Winc Australia wins trademark injunction against NXP, Tiri Group
- 06 November, 2019 12:00
Winc Australia was awarded an interim injunction protecting its NetXpress trademarks.
A complex 2018 regrouping of New Zealand office products market has landed in court, with an interim injunction being awarded over the use of trademarks.
At a hearing in October, Winc Australia sued NXP Holdings and NXP Ltd as well as their owner, Tiri Group, to secure its rights to various "NetXpress" trademarks.
Winc won an interim injunction against the three respondents, forcing them to stop using the marks, which covered, among other things, retail and wholesale mail and electronic ordering and distribution.
For NXP, which acquired Winc NZ last year, to be viable as a stand-alone business, it was necessary for it to separate Winc's Australian and New Zealand e-commerce platforms.
The now separate Winc Australia and NXP entered into a transitional agreement allowing NXP to use Winc-owned brands and domains for 12 months while NXP changed its branding.
However, a dispute arose between the parties over the meaning of transitional and trademark clauses in their agreement and what was included in their scope.
In March 2019, NXP rebranded its business from Winc NZ to Net Xpress Procurement. It then applied to revoke Winc’s registrations for the NetXpress trademarks.
It then rebranded to NXP and withdrew its revocation application in an attempt, the judgement said, to avoid proceedings.
The respondents then confirmed their intention to continue to use the word “NetXpress” to brand the e-commerce platform, leading to court action.
"Ultimately, for interim purposes, Winc need only show a serious question to be tried, and I am satisfied it has done so for trade mark infringement," the judgment said,
"However, if the balance of convenience is finely balanced, the lack of evidence adduced by Winc may weigh against it."
The stoush arose Aussie private equity outfit Platinum Equity's acquisition of Winc Australia and New Zealand in March 2017 and its subsequent attempt, in April 2017, to acquire OfficeMax's operations on both sides of the Tasman.
Platinum had not applied for clearance from the Commerce Commission for the OfficeMax deal and the regulator was concerned that it would be likely to substantially lessen competition.
Winc and OfficeMax are the two largest suppliers of stationery and office products in New Zealand and both also resell ICT products and services from a range of vendors.
In November 2017 the Commission joined High Court injunction proceedings initiated by Complete Office Supplies’ to prevent the OfficeMax acquisition.
Platinum then provided an undertaking to the Commission and the Court in April 2018 committing to divest Winc NZ to a purchaser approved by the Commission once Platinum acquired OfficeMax.
Tiri Group, owned by NBR Rich Lister Tom Sturgess, emerged as Winc NZ's buyer in July last year.