The Intellectual Property Office of New Zealand (IPONZ) has already begun consulting Maori on the registration of trade marks well ahead of its obligations under the new Trade Marks Bill. Clients should factor in this extra step when making applications.

Treatment of Maori imagery and text under the Trade Marks Bill
One of the purposes of the Trade Marks Bill, which is currently before Parliament, is to address the concerns of Maori relating to the registration of trade marks that contain a Maori sign, including imagery and text.

The Bill prohibits the registration of trade marks where the Commissioner considers that the use of registration of the trade mark "would be likely to offend a significant section of the community, including Maori" (cl 17(1)(b)(ii) of the Bill).

The Bill also requires IPONZ to establish an Advisory Committee which is intended to advise the Commissioner of Trade Marks on marks which contain Maori imagery or text.

Ahead of schedule
However, IPONZ has for some time been unofficially consulting an independent adviser over trade mark applications that contain words or stylisation with a Maori "influence". This process should be factored in when considering registering a mark which has Maori imagery or text.
The advice of any third party, for example Maori language consultants, that IPONZ uses, and the decisions of the Advisory Committee to be set up under the Bill, are not binding on IPONZ. However, it is unusual for IPONZ not to follow the recommendations made.

The process of referring a mark to a third party adds a further step, and therefore extra time should be allowed for in the determination of an application by IPONZ.
Check list
1. What constitutes Maori imagery and/or text?
What could be considered to be derivative of Maori imagery or text is potentially wide-ranging. Currently, any words of Maori origin such as "Kiwi" and "Kia ora", and any stylisation that has Maori "influences" are being referred for third party advice.

2. When will a trade mark application be referred to the Advisory Committee?
Under the current wording of the Trade Marks Bill, the Commissioner has a discretion as to when a mark will be referred to the Advisory Committee. However, the current practice at IPONZ appears to be to seek advice on any mark which has a Maori influence.

3. Can a decision based on the findings of the Committee or a third party be appealed?
Clauses within the Trade Marks Bill allow for an appeal as to a decision made by the Commissioner on advice from the Advisory Committee.
Under the current Trade Marks Act 1953, there is no specific provision allowing for an appeal based on any advice the Commissioner may receive from a third party. However, the Act does allow any decision of the Commissioner as to registrability to be appealed.

4. Does this aspect of the Trade Marks Bill affect existing trade marks with Maori influences?
The process being used by IPONZ does not affect trade marks already registered. It also does not affect the use of unregistered trade marks with a Maori influence. Trade marks that use or encompass Maori text or imagery can continue to be used, assuming that they do not conflict with any currently registered trade marks.

5. When is the Trade Marks Bill likely to be passed?
The Bill has been reported back to Parliament. However, if it remains at its current place on the Order Paper, it is unlikely to be passed this year.

Disclaimer: This publication is necessarily brief and general in nature. You should seek professional advice before taking any action in relation to the matters dealt with in this publication.

For further information please contact the author Genevieve Hancock, Senior Associate
Email: genevieve.hancock@bellgully.com

Web site: Bell Gully