vendredi, juin 25, 2010

New Zealand: Trademark issues when using Maori elements in branding

Trademark issues when using Maori elements in branding

Contributed by A J Park


Background

The use of indigenous words, images and patterns in branding is increasingly popular. New Zealand has a distinctive and authentic Maori culture that is reflected in many aspects of daily life, as well as in commercial activities, and many retailers have recognized the value of reflecting this culture. For example, the Maori expressions 'kia kaha' (which approximately means 'be strong') and 'ataahua' (meaning 'beautiful') have both been adopted in retail branding.

Incorporating verbal and visual motifs into brands can be an attractive way of distinguishing a product or service and communicating a sense of New Zealand identity. However, in developing such brands it is vital to consider whether such use is likely to be offensive to Maori, in which case it may provoke negative publicity and make it impossible to register the brand as a trademark. This will detract from the scope of exclusivity that can be secured for the brand.

Maori culture traditionally attributes spiritual and cultural significance to certain words, images and patterns - as all cultures do. Inappropriate use of words, images and patterns may cause offence. For companies unfamiliar with Maori values and a traditional Maori world view, it is essential to involve people with the necessary knowledge in the brand development process.

Branding considerations in flux

Registering a brand as a trademark gives the registrant a more immediate, wider and stronger exclusivity over its brand. However, what was once considered registrable may not be registrable now, and this is particularly true of Maori words and imagery. The image of a Maori chief's face was formerly used to promote a brand of butter and was registered for the goods in question. Another company used a similar image to promote sauces and pickles, and also registered the image as its trademark, while a third company used and registered a logo representing a tiki (an image of a human figure with strong significance in Maori culture) to promote its brands of beer. However, greater cultural awareness in New Zealand means that although such brands may have been accepted for registration in the past, they are unlikely to be acceptable today. Indeed, achieving a fair representation of Maori interests in this and other aspects of New Zealand intellectual property is an ongoing process (for further details please see "
WAI 262: end of a long road for indigenous rights?").

Assessing acceptability

The criteria for assessing the registration of trademarks using Maori words or images have changed. New Zealand's trademark legislation sets out specific grounds for refusing registration of a trademark. It states that the Intellectual Property Office of New Zealand (IPONZ) may not register a trademark if it considers that the use or registration of the mark would be likely to offend a significant section of the community. Maori are specifically mentioned as a section of the community that must be considered.

In practice, all trademark applications are now assessed to determine whether the mark would, among other considerations, be offensive to Maori. Close attention is paid to marks which contain a Maori word or are derived from a Maori image or pattern.

IPONZ assesses the potential for offence of all trademarks, including foreign word abbreviations, images and patterns. In particular, it assesses whether a trademark is capable of being recognized as Maori in origin. For example, a spiral pattern resembling a traditional Maori koru motif - whether it is a koru pattern or a similar pattern from another culture - will be recognized as a Maori pattern in New Zealand and will be treated as such.

Maori Advisory Committee

In order to ensure that IPONZ decisions about trademarks containing Maori elements are made appropriately, the Trademarks Act requires the commissioner of trademarks to appoint a Maori Advisory Committee. The committee meets approximately four times a year and consists of individuals with expertise in te ao Maori (the Maori world view) and tikanga Maori (Maori protocol and culture).

The role of the committee is to help the commissioner assess whether particular trademarks are offensive to Maori. Since the committee has been advising the commissioner, very few marks have been held to be offensive.

The committee occasionally advises the commissioner that certain words are considered inoffensive for a wide range of goods or services. For example, trademarks including the word 'kiwi' will not be sent to the committee unless the commissioner considers that the trademark may be offensive in relation to particular goods and services, or unless the trademark includes other Maori text or imagery. Similar advice has been issued about koru logos. The committee also takes a pragmatic view when assessing the use of geographical names - the commissioner will not refer trademarks containing geographical locations with Maori words to the committee, except in special circumstances. However, Maori imagery should be used with particular caution for alcoholic beverages, tobacco products and bar services.

An application to register a trademark that includes an element which may have Maori links will probably be referred to the committee. The applicant will be notified. If the committee considers that the mark will not cause offence, the application will proceed through the usual process of examination. However, if the committee has concerns about the mark, it will advise the commissioner on its potential offensiveness. IPONZ will consider the committee's advice and will agree with it and issue a compliance report, or will disagree and allow the application to proceed through the usual process of examination. IPONZ rarely disagrees with the committee. By seeking advice from the committee, IPONZ can strike a balance between the use of Maori culture in commerce and corporate strategies to create distinctive New Zealand brands.

Comment

Consultation with tribal organizations, language institutions and government departments can help to determine whether a proposed brand is likely to be offensive. Even if a potential applicant has already developed a brand that incorporates Maori elements, but remains unsure whether it is likely to cause offence, the applicant may wish to apply for trademark protection, as the examination process will include an assessment of the brand. However, it may be prudent to defer use of the brand until IPONZ reports on it.

For further information on this topic please contact Corinne Blumsky at A J Park by telephone (+64 4 498 3445), fax (+64 4 472 3358) or email (corinne.blumsky@ajpark.com).