The role of the Maori Trademark Advisory Committee and expected updates

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We now live, work and play in a digital and global age. Due diligence is even more important when it comes to pursuing brands with creators and companies operating in a rapidly changing world. An important consideration that is often lost in business assessments is cultural sensitivity. In New Zealand, the Māori Trade Mark Advisory Committee (MTAC) plays an important role in this regard.

Following the assent of the New Zealand Trade Marks Act 2003, the MTAC was set up to “address Maori concerns about the registration of trade marks containing a Maori sign, including images and text” . As an authority, they aim to minimize the risk of people and organizations inadvertently registering intellectual property that may offend Māori.

The most relevant function for this section is set out in section 3.2.1 of the IPONZ Terms of Reference, “review trade mark applications and provide written advice as to the likelihood of offense to Maori”. It should be noted that the Maori language (Te Reo Maori) is a taonga – a versatile word that refers to something precious, as it is commonly used with cultural or spiritual concepts and objects.

When can something be returned to MTAC?

As stated above, the general mission of MTAC is to respond to Maori concerns about potentially offensive marks by reviewing applications flagged by IPONZ reviewers. Under the current regime, an MTAC review of a trademark application will be triggered when an examiner finds that a mark contains Maori words or images.

The trigger threshold is relatively low for words. Trademarks that are/or contain Te Reo words will be forwarded to MTAC for review. This applies to all languages, regardless of whether a word has meaning in another language. If it has a Te Reo meaning or includes a word in part, it will be returned to MTAC.

A common source of references to MTAC are trademarks consisting of Japanese words. The Japanese language is linguistically similar to Te Reo, and there are a number of words that have different meanings in the two languages. For example, Tokotoko in Te Reo can mean “to walk with a stick”. Conversely, “Tokotoko” is a Japanese onomatopoeia for the sound of something walking quickly with small steps.

When it comes to Maori imagery, this is generally broken down into three distinct features by IPONZ:

1. Curvilinear designs (contained by or consisting of a line or curved lines) as depicted in moko (tattoo), kowhaiwhai (herringbone patterns) and whakairo (sculpture);

2. Rectilinear designs (contained by, consisting of, or moving in a straight line or straight lines) as depicted in tukutuku (ornamental panels) or taniko (embroidery); and

3. Designs incorporating Maori objects.

Before applying to New Zealand, any prospective candidate or agent should consider these points. It is prudent to check whether or not a potential trademark contains Maori words or images before applying at the start of the trademark process. Prospective applicants should consider whether it is appropriate to adopt Maori words or images. Education and consultation are important processes in this regard.

There are resources to help you with this process, such as online Maori dictionaries. However, this is more difficult to do with Maori images, particularly in the case of international agents or claimants, as they are likely unaware of what constitutes a Maori design and the contextual uses of such designs. In such a case, it is best to discuss their trademark with a New Zealand-based trademark professional.

What is MTAC’s role in the trademark registration process?

When an application is returned to MTAC, the review usually takes a few weeks, but can take a few months. If MTAC finds that the trademark is not offensive, the applicant will be notified and the application may proceed normally (other objections may need to be addressed).

If the mark is found to be offensive, MTAC may issue a 17(1)(c) objection under the Trade Marks Act 2003. Under this section, the Commissioner must refuse registration if the mark is likely to offend a significant section of the community, including Maori. . For example, granting a candidate exclusive use of a word when that word is considered offensive or inappropriately related to the requested goods and services. A fairly common example is a mark containing Maori imagery intended for use with alcohol.

This is absolute grounds for not registering a trademark and can be difficult to overcome. A candidate may make submissions challenging this finding, but they are unlikely to be accepted.

Where an objection is raised, MTAC may also issue a post-finding recommendation that an applicant approach Taura Whiri i Te Reo Māori, the Māori language commission, to find a more appropriate term for its mark. Of course, you cannot change the mark itself, and if a more suitable word was found, a new application would have to be made.

Expected Developments for MTAC

Revised IPONZ practice guidelines are expected to be released later this year. Details have yet to be released, but we expect to see a general trend towards a more comprehensive framework.

The planned approach is to move from a strict review of paper applications to a broader approach. The idea is to protect Te Reo as taonga under trademark protection. This would include educating claimants and providing counseling services. Although examining trademarks on paper works as an extension of the law, a more comprehensive approach will both address cultural concerns and better educate applicants.

It is expected that the IPONZ guidelines will be updated this year, to include more guidance for those seeking to protect marks that include or contain elements of Maori culture. But what would a comprehensive approach look like? We can look at the recent changes and note the developments there.

Two notable changes where a trend seems to be emerging. First, there have been increasing instances where applicants have been asked to provide more information about the source and adoption of their mark before MTAC issues its decision. For example, did the applicant carry out consultations prior to the adoption of the mark, including the use of Taura Whiri i Te Reo Māori, the Maori language commission, to understand the meaning of the mark? Was a cultural integrity scorecard and framework used when developing the brand? Is the impact of the use (and not only the registration) of the mark taken into account?

Second, when MTAC determines that there is a problem with the use of a Te Reo word, there has been more transparency about the timelines and process followed by the requester.

This shows a trend towards a more comprehensive and holistic system where candidates are better informed before and during the process. It is also likely a move away from MTAC strictly reviewing the paper application towards a view of the trademark as a whole taking into account the applicant’s use.

As it stands, the MTAC fulfills its role in the system perfectly. But examining trademarks solely on the basis of a section of the legislation cannot do much. Going forward, the review will likely be based on whether it is culturally appropriate to use the mark and whether the applicant has undertaken the appropriate process – such as consulting with Iwi. This would echo a trend seen in other New Zealand government agencies where Maori ideas and concepts are embraced.

Ultimately, this gives MTAC more factors to consider outside of the sometimes rigid structure of the legislation. Greater flexibility means it will be easier for Te Reo, Maori designs and other taonga to be protected.

It is important that applicants understand and respect Te Reo and Māori culture as this is the best way to avoid abuse.

There is a clear and ever-present danger of commercial exploitation of culture in the world of brands. The Maori Advisory Committee has an important role to play now and in the future in protecting Maori mātauranga and Maori tikanga (Maori worldview, culture and protocols).

If you want to register a trademark in New Zealand, it is prudent to know all the factors that can affect your trademark registration. If you would like advice on navigation, please contact a member of the AJ Park brand team.

Harvey Henderson

Lawyer, AJ Park

Email: [email protected]

Kate Gidens

Senior Partner, AJ Park

Email: [email protected]

























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