By Angela Sutton

New provisions protecting Maori trade marks contained in the recently introduced Trade Marks Bill may prove controversial. The updated trade marks legislation has been in the wings for a number of years.

The bill attempts to meet increasing concern about the use of Maori words and imagery as trade marks and allows the Commissioner of Trade Marks to reject a trade mark if it is likely to offend a significant section of the community, including Maori.

Taonga
Some argue that Maori language is taonga, meaning "treasures". In 1986 the Waitangi Tribunal said that the Treaty of Waitangi "imposes an obligation to take active steps within the power of the guarantor - i.e. the Crown - if a specific taonga was in danger".

Registering trade marks which incorporate Maori words or imagery has been criticised as giving away Maori language for the commercial benefit of businesses, particularly where that company is based overseas.

Reports that Lego had "copyrighted" Maori names such as toa, kanohi, tohunga, pohatu, kopaka, and whenua for their toys were greeted with an uproar. The Prime Minister Helen Clark acknowledged that "you can understand people feeling resentment at powerful overseas corporations trying to patent what's clearly part of your language and heritage".

Offensive to Maori
It has only been in comparative recent times that the issue of whether a trade mark is offensive to Maori has been taken into account.

For many Maori it is offensive to use a representation of a head in relation to food. Despite this, trade mark registration number 19115 depicts a Maori man's tattooed head in relation to preserved meat.

Over the past decade, the Intellectual Property Office of New Zealand, which administers trade marks, has become increasingly aware of the need for appropriate treatment of trade marks incorporating Maori words or imagery. It has extended its interpretation of section 16, which prohibits the registration of trade marks containing "scandalous matter" or whose use would be "contrary to morality", to prevent offensive or culturally inappropriate marks from being registered.

The new Trade Marks Bill strengthens this approach by requiring the Commissioner not to register any trade mark if a significant section of the community is likely to be offended. The bill establishes an advisory committee to help the Commissioner in determining what is likely to cause offence, although the ultimate discretion remains with the Commissioner.

Concerns about the new provisions
This proposal has provoked concerns that no trade marks including Maori words will ever be able to be registered, and that long-established marks incorporating a Maori word or image could be pulled from the market if they are deemed to be offensive retrospectively. Stephen Franks, of New Zealand political party, ACT, has commented that the amendment to the bill "could trigger ransom demands for use of something that looks essentially New Zealand like a koru or fern frond shape". He has also said that the bill will "enshrine power of Maori names and symbols in the hand of elite Maori".

Mr Franks's concerns are largely misplaced. Marks that might have been offensive at registration but are now well known are unlikely to be successfully challenged. Such extreme views also do not take into account the fact that the Commissioner retains the right to make up his mind on whether a particular trade mark is likely to offend a significant section of the community on reasonable grounds.

It remains to be seen how the content of the term "significant section of the community" will be worked out and whether a single whanau or a small religious group offended by the use of the mark will be sufficient.

This is a general summary only and should not be taken as a substitute for specific advice.

Web site: Baldwin Shelston Waters
Email: email@bsw.com

October 2001