AJPark

Many retailers are recognising the value of embracing our unique culture in elements of their branding, both for products and as retail store names.  KIA KAHA and ATAAHUA are examples.

By incorporating Maori words, images, or patterns in your brands, you can communicate the ‘New Zealandness’ of your product or service and create a point-of-difference for your business. But you need to be careful.  When developing these brands, it’s important to consider whether the brand you have chosen is likely to be offensive to Maori.  A brand which offends Maori results in negative publicity and makes it impossible for you to register your brand as a trade mark.  Not being able to register your brand as a trade mark will impact on the scope of exclusivity you can secure over your brand.

As with all cultures, Maori traditionally attribute spiritual and cultural significance to certain words, images, and patterns.  Inappropriate use of these words, images, and patterns could therefore cause offence to Maori.  If you are not familiar with Maori culture and the way Maori view the world the risk of inadvertently causing offence needs to be mitigated by involving those with knowledge in your brand development process.

Branding considerations are fluid

Registering a brand as a trade mark gives you more immediate, wider and stronger exclusivity over your brand.

But, like many things, there is a fluidity as to what you can register as a of trade mark.  What has been considered registrable previously, may not be registrable now.

This is particularly the case with Maori words, images and patterns.  In the past, it has been possible to register trade marks that incorporate Maori words, images, or patterns.  For example, the image of a Maori Chief’s face was used in a brand to promote butter and registered for those goods.  Another brand used a Maori Chief’s face to promote Worcester sauce, pickles, and chutney and, again, registered that image as its trade mark.  Yet still another brand used and registered a tiki image to promote ale and stout.  But, increased cultural awareness in New Zealand means that while these brands may have been acceptable for registration in the past, they are unlikely to be acceptable for registration today.

What is acceptable now?

The criteria for assessing the registration of trade marks using Maori words, images, or patterns has changed. 

Under the current New Zealand Trade Marks Act there are specific grounds for not being able to register a trade mark.

One ground means that the Intellectual Property Office (IPONZ) must not register a trade mark if it considers 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. 

What this means in practice is that all trade mark applications received by IPONZ 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 trade marks, including foreign word abbreviations, images, or patterns.  In particular they assess whether a trade mark is capable of being recognised as Maori in origin.  For example, spiral patterns, whether a Maori koru pattern or a pattern from another culture, will be recognised as a Maori pattern in New Zealand and treated as such.

The Maori Advisory Committee

To provide assurance that IPONZ’s decisions about trade marks containing Maori words, images, or patterns are made appropriately, the Trade Marks Act directs the Commissioner to appoint a Maori Advisory Committee. 

The Committee meets approximately four times a year and consists of individuals who have expertise in te ao Maori (Maori world view) and tikanga Maori (Maori protocol and culture). 

The role of the Committee is to help the Commissioner assess whether these particular trade marks are offensive to Maori.  Since the Committee has been advising the Commissioner, very few trade marks have been held by the Committee to be offensive to Maori.

The Committee occasionally advises the Commissioner that certain words are not considered offensive for a wide range of goods or services.  An example is the word KIWI.  Trade marks including the word KIWI will not be sent to the Committee unless the Commissioner considers that the trade mark may be offensive in relation to particular goods and services, or the trade mark includes other Maori text or imagery.  Similar advice has been issued by the Committee about koru logos.

The Committee again takes a pragmatic view when assessing the use of geographical names.  The Commissioner will not refer trade marks containing geographical locations with Maori words to the Committee unless there are special circumstances. 

Areas where Maori imaging should be adopted with particular caution include, alcoholic beverages, tobacco products and bar services.

The current process

If you apply to register a trade mark that includes any element considered to possibly have Maori links, it will most likely be referred to the Maori Advisory Committee and you will be notified that this has happened.  

If the Committee does not consider that your trade mark will cause offence, then your application will proceed through the usual process of examination.  However, if the Committee does have concerns, then it will provide the Commissioner with advice on whether the trade mark is likely to be offensive to Maori. 

IPONZ will then consider the Committee’s advice and will either agree with the Committee and issue a compliance report, or will disagree with the Committee and allow the application to proceed through the usual process of examination.  IPONZ will only very rarely disagree with the Committee.  By seeking advice from the Committee, IPONZ is able to strike a balance between the use of Maori culture in commerce and the desire of companies to create distinctive New Zealand brands.

What can you do?

At the design stage, if you plan to use Maori words, images, or patterns in your brands, you need to consider whether it is likely to offend Maori. 

Consultation with iwi, language institutions, and government departments, for example, could help you determine whether your proposed brand is likely to be offensive prior to using it and applying for trade mark protection.  It could also help you increase the authenticity, depth and story of your brand.

Even if you have already developed a brand that does incorporate Maori words, images, or patterns, but are unsure if it is likely to cause offence, you could apply for trade mark protection.  The examination process will include assessment of your brand by IPONZ.  It may also be prudent to defer using your brand until after you receive IPONZ’s report.

Indigenous branding provides another opportunity to embrace our culture. Adopted correctly, it can add a point-of-difference for your business.

The key to success is to understand the rules that relate to using Maori words, images and patterns, and to get expert advice.

An edited version of this article was published in NZ Retail, April 2010.

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  Corinne Blumsky

  Partner