16 March 2016
To Phil Agnew
Director: Business Development
CPIT/Aoraki
PO Box 540
Christchurch 8140
From Hamish Selby
John Glengarry
By Email
Dear Phil
CPIT/Aoraki
Brand due diligence process: ARA INSTITUTE OF CANTERBURY:
Further to our telephone conversation yesterday.
As requested, we provide an outline about the legal due diligence process undertaken by CPIT/Aoraki to
date with respect to the proposed use and registration of the new combined institute name, ARA
INSTITUTE OF CANTERBURY
1.
SUMMARY
In conjunction with Buddle Findlay, CPIT/Aoraki has taken a number of steps to assess the legal risk in
using and registering the new institute name, ARA INSTITUTE OF CANTERBURY (ie via conducting
trade mark availability searches).
Where legal risk was identified, proactive steps were then taken by CPIT/Aoraki to mitigate the legal risk
(eg by contacting the Ministry of Culture and Heritage and Te Wananga o Aotearoa's respectively and
obtaining their view on the proposed new name and setting up an agreed mechanism to address any
concerns).
Finally, a brand protection strategy was devised and implemented in order to obtain strong legal protection
for the ARA brand via a combination of trade mark and domain name registration.
2.
BRAND DUE DILIGENCE PROCESS
Date
Description/steps taken
15-JUN-2015
Initial discussion between CPIT/Aoraki ("
CPIT") Buddle Findlay and advice provided as to the
16-JUN-2015
steps to take to assess the legal risk in using the proposed new name (APEX).and to protect
it via trade mark and domain name registration
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Date
Description/steps taken
21-JUN-2015
Buddle Findlay reports search results for APEX to CPIT and advises legal risk.
CPIT instructs Buddle Findlay to conduct trade mark availability search for alternative name,
ARA.
24-JUN-2015
Buddle Findlay reports search results for ARA and advises legal risk.
25-JUN-2015
Buddle Findlay sends email confirming closest marks found for ARA, including registered
Ministry of Culture and Heritage's ("
Min of C & H") TE ARA mark and Te Wananga o
Aotearoa's ("
Te Wananga") Te Ara Reo Maori mark and unregistered Ara marks.
30-SEP-2015
Risk profile discussed and strategy devised to mitigate legal risk posed by Min of C & H and
Te Wananga marks and balance of other marks.
28-OCT-2015
Email from Buddle Findlay confirming steps taken to date for APEX and ARA marks and
outlining legal risk, next steps and strategy for ARA.
05-NOV-2015
CPIT reports positive response received from Min of C & H for proposed use and registration
of ARA. Draft creative forwarded to Buddle Findlay.
06-NOV-2015
Buddle Findlay provides preliminary comments and advice for draft creative, including for the
proposed "CIT" and "AIC" abbreviations.
12-NOV-2015
Buddle Findlay provides advice and prepares draft response for CPIT to send to Min of C & H
for proposed use and registration of ARA.
CPIT reports that positive response also received from Te Wananga. Buddle Findlay
provides preliminary comments and advice
18-NOV-2015
Buddle Findlay provides advice regarding legal risk posed by use of "CIT" abbreviation from
CIT and Auckland International College.
19-NOV-2015
Further advice provided by Buddle Findlay for the same.
20-NOV-2015
Domain name ara.ac.nz registered by Buddle Findlay as first brand protection measure for
ARA.
30-NOV-2015
Next steps and strategy devised for addressing Min of C & H and Te Wananaga for proposed
use and registration of ARA (eg written consent) and for the creative for the ARA brand,
including strapline.
15-DEC-2015
Draft ARA creative forwarded to Buddle Findlay for initial and comments.
19-DEC-2015
Buddle Findlay provides brand protection advice for the Ara brand and the recommended
steps for the new brand elements (ie strapline and "A" device).
22-DEC-2015
CPIT instructs Buddle Findlay to conduct trade mark availability search for each new ARA
brand element.
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Date
Description/steps taken
27-JAN-2016
CPIT forward letter from Min of C & H to Buddle Findlay.
01-FEB-2016
CPIT requests further domain name registration advice.
02-FEB-2016
Buddle Findlay provides domain name registration advice.
03-FEB-2016
Buddle Findlay reports search results for all new ARA brand elements and advises legal risk.
Revised brand strategy as provided to CPI to fold in new brand elements.
10-FEB-2016
Buddle Findlay instructed to register additional top-level domain names for ARA brand as
further brand protection measure.
18-FEB-2016
CPIT reports to Buddle Findlay that it has just become aware of a skills alliance programme
at Auckland Airport called "Ara".
23-FEB-2016
Buddle Findlay provides legal advice as to legal risk proposed by "Ara" programme and steps
to take to mitigate risk. CPIT contacts "Ara" about brand issue.
26-FEB-2016
CPIT contacts "Ara" again and front foots brand issue and proposes a formal co-existence
arrangement (to the extent one is required).
CPIT instructs Buddle Findlay to prepare and file 'ARA' trade mark applications.
29-FEB-2016
Buddle Findlay confirms filing of 'ARA' trade mark applications and reports filing details to
CPIT.
3.
NEXT STEPS
The next steps to complete the due diligence process are for CPIT/Aoraki to register the various 'ARA'
trade marks (all going well this will occur in the next six months) and complete the paperwork with the Min
of C & H and/or Te Wananga (to the extent this is required) and to arrange the same with "Ara" (ie via a
co-existence agreement).
We trust the above information is helpful – if you have any questions or require further information, please
do not hesitate to contact me.
Yours sincerely
Hamish Selby Senior Associate
Direct: 64 9 363 0703
Mobile: 64 21 473 529
Email: [email address]
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