Winc trademark stoush poised to go to appeal.
The owners of Winc NZ have been granted the right to appeal a High Court injunctions against their use of NetXpress trademarks and their variants online.
The High Court granted injunctions against the new owners and operators of Winc NZ (NXP Holdings and NXP Ltd as well as their owner, Tiri Group) last October.
The High Court has now, however, granted NXP’s application for leave to appeal and issued an order staying the execution of the injunctions granted until further order of the Court of Appeal.
A December judgment found the earlier decision to allow the injunctions may have been based on significant errors in law and in the interpretation of contracts and arguable errors over the determination of "balance of convenience".
"Having determined that there are arguable errors both of general or public importance or otherwise of sufficient importance to NXP to outweigh the lack of any general or precedential importance, I consider it follows, as a matter of course in this case, that it is in the interests of justice to grant leave to appeal," Justice Christine Gordon wrote in her judgment.
The dispute arose out of a complex 2018 regrouping of New Zealand office products market after Aussie private equity outfit Platinum Equity's acquisition of Winc Australia and New Zealand in March 2017.
It subsequently attempted to acquire OfficeMax's operations on both sides of the Tasman.
Platinum had not, however, applied for clearance from the Commerce Commission for the OfficeMax deal and the regulator was concerned that it would substantially lessen competition.
In November 2017 the Commission joined High Court injunction proceedings initiated by Complete Office Supplies’ to prevent the OfficeMax acquisition.
In April 2018, Platinum provided an undertaking to the Commission and the Court 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 2018.
However, to be viable as a stand-alone business, it was necessary for the new owners 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.
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, rebranded to NXP and withdrew its revocation application in an attempt, the earlier 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 from Winc Australia.
At a hearing last 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.
