Wellington firm wins round against Amex

A tiny Wellington intellectual property advice company has won the first round of a trademark tussle with corporate giant American Express.

It is thought to be the first time that a foreign web business with global reach has been stopped, at least temporarily, from trading with New Zealanders on trademark grounds.

The five-person Zone Corporation owns the trademark in New Zealand for several versions of its Zone and Zone IP names.

Credit card giant Amex has just launched IP Zone, an online intellectual property service to act as a trading market and referral site for intellectual property.

Zone Corp says the names are so similar that IP Zone would infringe Zone's trademark, and the dominance of the IP Zone name is likely to confuse people trying to find it on-line and it will lose business.

The Wellington firm also conducts a large part of its business on-line. Zone's website is www.zoneip.co.nz and Amex' is www.ipzone.com.

Without the orders just granted in the High Court at Wellington, the Amex service would be free to get clients from New Zealand when it is launched fully later this year.

American Express is trying to register the IP Zone trade mark in New Zealand as part of moves to be able to legally protect the name in 54 countries.

Zone can do nothing about what Amex does overseas but it went to the High Court to stop Amex targeting New Zealand.

A judge has agreed to make orders covering New Zealand until the case goes to a full hearing.

The potential for Amex to disrupt Zone's business was substantial but restraining Amex in New Zealand would be insignificant given its global scale, Justice Robert Dobson found.

In the meantime Amex cannot use IP Zone in New Zealand which stops electronic communication between the Amex site and New Zealand internet addresses, offering its services on-line or otherwise to New Zealanders, or including New Zealand in any list of countries able to be displayed or selected on the Amex site.

- © Fairfax NZ News

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