/Designs Overlap, IPSANZ National Conference, Noosa, 2004
Litigation Review – (Some Of) the Latest Developments Here and Abroad, Vision Conferences, 2004
Content on the Internet – the Competing Rights of Control and Access, Butterworths, 2002
Business Online – The Legal Issues, How to Identify, Protect and Capture Value in an Online Business, New Zealand Law Society, May 2002
The New Zealand Law Journal, August 2001 – Butterworths “The Napster Saga” Venture Magazine, May 2001 – Contributions to “Cover story”
New Zealand member of Editorial Board of International Journals: IP Asia
“Domain Name Disputes in a Cross-border Contract”, EIPR vol 21 issue 8, August 1999 The Internet – A New World without Frontiers – New Zealand Law Journal, November 1998 The Oggi Case – New Zealand Domain Grabber Dealt To – Trademark World, August 1998 “Informed Discussion Name of the Game” NZ Infotech Weekly, December 9, 1996
“Infoline Names and Telephone Numbers: A New Form of Intellectual Property?” Trademark World, p. 13, October 1996
“The Design/Copyright Overlap–Update on Reform Process”, Lawtalk, p. 7, July 22, 1996
“CER at the Crossroads: Business Law Harmonisation–Where to Now”, Commercial Law, p. 47, February 1995
“New Copyright Act”, International News, p. 10, February 1995
“The Primetime Case in New Zealand–TV3 Network Services Limited v. Television New Zealand Ltd Fisher J, HC-Auckland CP50/93; 8th February 1993. Application for Interim Injunction Regarding Television Programme Name”, Copyright World, Issue 32, p. 44, August 1993
“The Common Law: Unfair Competition and sui generis Legislation–A Time for Reappraisal”, Copyright World, Issue 20, p. 25, January/February 1992
“Crucial Issues in IP Commercialisation”, Managing Intellectual Property, p. 13, November 1992 “Copyright Law–The ABC’s”, Design Z, December 1988
“Call for New Copyright Laws to Cover Computer Field”, Mercantile Gazette International, August 22, 1988
“Service Mark Registration Arrives”, NZ Business, p. 6, March 1988
“New Zealand–Imprudent Use of ‘Prudential’ Trademark”, IP Asia, p. 28, November 25, 1988
Marketing Magazine, contributing columnist on intellectual property topics (1985-1989)
Infolene Names & Telephone Numbers. A New Form of Intellectual Property, Trademark World, October 1996

Papers/Public Speaking Engagements

- Chair, Biotechnology Law Conference, 2003, sponsored by LexisNexis “Where Biotechnology, Law and Commerce Converge”
- Guest Speaker, The Protection of Traditional/Cultural Rights – Part II – Legal Perspectives, November 2000 Digital Copyright Seminar, April 2002, “Content on the Internet”
- Workshop, September 2001 “Eﬀectively Structuring Joint Ventures Between Traditional Businesses and E Business”
- NZLS – Guest Speaker at Seminar, August 2001 – “Enabling Your Clients to do Business Online”
- Guest Speaker Conference, July 2001 “Intellectual Property Rights – An update on Key Developments”
- Guest Speaker at Conference, June 2001 – “Untangling Web Law”
- “Making the Rules Up As You Go!”, Multimedia Agreements, Australia and New Zealand LES Conference, Rotorua, April 1996
- “Legal Issues for Intellectual Property and Packaging”, Intellectual Property–A Seminar sponsored by the International Trademark Association and the Packaging Industry Advisory Council
- “Outline of the Major Provisions of the Copyright Act 1994 as They Relate to the Computer/Communications Industry”, The New Copyright Act, New Zealand Society for Computers and the Law Inc., Wellington, March 1995
- “Intellectual Property Law–Understanding the Interface Between Australia and New Zealand”, Maximising Profit through Internationalising and Commercialising Intellectual Property, Sydney, November 1994
- “Patents Update”, Intellectual Property, University of Auckland, July 1994
- “Government Reform of Industrial Design and Copyright Law”, Auckland Manufacturers’ Association Inc., October 1992
- “Workshop II–Commercialising Research from Universities and Crown Research Institutes”, The Commercial Benefits and Realities of Intellectual Property–Protect your Assets and Profits, Auckland, June 1992
- “Maximising your Legal Protection, Part A: The Basic Issues, Part B: Advanced Issues in Software Copyright”, Computer and Database Law, Wellington, September 1992
- “The Legalities of Computer Fraud”, Combating Fraud and Improving Security, Auckland, May 1991
- “Market Entry Strategies”, Agents, Distributors and Licensees Seminar, Auckland Regional Chamber of Commerce, August 1991
- “A Licensing Success Story and a Disaster: What went Right and Wrong?”, member of the panel of commentators, Licensing and your Export Business, Licensing Executives Society Australia and New Zealand, Auckland, November 1990
- “Unfair Competition and sui generis Legislation–Necessary Evils?”, Institute of Patent Attorneys, September 1990
- “Aspects of Copyright and Intellectual Property in GIS”, Getting it all Together with GIS, The First National GIS Conference, Wellington, June 1989
- Presentation at Patents and Trademarks Seminar, Chamber of Commerce, Auckland, May 1990
- “Legal Protection and the New Technologies–The Need for Reform”, thesis for LL.M. degree, Victoria University

Full CV

Home

Clive Elliott KC

Shortland Chambers

Practice Areas

Qualifications

Profile

Professional Activities

Case History

Selected Recent Cases

Reported cases in which Clive has appeared as counsel

Publications and Seminars

Papers/Public Speaking Engagements

Clive Elliott QC

Shortland Chambers

Areas of Practice

Qualifications

General Background

Selected Recent Cases

Reported cases

Professional Activities

Membership of Professional Bodies

Case History

Publications and Seminars

Papers/Public Speaking Engagements

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