Wednesday, 23rd November, 2011

How the KOHA trade mark dispute could've been avoided

Twelve years ago, a Horowhenua library developed its own cataloguing software, brand name KOHA, and released it as open source software, available for others to use and develop around the world.

The Horowhenua library did not protect the brand name KOHA as a trade mark.  A US company has now applied to register the word KOHA for computer software.  Now the library faces a battle to oppose this application.

Can the Horowhenua library stop the US company from registering the trade mark KOHA?  The short answer is yes.  The Horowhenua library has prior use of the trade mark KOHA in New Zealand, and there is a good chance the library could successfully oppose the application.  But this process is costly.  And now the library is raising funds to oppose the application.
 
How can a US company obtain a trade mark for a Māori word in New Zealand?  Our trade marks legislation does not have a blanket provision that prevents the registration of Māori words in New Zealand.  Instead, a trade mark that features Māori words can only be refused if the use of the trade mark is offensive.  The Māori trade marks advisory committee is responsible for deciding whether a trade mark is offensive or not.  In this case, the trade mark KOHA was obviously not considered offensive.
 
What could the library have done to avoid this situation?  The library could have registered its trade mark when the product was first released.  For a few hundred dollars, this trade mark application would have stopped the US company's application and avoided this situation altogether.
 
What can others learn from this issue?  Before you use a trade mark, make sure you can and do obtain registered trade mark protection.  This will place you in a strong position to stop others from adopting your trade mark.

Lynell was featured on TV3 News (6pm, 23 November) commenting on the KOHA trade mark dispute. Click here to watch the news bulletin.