Article  \  4 Sep 2012

It is now well recognised in intellectual property law that the indigenous rights needs to be taken into account at least when securing exclusive registered protection for trade marks in the name of persons or organisations to use in trade.

The recently published WAI262 report confirmed the desirability for the Crown and Maori to work in partnership as far as practicable to ensure recognition of taonga and preserve interests of iwi and hapu balanced against other rights available to others in New Zealand.  More recently, attempts to register as a trade mark phrases of the KA MATE haka has highlighted the unsuitability of a trade mark registration for cultural protection for Maori taonga.  Rather, the exclusivity provided by trade mark registration looks to the inherent nature of trade marks to “distinguishing the goods or services of one person from those of another person” in an economic and a commercial operation – i.e. in “the course of trade”.

It is heartening therefore to see that in view of the proximity of New Zealand to Australia, New Zealand cultural sensitivities are acknowledged by IP Australia. 

Cloudy Bay Vineyards has taken steps to ensure its own Maori trade identifier for its flagship wine TE KOKO does not cause offense to Maori or other groups.  The brand has been chosen in consultation with Maori and has since grown in international repute.  When faced with the similar trade mark TA MOKO accepted for registration in Australia, Cloudy Bay Vineyard lodged an opposition on the basis that the trade mark TA MOKO was confusingly similar, and that in addition it was an identifier of Maori tapu.  Their argument was that the trade mark TA MOKO was likely to be scandalous under s42 of the Australian Trade Marks Act 1995 as the moko (ta moko) is the sacred facial tattoo characteristc of Maori and Maori strength of character. 

Cloudy Bay Vineyards submitted evidence of the confusing similarity of TE KOKO with TA MOKO.  In addition, they had the support of expert evidence of Ms Te O Kahurangi Waaka, the Chair of the Maori Trade Marks Advisory Committee who looked at the extent to which TA MOKO may be “scandalous”.  In Ms Te o Kahurangi Waaka’s evidence, the concerns of Maori in New Zealand and interestingly also in Australia were highlighted.  Particular consideration was paid to the impact of the use of TA MOKO– an indication of tapu – on alcoholic beverages.  In her evidence, Ms Te o Kahurangi Waaka concluded use of TA MOKO on alcoholic beverages was likely to be offensive and scandalous not only to Maori in Australia but also to many other New Zealanders currently living in Australia.

The Registrar at IP Australia issued a decision in favour of Cloudy Bay Vineyards.  TA MOKO was deemed to be confusingly similar with TE KOKO and therefore unable to be registered.  On the point of whether TA MOKO was also scandalous under s 42 of the Australian Trade Marks Act 1995, the Registrar commented : “having regard to the extensive evidence and submissions which have been put before me concerning this issue, I am satisfied that the proposed trade mark “TA MOKO”, in embodying a Maori expression which has particular cultural significance and which accordingly would be likely to be regarded as offensive by members of the Maori community and others, falls within the scope and meaning of “scandalous”…”

As recognised by both the New Zealand and Australia Intellectual Property Offices, indigenous rights are a factor considered and those rights must be balanced against the purpose of trade marks.  Commerce and culture can be mixed to produce a winning formula but care and consideration is needed to ensure boundaries of cultural and related sensitivity are not crossed.  Brand choice is therefore a matter which should be made in partnership with your intellectual property advisor and in line with a clear and focused intellectual property strategy.