Penelope Catley | Principal

Penny has over 30 years’ experience as a commercial intellectual property lawyer, advising on trade marks, copyright, trade secrets and related commercial agreements.

Expertise

Penny is a commercial intellectual property lawyer in Australia and New Zealand. She has practised for more than 30 years and is a registered patent attorney in both countries.

Penny enjoys interacting with her local and international clients and getting to know their business issues. She is keen to maximise the value of her clients’ intangible assets.

Penny works for public and private sector clients in a range of industries, including food and beverage, information technology, health, wine, education, fashion and textiles, energy, agriculture and FMCG among others. She currently acts for successful local companies Z Energy, Jade Software, House of Travel, Contact Energy, Victoria University of Wellington Te Herenga Waka, and Australian fashion designer Collette Dinnigan.

Experience

Penny is a past President of the New Zealand Institute of Patent Attorneys (NZIPA). Before joining Baldwins (now AJ Park), Penny worked at law firm Dentons Kensington Swan. Penny started her career at AJ Park.

Recent accolades

Penny’s recent industry accolades include being:

named in the 2024 edition of The Best Lawyers in New Zealand
named by Managing IP's IP STARS as a Trade Mark Star for 2023
named by Managing IP's IP STARS as one of the Top 250 Women in IP 2022 and 2020
ranked as a Trade Mark Star in New Zealand in Managing IP's IP STARS for over 10 years
highly recommended individual prosecution and strategy - World Trademark Review’s WTR 1000 2022 acknowledged as having 'assisted countless brands in Trans-Tasman trademark and brand protection matters' and in 2021 acknowledged for her ‘astute commercial insights and wealth of experience'
selected by her peers for inclusion in The Best Lawyers in New Zealand 2023 and 2024 in the field of IP law
recognised by her peers as being amongst the world’s best and brightest IP practitioners in the WIPR Leaders 2022 handbook
named in The Legal 500’s Asia-Pacific 2022 elite ‘leading lawyers’ list
recommended as a global leader for trade marks and national leader for IP in Australia and New Zealand by Who’s Who Legal 2022.

Beyond work

Penny loves fashion, art and interior design. She enjoys a 'big, rich, buttery' Californian chardonnay and the network of colleagues and friends she has established around the world throughout her career.

Services

Expertise

Qualifications

LLB, Victoria University of Wellington
Admitted as a Barrister & Solicitor of the High Court of New Zealand
Registered Patent Attorney (New Zealand and Australia)
Registered Trade Marks Attorney (Australia)

Velettà \ The beauty of being in business

Wellington woman Sarah Bacon traded her career as an entertainment lawyer to pursue a lifelong passion—creating her own luxury brand of natural skincare.

The beauty of being in business

Penelope Catley 's insights

Article \ 3 Nov 2023

IPONZ issues updates to Trade Mark practice guidelines

The Intellectual Property Office of New Zealand (IPONZ) has now published its updated Trade Mark practice guidelines, which contain direction on the classification of non-fungible tokens, virtual goods, and virtual services.

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Article \ 9 Oct 2023

Trade Mark Register Searches: No Longer Just a "Nice to…

Following a recent decision of Australia's Federal Court, conducting a search of the trade mark register prior to adopting a new mark is now a necessity, not just the ideal.

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Article \ 4 Oct 2023

What’s in a name – and who can use it?…

Nadene Lomu, widow of the famous All Black number 11, Jonah Lomu, has brought to light her complaints about a potential documentary covering her late husband, arguing that anything to do with her husband must be approved and cleared through her as the owner of trade marks filed to protect the Jonah Lomu name.

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Article \ 21 Aug 2023

Curly Girl Method: The Deterioration of a Trade Mark

Lorraine Massey has failed in her bid to stop unofficial usage of the brand Modified Curly Girl (or Guy) and prevent others from registering similar trade marks.

Article \ 17 Nov 2022

A step forward: Indigenous IP rights in Australia

Australian trade mark legislation does not currently recognise indigenous rights. As stated by the Indigenous Expert Reference Group - The current legal framework does not and is not designed to provide First Nations people with the ability to obtain holistic recognition and protection of their indigenous cultural and intellectual property rights.

Indigenous IP rights in Australia website3

Article \ 8 Nov 2022

Intellectual Property Offices on brand protection in the virtual world

As the virtual world continues to expand in size and popularity, more businesses are paying attention to this emerging sector. With the global virtual reality market estimated in the billions, there’s no denying that the investment to participate in the virtual world is occurring on a global scale and expected to grow.

Article \ 22 Nov 2021

Trade marks and the metaverse

Recently, Mark Zuckerberg revealed a new, ambitious vision for Facebook. The trillion-dollar social media company would transition to ’a metaverse company’ named ‘Meta’. This move indicates that the metaverse is something to keep an eye on, and it will perhaps play a dominant role in our future. Some are even claiming it is the next version of the internet. However, we will need to wait and see if it reaches these heights.

Client story \ 31 May 2019

Harley-Davidson - a brand with worldwide appeal

Harley-Davidson is one of the most successful and famous motorcycle brands in the world. In Australia and New Zealand, we administer Harley-Davidson’s brands and customs notices, in addition to actively enforcing the company’s intellectual property rights. We also works closely with customs officials to combat the importation of any counterfeit Harley-Davidson products.