IPONZ has updated several of its practice guidelines this year, most recently practice guideline 3, which deals with the classification and specification of marks in relation to GIs and practice guideline 16, which deals with Māori trade marks and the Māori Trade Marks Advisory Committee.
The guidelines aim to provide detailed information about the practices and procedures relating to aspects of the filing, examination, and registration of trade marks, and can be helpful resources for those looking to obtain trade mark registration.
Practice Guideline 3
Practice guideline 3 was updated in March, and then again in May this year, in respect of GIs, when they appear in a trade mark, and how GIs are treated when included in the specification of a mark.
GIs are signs that identify goods which come from a particular locality, region or territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin, and the “specification” of a trade mark being the generic descriptions of the goods or services in relation to which the mark is intended to be used.
The guideline was updated to direct that:
- applicants should not use a GI as the name of a good in a trade mark specification, for example “Spanish Olives” should simply be “Olives”;
- a specification can mention one or more GIs, provided that the goods originate in the place of geographical origin to which those GIs relate, and meet the other criteria for those GIs, for example “Champagne” may be used for sparkling wine that is from the Champagne region in France; and
- if a GI is mentioned as part of a specification term, the wording must clearly identify the GI as a GI, and include a generic description of the goods.
The updates to practice guideline 3 also include recommended actions in anticipation of the New Zealand-European Union Free Trade Agreement (NZ-EU FTA), which may enter into force soon.
New trade mark practice guidelines for using Māori elements
Practice guideline 16, which was updated in April this year, deals with Māori trade marks and the Māori Trade Marks Advisory Committee. This update included materials to:
- help explain specific Māori concepts; and
- discuss why using certain Māori elements in combination with some products or services may be considered offensive.
As part of the update, IPONZ has also developed an Aratohu Mātauranga checklist. This checklist is intended to help applicants be aware of potential issues if their trade mark contains Māori elements.
Māori elements in trade marks
One of the purposes of the Trade Marks Act 2002 is to address Māori concerns relating to the registration of trade marks that contain a “Māori sign”, including imagery and text.1
Before a trade mark is registered, the Commissioner of Trade Marks will examine the application for registration.2
The Māori Trade Marks Advisory Committee is established under the Act, and is comprised of members who have a deep understanding of mātauranga and tikanga Māori (core beliefs, values, and principles broadly shared by Māori). The Committee is tasked with advising the Commissioner on whether the proposed use or registration of a trade mark that is, or appears to be, derivative of a Māori sign is, or is likely to be, offensive to Māori.3
The Commissioner must not register a trade mark that is likely to offend a significant section of the community, including Māori.4
Once a trade mark is registered, interested parties, including Māori entities, can still oppose the use and registration of the trade mark on the grounds that it is likely to offend Māori.5
What is a “Māori sign”?
Practice guideline 16 states that a trade mark consisting of or containing an element of Māori culture, or that appears to be derivative of an element of Māori culture, is considered a Māori sign or derivative of a Māori sign. Elements of Māori culture include anything sourced and generated from te ao Māori (the Māori world/worldview). This includes words or images that are, make reference to, or include kupu Māori (Māori words), toi Māori (traditional and modern Māori arts), taonga Māori (cultural treasures), and mātauranga Māori (Māori knowledge, wisdom, understanding and skill).6
The guideline makes clear that respectful use of elements of Māori culture requires an understanding of Māori culture, including te ao Māori and mātauranga. This is because, if the use or registration of a trade mark that contains a Māori sign is inconsistent with a te ao Māori view and the values and principles that underpin mātauranga, there is a risk that the use or registration of that trade mark is likely to be offensive to Māori.
Adopting a trade mark that includes elements of Māori culture
Practice guideline 16 now includes some suggested practical steps applicants might take when applying to register a trade mark that includes or appears to be derivative of elements of Māori culture. They are to:
- consider seeking specialist advice or engaging with Māori: The guideline recommends that applicants seek specialist advice or engage with Māori to ensure that any current or future use of Māori elements in a trade mark is culturally appropriate.7 This may include engaging a Māori language or cultural expert to provide specialist advice on the cultural appropriateness of the mark.8
- consider engaging a Māori artist, creative, or designer: If a trade mark uses Māori artwork or designs, the guideline suggests that engaging a Māori artist, creative, or designer will give applicants the best chance of ensuring the use or registration of a trade mark is not likely to be offensive to Māori.9
- consider engaging a Māori language or cultural expert: If Māori words or designs are used in a trade mark, it is important that such use is consistent with tikanga Māori, and therefore unlikely to offend Māori. The guideline recommends that applicants consider working with a Māori language or cultural expert to advise on such matters.10
- consider some other form of engagement with Māori: The guideline notes that effective engagement requires an understanding that elements of Māori culture are collectively shared and through the process of engagement with Māori (particularly relevant iwi, hapū, or whānau), an applicant may be permitted to use certain elements, having spoken to the appropriate kaitiaki (guardian) of the relevant taonga.11
Likely to be offensive to Māori
The Committee has also taken this opportunity to set out specific guidance for trade mark applicants in determining whether a trade mark is likely to offend Māori. Some of the issues that arise in such determinations include:
- ensuring that kupu Māori have the correct and intended meaning and that its use is consistent with the tikanga associated with that kupu;12
- the use of elements of Māori culture in relation to goods or services such as alcohol, tobacco, genetic technologies, gaming, and gambling;13
- Māori artwork and design form part of Māori cultural identity and pūrākau (traditional forms of Māori narrative that recount creation) and its use in a trade mark may cause offence if used in a particular context and/or no permission was granted to use the works;14 and
- it may not be appropriate for whakataukī (proverbs), whakatauākī (proverbs where the author is known), and kīwaha (idiom) to be divorced from their specific context.15
Aratohu Mātauranga Checklist
Finally, the new Aratohu Mātauranga checklist comprises a series of questions for applicants to consider before applying to register a trade mark that includes elements of Māori culture. Specifically, the questions focus on:
- identifying Māori content;
- the reasons for selecting Māori elements to use in the mark;
- the meaning of the Māori elements in the mark;
- the origins and significance of the Māori elements;
- how the mark was designed and developed;
- whether the applicant has sought advice and/or permission from a relevant party on the use of Māori elements in the mark; and
- how the proposed use of the mark will acknowledge and respect any cultural practices associated with the Māori elements within it (including the continued respect of cultural practices following registration).
Conclusion
While IPONZ guidelines are updated on a regular basis, during the first half of 2024 IPONZ appears to be particularly aware of the potential adoption of the NZ-EU FTA, the importance of GIs on a global scale, and the increasing relevance of te reo Māori and tikanga Māori to our understanding of intellectual property laws in Aotearoa New Zealand.
If you have any questions about the matters raised in this article, please get in touch with the contacts listed or your usual Bell Gully adviser. For further information on the interaction between tikanga and state law, see our three-part series published in the Māori Law Review here.
[1] Trade Marks Act 2002, s 4(c). [2] See ss 175A and 175B, noting that an Assistant Commission has the functions, duties, and powers of the Commissioner under the Act, other than the power to delegate under section 175C, but is subject to the control of the Commissioner (s 175B(1)). [3] Trade Marks Act 2002, s 178.[4] Section 17(1)(c).[5] At [5.5.2].[6] The Background to the Guidelines states that elements of Māori culture include the following: Māori words, proverbs, expressions of language, dialect, genealogical information (whakapapa), or naming conventions; Māori names, including Māori whānau, hapū, iwi or marae names; Māori people, places, characters, protocols; Māori history, cultural stories, historical accounts, aongs, dance, cultural expressions that may or may not be in the public domain; Toi Māori – art, carving, moko and tā moko, raranga, clothing and adornments, visual arts, games, both traditional and modern cultural expressions; Taonga Māori – Te Reo Māori, landmarks, whakapapa, photographs, heirlooms, taonga tuku iho, tribal landmarks, artefacts in collections, flora and fauna (native trees, birds, taonga species); specific whānau, hapū or iwi tribal land, waterways, mountains, social systems and structures; and Mātauranga. [7] At [3.1] of the Guidelines. [8] At [3.1.3].[9] At [3.2.1].[10] At [3.3].[11] At [3.4]. [12] At [5.2.1].[13] At [5.2.6][14] At [5.2.9].
[15] At [5.2.12].