IPONZ confirms the importance of cultural considerations and the role of the Māori Trade Marks Advisory Committee

In March, IPONZ announced some updates to its practice guidelines on absolute grounds. One of the changes focusses on the treatment of offensive marks which highlights a unique aspect of trade mark practice in New Zealand. 

Legal certainty for indigenous cultural protection in New Zealand
The Trade Marks Act 2002 established a statutory framework to formally recognise and support indigenous IP and cultural considerations.  Ensuring the creation of the Māori Trade Marks Advisory Committee (the “Committee”) was the strongest indication of IPONZ’s commitment to indigenous rights and values.

The role of the Committee is to advise IPONZ on whether trade marks which contain elements of Māori culture such as words, phrases, imagery, or cultural elements are likely to offend Māori. It’s a broad remit in a number of ways.  For example, it can include marks for words which have meanings in Māori and English such as ONE and PAPA.  Also, what is deemed offensive is broadly interpreted to go beyond what is derogatory or disparaging, and can include:

• Whether the written form of the word uses macrons and double vowels correctly so as not to change its intended meaning; and
• Inappropriate or disrespectful use of culturally significant terms; and  
• Misuse of tapu or sacred concepts; and 
• Māori geographical place names and images of geographical landmarks/features of cultural significance; and 
• Native flora and fauna of New Zealand; and 
• Associating a Māori word or image with goods and services which conveys an inappropriate reference.

Some examples of marks deemed to be offensive by the Committee are (KIA ORA being hello in te reo Māori) by Air New Zealand for its inflight magazine and KAWAKAWA (native tree with leaves often used for various ceremonies and traditions) for electronic cigarettes.

IPONZ’s update to its practice guidelines
The recent update to IPONZ’s guidelines on absolute grounds included some further clarification on offensive marks (section 4 of the Act). 

There have been no changes to the legislation, but IPONZ has strengthened its focus on Māori interests with the following guidance:

• A significant section of the community needs to be offended but that does not equate to a significant proportion of the New Zealand population. A minority that is substantial in number can be offended. Māori are regarded as a significant section of the community.
• When an application is filed for a trade mark that is, or appears to be, derived from a Māori sign, it will be referred to the Committee. If the Committee advises that the mark is offensive, the IPONZ examiner is likely to raise an objection. 
• Examiners will take greater care if the mark contains material that has a higher likelihood of causing offence such as words relating to race, ethnicity, culture and religion. 

Practical implications
For practitioners and trade mark owners, cultural considerations and the mandate of the Committee add an extra layer of thought and scrutiny when devising, searching and filing for trade marks in New Zealand. Cultural and social issues need to be identified early—particularly with Māori language or symbolism. If the trade mark contains Māori cultural elements, then engagement with Māori advisors is critical so the meaning and origin of elements are understood. The consultation process must be undertaken with respect to see if a balance can be found between commercial realities and safeguarding indigenous cultural integrity.

Having a dedicated Committee is world leading - it plays an important role that goes beyond the symbolic. The recent updates reinforce the Committee’s mandate and IPONZ’s continued commitment to Māori interests.