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Clive Elliott QC

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Tel: +64 9 307 9808
Mob: +64 21 389 121
Fax: +64 9 366 1599
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Qualifications

BA, LLB (Natal), LLM (VUW)

Barrister Sole: 2000

Silk: 2013

Areas of Practice

Competition Law

Employment Law

Information Technology Law

Intellectual Property Law

Defamation and Media Law


General Background

Clive is a registered patent attorney, barrister and arbitrator. Before going to the Bar, he was a partner and headed the litigation team at Baldwin Shelston Waters/Baldwins and was with the firm for just on 17 years.

Clive is a Council member of the NZ Bar Association and the Auckland Branch of the NZ Law Society.

He is a 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. He is the immediate past president of the Intellectual Property Society of Australia and New Zealand (IPSANZ) and remains a member of its Trans-Tasman committee.

He is convenor of the Intellectual Property Committee of the New Zealand Law Society.

He is co-author of the Lexis Nexis loose-leaf texts Copyright and Design.

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.

Read more...

Professional Background expand

Educational and Professional Qualifications

  • B.A. University of Natal, Durban, 1978
  • LL.B. University of Natal, Durban, 1981
  • Practicing Certificate, District Law Society, Auckland, 1985
  • Registered Patent Attorney, 1990
  • LL.M 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.

Recent Experience expand

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

Recent decisions include:

  • Stallion Plastics Ltd v McInnes, HC Wtn, CIV-2008-485-2250, 17 November 2009, Dobson J
  • McInnes v Stallion Plastics Ltd [2010] NZCA 156, 30 April 2010
  • Puredepth Ltd v NCP Trading Ltd [2010] NZCA 392, 25 August 2010
  • Brand Developers Ltd v Ezibuy Ltd, HC Auckland, CIV-2010-404-7593, 4 February 2011, Asher J, Noted: 34 TCL 8/4
  • 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
  • Divett v Skeates, HC Auckland, CIV-2007-404-3606, 19 July 2011, Brewer J
  • Mars New Zealand Ltd v Roby Trustees Ltd, HC Auckland, CIV-2011-404-4613, 7 December 2011, Venning J
  • Chettleburgh v Seduce Group Australia Pty Ltd[2012] NZHC 2563, 4 October 2012
  • G-Star Raw CV v Jeanswest Corporation (New Zealand) Ltd [2012] NZHC 2262, 4 September 2012
  • Divett v Skeates [2012] NZHC 2214, 30 August 2012
  • International Photo Intellectual Property Ltd v Pacific Magazines NZ Ltd [2012] NZHC 1582, 9 July 2012
  • Baycity Technologies Ltd v Uttinger HC Ak, CIV-2006-404-7709, 21 March 2012, Winkelmann J

Reported cases in which Clive has appeared as counsel:

  1. Roby Trustees Ltd v Mars New Zealand Ltd (2012) 98 IPR 353
  2. Divett v Skeates (2010) 19 PRNZ 653, 11 February 2010, Hugh Williams J (High Court)
  3. Inverness Switzerland GMBH v MDS Diagnostics Limited (2010) 93 IPR 14 Noted: [2011] NZLJ 141; 33 TCL 29/3, 24 June 2010, Woodhouse J (High Court)
  4. Puredepth Ltd v NCP Trading Ltd [2010] NZCA 392, 25 August 2010
  5. Ward v Genesis Equipment and Manufacturing Inc(2009) 82 IPR 168, 30 June 2009, Stevens J (High Court)
  6. Cadbury Ltd v Effem Foods Ltd (2007) 78 IPR 672; (2007) 8 NZBLC 102,037; (2007) 11 TCLR 966, Noted: [2008] NZ Law Review 589; [2007] BCL 803; 30 TCL 27/6 (Court of Appeal)
  7. Peterson Portable Sawing Systems Ltd (In Liquidation) v Lucas[2006] 3 NZLR 721 (Supreme Court)
  8. Attorney-General v Canwest Radioworks Ltd (2005) 17 PRNZ 844, 31 August 2005, Rodney Hansen J
  9. Pacific Software Technology Ltd v Perry Group Ltd[2004] 1 NZLR 164 Rochester v Fujitsu General New Zealand Ltd [2004] 1 ERNZ 258 (Employment Court)
  10. Pacific Software Technology Ltd & Anor v Perry Group Ltd & Anor [2004] 1 NZLR 164, (2003) 57 IPR 145 (Court of Appeal)
  11. Cadbury Ltd v Effem Foods Ltd (2003) 16 PRNZ 991, 20 May 2003, Rodney Hansen J
  12. Massive NV v Lighting Plus Ltd [2003] 1 NZLR 222; (2002) 7 NZBLC 103,839, Noted: (2002) 3 NZIPJ 153; [2002] BCL 1039; 25 TCL 44/2; NZCLD, 5th Series, 5123, Harrison J
  13. Lucas v Peterson Portable Sawing Systems Ltd[2003] 3 NZLR 361 (High Court)
  14. Rochester v Fujitsu General New Zealand Ltd (2003) 16 PRNZ 74 [2002] 1 ERNZ 448 (Court of Appeal)
  15. Ancare New Zealand Ltd v Cyanamid of NZ Ltd[2002] 2 NZLR 721 (Privy Council)
  16. Fujitsu General New Zealand Ltd v Melco New Zealand Ltd (2002) 16 PRNZ 395 (Court of Appeal)
  17. Fujitsu General New Zealand Ltd v Rochester (No. 3)[2002] 2 ERNZ 977 (Employment Court)
  18. Fujitsu General New Zealand Ltd v Melco New Zealand Ltd (2002) 16 PRNZ 395 (Court of Appeal)
  19. McCain Foods (Aust) Pty Ltd v Conagra Inc [2002] 3 NZLR 41 (Court of Appeal)
  20. Rio Beverages Ltd v Frucor Beverages Ltd (2002) 16 PRNZ 547, 13 May 2002, Salmon J
  21. Rochester v Fujitsu General New Zealand Ltd [2002] 1 ERNZ 448 (Employment Court)
  22. Cyclone Hardware Pty Ltd v Patience & Nicholson (NZ) Ltd[2002] FSR 41, [2001] 3 NZLR 491 (Court of Appeal)
  23. Patience & Nicholson (NZ) Ltd v Cyclone Hardware Pty Ltd[2002] FSR 40 [2001] 3 NZLR 490 (High Court)
  24. Fort Dodge New Zealand Ltd v Ashmont Holdings Ltd(2001) 7 (NZBLC 103,298 (2001) 10 TCLR 18 (High Court)
  25. Patience & Nicholson (NZ) Ltd v Cyclone Hardware Pty Ltd(2000) 14 PRNZ 534 (High Court)
  26. Ancare New Zealand Ltd v Cyanamid of NZ Ltd[2000] 3 NZLR 299[2001] RPC 20 Noted [2008] NZ Law Review 589; (2002) 8 Canta LR 365; [2000] NZ Law (Court of Appeal)
  27. Cyclone Hardware Pty Ltd v Patience & Nicholson (NZ) Ltd[2001] 3 NZLR 490; [2002] FSR 41; (2000) 7 NZBLC 103,273, Noted: [2001] BCL 292; 24 TCL 6/8; NZCLD, 5th Series, 4006, Court of Appeal
  28. Fort Dodge New Zealand Ltd v Ashmont Holdings Ltd(2001) 7 NZBLC 103,298; (2001) 10 TCLR 18, 22 March 2001, Wild J
  29. Patience & Nicholson (NZ) Ltd v Cyclone Hardware Pty Ltd[2001] 3 NZLR 490; [2002] FSR 40 Noted: (2009) 15 NZBLQ 276; [2000] NZ Law Review 461; (2000) 2 NZIPJ 277; [2000] BCL 631; 23 TCL 31/10, 26 June 2000, Rodney Hansen J
  30. Patience & Nicholson (NZ) Ltd v Cyclone Hardware Pty Ltd(2000) 14 PRNZ 534, 8 September 2000, Glazebrook J
  31. Pharmaceutical Management Agency Ltd v Commissioner of Patents[2000] 2 NZLR 529 (Court of Appeal)
  32. New Zealand Post Ltd v Leng [1999] 3 NZLR 219 (High Court)
  33. Oggi Advertising Ltd v McKenzie [1999] 1 NZLR 631; (1998) 6 NZBLC 102,567; (1998) 44 NZIPR 661; (1998) 8 TCLR 363 Noted: (2002) 33 VUWLR 433; (2002) 9 Auckland UL Rev 1004; (2001) 7 NZBLQ 91; (2001) 32 VUWLR 321; (2001) 32 VUWLR 47; [2000] NZ Law Review 461; (1999) 5 NZBLQ 7; (1999) 5 NZBLQ 85; (1999) 8 Auckland UL Rev 1248; (1999) 2 NZIPJ 189; (1998) 4 NZBLQ 191; [1998] NZ Law Review 609; [1998] NZLJ 404; (1998) 2 NZIPJ 27; [1998] BCL 915; [1998] CSLB 91; 21 TCL 24/1; NZCLD, 5th Series, 2627 (High Court)
  34. Oggi Advertising Ltd v McKenzie (1998) 12 PRNZ 535 Noted: (1999) 5 NZBLQ 7; [1998] BCL 1363; 21 TCL 47/6; NZCLD, 5th Series, 3089, Baragwanath J (High Court)
  35. Pharmaceutical Management Agency Ltd v Commissioner of Patents(1998) 8 TCLR 591; [1999] RPC 752, (1999) 6 NZBLC 102,701 Noted: (2001) 32 VUWLR 201; (2001) 32 VUWLR 277; [1999] NZ Law Review 471; [1999] BCL 123; 22 TCL 6/7 (High Court)
  36. Polytherm Industries Ltd v Dux Engineers Ltd (1997) 10 PRNZ 381, 28 February 1997, Barker J
  37. Cussons (New Zealand) Ltd v Unilever Plc and Unilever New Zealand Ltd [1997] 1 NZLR 396 (Privy Council)
  38. Freshco Ltd v Fresh Fruit Co of New Zealand Ltd(1997) 7 TCLR 609 Doogue J
  39. Unilever PLC & another v Cussons (New Zealand) Ltd[1997] 1 NZLR 433; (1997) 6 NZBLC 102,001; (1996) 37 NZIPR 354 Noted: [1998] NZ Law Review 609; [1997] NZ Law Review 333; [1996] BCL 1332; 19 TCL 41/11(Court of Appeal)
  40. Ancare New Zealand Ltd v Ciba-Geigy New Zealand Ltd (1995) 9 PRNZ 173; (1995) 6 TCLR 735 Noted: [1996] BCL 40; 19 TCL 4/10; NZCLD, 5th Series, 0533 20 November 1995, Doogue J
  41. Bonz Group (PTY) Ltd v Cooke [1994] 3 NZLR 216 (High Court)
  42. ICI Australia v Benjamin Moore & Co (1993) 4 NZBLC 103,068 Noted: [1993] BCL 251; [1993] NZ Recent Law Review 399; 16 TCL 5/12; 16 TCL 5/8; NZCLD, 2nd Series, T-211, 17 December 1992, Smellie J
  43. Krone (New Zealand) Technique Ltd v Connector Systems Ltd, (1992) 4 TCLR 325, 6 November 1991, Master Williams
  44. Apple Computer Inc v Apple Corps SA [1990] 2 NZLR 598; (1990) 17 NZIPR 123; (1990) 3 PRNZ 78 Noted: (2008) 23 NZULR 215; [1992] NZ Recent Law Review 368; [1992] NZ Recent Law Review 379; [1990] BCL 475; [1990] BCL 500; [1990] BCL 501; 13 TCL 11/11, 19 February 1990, Henry J
  45. Television New Zealand Ltd v Gloss Cosmetics Supplies Ltd [1989] 19 IPR 663; (1991); (1989) 3 TCLR 83 (High Court)
  46. Krone (New Zealand) Technique Ltd v Connector System Ltd (1988) 2 PRNZ 6277 October 1988 Eichelbaum J
  47. Sunshine Leisure Products (New Zealand) Ltd v Great Outdoors Co Ltd [1986] 2 NZLR 183 (High Court)

Case History expand

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.

Publications and Relevant Activities expand

  • 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