This post covers Trademark Enforcement, as detailed below.
Scenario It is 20 March 2026. You are contacted by Joanna Turner, a well-known New Zealand freestyle skier from the early 2010s. In 2013 she set up a ski coaching business, ELBERT, which she ran through her company Joanna Turner Ltd (JTL). She later planned to expand ELBERT into ski equipment and ski clothing and designed a logo.
A serious skiing accident in 2016 led to ongoing concussion and the business was put on hold. When she looked to restart in 2020, snow resort operators in New Zealand and Australia began allowing on-mountain coaching only under their own brands, and in 2021 COVID-19 closed the ski slopes. In 2026 she has revived the 2015/16 logo and is planning skis, boots, helmets, gloves, jackets and pants, with a possible distributor in Australia.
Registered ELBERT word marks (in Ms Turner’s name) NZ TM 434561, Class 41 (deemed registration 1 April 2014): education, teaching, coaching and training of snow sports technique; organising and conducting snow sports classes; awarding snow sports qualifications. NZ TM 634562, Class 25 (deemed registration 15 January 2016): clothing, headgear and footwear for snow sports; snow sports gloves; snow sports helmets. NZ TM 634563, Class 28 (deemed registration 15 January 2016): snow sports equipment and goods; skis, bindings for skis, ski poles. Australian equivalents 674567, 801238 and 801239 with the same specifications and dates. NZ TM 634562, NZ TM 634563, AU TM 801238 and AU TM 801239 have not (yet) been renewed; NZ TM 434561 and AU TM 674567 have been renewed. Ms Turner is concerned about Elizabeth Bertrand, a US snowboarder and 2022 Olympic gold medallist known as “El Bert”, who appears regularly on New Zealand and Australian television and YouTube. Ms Bertrand has a commercial arrangement with BURTON, which launched a range of snowboards and clothing bearing an ElBert signature in the US for the 2025-26 season, and US resort safety videos feature her alongside the BURTON brand and the ElBert signature. Burton usually uses its Northern Hemisphere range in the following Southern Hemisphere season, so the ElBert range is expected in New Zealand and Australia soon, and samples may already have been imported. Neither Burton nor Ms Bertrand has registered or applied for any ElBert/ELBERT mark in New Zealand or Australia.
Task Write a letter of advice succinctly advising Ms Turner and JTL on:
JTL’s and her options for enforcing the ELBERT registrations against Burton and Ms Bertrand; Any risks they may face in enforcing those rights, including potential responses from Burton and Ms Bertrand; and A recommended course of action in light of the above. Identify the assumptions made, further information you would seek, applicable timeframes, and reasons why some options might not be available on the facts. No further searches are needed; assume the registered marks and names above are the only relevant ones.
GenAI Use and Referencing If you use GenAI, include a disclosure statement naming the platform, describing how it was used and confirming full responsibility for the final work (not counted in the word limit). Bland, generic, misleading or wrong AI-generated content will be reflected in the marks; wrong or hallucinated references may lead to a significant loss of marks or zero. Include footnotes for any references to case law and statute, following the New Zealand Law Style Guide
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