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JPMD 1,3 The trademark protection of country brands: insights from 292 Magdalena Florek Department of Trade and Marketing, Poznan University of Economics, Poznan, Poland, and Andrea Insch Department of Marketing, School of Business, University of Otago, Dunedin, New Zealand

Abstract Purpose – The purpose of this paper is to present the opportunities for and challenges of the trademark protection of country brands. Design/methodology/approach – Insights into the challenges and possibilities of country brand trademark protection are identified using New Zealand as a case study. This evaluation is divided into four sections. In the first section, the relations and differences between brands and trademarks are discussed in the context of the country trademark. Then, possible sources of country trademarks are identified. Next, the benefits and challenges of creating and managing country trademarks are discussed based on the case of the New Zealand Mark. The final section addresses the determiners of country trademark implementation and offers recommendations for country brand managers. Findings – This study makes the case that a nation’s heritage is a rich source of country trademarks. The selection of country trademarks must ensure that the chosen symbol conveys meaning and associations that serve a country’s often broad range of offerings and resonate with a diversity of stakeholder audiences. Practical implications – Governance structures need to be established to manage a country trademark to ensure the country brand’s integrity. This includes a licensing system and protocols to prevent successive governments from altering the brand’s essence which would destroy its equity built up over time. Originality/value – This paper extends the concept of trademarks, once the domain of products and service brands, to the emerging field of place brand management. Keywords Brands, Governance, Trade marks, New Zealand Paper type Case study

Introduction Nation brands, images and reputations are of great interest to many countries’ stakeholders. As Anholt (2006) argues, whatever the reason given, most places seem to believe they have an image problem and they often believe creating a brand will solve it. According to Papadopoulos and Heslop (2002, p. 295), a key feature that distinguishes place brands from “traditional” brands is that “those of nations and other

Journal of Place Management and places are not directly under marketers’ control” since a country is a public domain. Development “Place brands incorporate no clear ‘ownership’, and hence lack of ownership delimits Vol. 1 No. 3, 2008 pp. 292-306 possibilities for brand management” (Blichfeldt, 2005, p. 399). Therefore, controversy q Emerald Group Publishing Limited surrounds whether it is possible to turn a country into a brand (Blichfeldt, 2005; 1753-8335 DOI 10.1108/17538330810911271 Anholt, 2006), and what is more, whether the country brand in a symbol can be legally protected as a trademark. The aim of the paper is thus to present the possibilities of Trademark trademark protection as a mechanism for enhancing country brands. To achieve this protection of aim, the first part of the paper discusses the relations and distinctions between the commercial and legal concepts of brands and trademarks in the context of country brands country trademarks. Then, various sources of national symbols for constructing a country trademark are presented. Next, the challenges of creating and managing country trademarks are identified based on the case of the New Zealand (NZ) 293 Fern Mark. In the final section, practical implications for decision-makers managing country brands are offered and recommendations are made to improve the effectiveness of this ongoing process.

Trademark versus brand Brands and trademarks are terms that are often used interchangeably. The American Marketing Association (AMA, 2006) defines a brand as “a name, term, design, symbol, or any other feature that identifies one seller’s good or service as distinct from those of other sellers. The legal term for brand is trademark”. A trademark is therefore, foremost, a legal concept. The law considers a trademark to be a form of intellectual property while a brand is a much broader marketing concept. According to the OECD (1995) trademarks are an element of “intangible property” that includes rights to use industrial assets such as patents, trademarks, trade names, designs or models, literary and artistic property rights, and intellectual property such as know-how and trade secrets. Specifically, “marketing intangibles” include trademarks and trade names that aid in the commercial exploitation of a product or service, customer lists, distribution channels, and unique names, symbols, or pictures that have a promotional value for the product concerned (OECD, 1995). In intellectual property law a trademark is a unique identifier defined as a word, letter, symbol (logo), number, colour, shape (or, where the legislation of the country allows, sound or smell), or a combination of one or more of these elements. Once a trademark is registered, the w symbol may be legally used with the trademark and the owner has the exclusive right in the defined territory (country where the application was submitted) to use it for any goods or services for which the trademark is registered. Trademark owners can assign or license their registered trademark to another person (IPONZ, 2006). The second difference between brands and trademarks is that a trademark remains valid over time so long as it is renewed and/or used whereas a brand’s profile or positioning may vary over time (Ganguli, 2003). A product or a corporate brand is a much larger concept than a mere trademark, as building a strong brand and establishing the brand equity of a business is a bigger challenge than choosing, registering, or maintaining one or more trademarks (WIPO, 2002). In addition, it is the brand that allows the transformation of essentially functional assets into long-term relationship assets by providing the basis for a psychological connection between the brand and the customer (Haigh, 2006). Finally, a fundamental requirement in trademark law is that a registered trademark designates the owner (“the origin”) of the trademark. A trademark is used to identify the source of a product or service and to distinguish that product or service from other sources (Smith, 1997). This premise causes a lot of problems in using the legal concept of a brand in the case of places. Symbols which have an association with national JPMD heritage or tradition are often seen as something which should be preserved for the 1,3 nation, and that can cause “origin” difficulties for trademark owners (Chan, 2006). In particular, exclusive rights to specific place (country) names are of special concern. For example, as Temes (2003) discusses, the phrase “New York City” probably belongs to the public domain and is considered to be a public entity. However, New York State’s Office of Economic Development owns the rights to the phrase “I love NY” and earned 294 US$322,000 in licensing fees in 2002. A search of the US Patent and Trademark Office reveals that more than 150 organisations already protect New York city as a part of their name (Temes, 2003). The desire to own the right to use place symbols is more and more obvious since franchising and licensing, which are a common way of operating for many industries, and generate profit, are possible to implement because of trademark registration. Brands as well as trademarks provide information about a good’s attributes, a place included. A trademark achieves the highest value and best use in combination with other assets (Seethamraju, 2000). If a brand is a mixture of attributes, tangible and intangible, symbolised in a trademark, the trademark, if managed properly, can create value and influence (Brandchannel, 2006). Thus, it is possible to expect that the combination of a country’s material and immaterial offers, together with a relevant symbol legally protected which encompasses these characteristics, might create a value for customers and, as consequence, for a country.

Toward the country trademark To enhance a country’s brand value its trademark should be based on common country associations and symbols that carry desired perceptions. According to Aaker (1996), brand associations are largely aesthetic and experiential and express a set of values that position the brand. Thus, they are tied with the emotional dimension and meaning of the brand. A nation’s cultural heritage, communicated through symbols, emblems, icons and other popular associations, is a potent part of its identity. Collective identification with these symbols built up over time and shared among generations makes them a rich source of trademarks. The powerful messages communicated by national icons and symbols (such as flags, coats of arms, national anthems, emblematic animals, , personalities) also create the need for management, at the national level, to prevent inappropriate use that could denigrate or dilute its core meaning. This objective must be balanced against the public’s access to, and ownership of, national symbols, as well as the investment made by commercial interests to promote their offerings that use a distinctive representation of the country’s national icons. A distinction can be made between official and unofficial symbols in terms of their protection and use by the general public on one side, and by certain groups on the other side. Those symbols and icons which countries hold as sacred are usually protected since their commercial exploitation would be considered offensive by a large section of the community. In NZ, for example, these official symbols include the flag, coat of arms, national anthem, Waitangi day, ANZAC day and historic graves and monuments (Ministry of Culture and Heritage, 2006). Due to their role as official markers of national identification, there are a range of national and international legal instruments that restrict their use or registration as trademarks by commercial interests. Registration of national symbols, such a representation of members of the royal family, the flag, armorial bearing, insignia, orders of chivalry or state emblems is Trademark discouraged and may be disallowed in New Zealand. In addition, symbols that are, or protection of appear to be, derivatives of Maori signs must be presented to the Maori Advisory Committee to advise whether or not the device will be offensive to Maori (Morgan, country brands 2004; IPONZ, 2006)[1]. Among the unofficial symbols one can name are emblematic animals, plants, the founding fathers, heroes, popular songs, national dishes, dress, national dance, music, monuments and landmarks. Some of these might be rooted 295 in history and tradition very deeply, while others might be created and designed (e.g. modern landmarks). Nations are often engaged in public debate over what is required to establish official national symbol or icon status. For instance, the silver fern that adorns the jerseys of many of NZ’s national sports teams, most notably its rugby team, the All Blacks, has been described as “a national icon or symbol denoting or representing New Zealand and in virtually every walk of life both in this country and overseas” (Williams, 2001, p. 3). Clearly, there are competing interests wanting exclusive control of such symbols for commercial and non-commercial purposes. On the one hand commercial organisations seek exclusive use of national symbols to maximise the returns from its emblematic value to users. On other hand, non-commercial organisations aim to prevent the use of a symbol in a way that would modify its meaning and understanding in the community. Ultimately, access to national symbols, particularly when restricted through trademark registration, needs to balance the public’s right to their use and the right of a particular group to limit access. Attempts by commercial entities, like the NZ , to limit use of the silver fern are strongly resisted since these national symbols are public goods.

Managing the country trademark – the case of New Zealand Sources A country’s unique national assets commonly feature as national symbols to represent the country and its people at home and abroad. NZ’s diverse natural environment is the source of some of its most visible national symbols. Among the most prominent are the fern and the bird. Items and icons from NZ’s cultural heritage are often called “Kiwiana”. The word “Kiwiana” originated in 1956. It was registered as a trademark in 1980, but the originator did not complete the registration, which left the name to become available for general use in NZ (Wikipedia, 2006a). Kiwiana is described as “all the weird and wonderful quirky things from years gone by that contribute to NZ’s sense of nationhood – kiwi identity” (Newzealand.com, 2006). Well-known kiwiana include among others the All Blacks (the national rugby team), bungee jumping (an adrenaline sport), sheep, Buzzy Bee (a children’s toy), chocolate fish (marshmallow covered in chocolate in the shape of a fish), gumboots (calf length rubber boots), the kiwi (the native bird), kiwifruit, L&P (a popular soft drink), paua (the polished shell of the native paua shellfish), pavlova (a meringue dessert), the silver fern (a native ), hei-tiki (a Maori neck pendant), jandals (beach footwear), Marmite (a dark, salty spread), pohutukawa (national flowers), “number 8 wire” (a matter of “making do” or going without), Tip Top (ice-cream, especially Hokey Pokey flavour), and the colour black (Wikipedia, 2006a; Virtualoceania, 2006; Newzealand.com, 2006). In NZ, the silver fern, the kiwi, the All-Black jersey, the unfurling potential of a fern koru (The koru is a scroll shape and is linked to the New Zealand fern plant. The shoot JPMD of the fern has a curled-over tip which unfurls and becomes a fern leaf. To the Maori, 1,3 the koru represents the unfolding of new life or renewal (Virtualoceania, 2008)), the Lord of the Rings films, Colin McCahon’s dark paintings, and the Britten Motorcycle; are examples of the nation’s visual language (Park, 2002). Despite the diversity of images and symbols that internal and external audiences associate with NZ, the fern stands out as warranting special attention 296 due to its prevalence and emergence as an iconic signature of the nation. Thus, the fern was adopted for official nation branding purposes by the country’s lead trade and development agency, New Zealand Trade and Enterprise, to unify the values of the country brand and to promote coherence and consistency in the communication of messages about brand NZ. The source of inspiration for this symbol, the species of medium-sized tree fern cyathea dealbata (silver tree fern, or silver fern), is endemic to NZ and exhibits fronds of about 4 m in length with a silver-white colouration on their undersides. Also endemic cyathea medullaris (popularly known as the black tree fern) appears as an NZ symbol (Wikipedia, 2006b). Very often, the fern in general, regardless of the specific kind, is used to denote association with NZ. Even though it has not yet gained status as a protected national icon, the leaves of NZ are becoming a symbol that represents a set of values that New Zealanders consider themselves to embody – hardiness, honesty, friendliness, and hard working; “it is a symbol of what Kiwis think about themselves” (Warren, 2002, p. 54). Its significance and strength relates to another source of NZ national identity and identification, namely sport and, in particular, the national rugby team (the All Blacks) which feature a fern in their logo. A formidable force as opponents on the field, the All Blacks have built a high awareness and association with NZ’s identity among local and overseas audiences. The owner of the All Blacks brand, the New Zealand Rugby Football Union (NZRFU, often referred to as NZRU), is highly protective of the use of their registered fern trademark and aware of the value that is created through its association with NZ. The team is always referred to as the “New Zealand” All Blacks and the brand positioning refers back to the All Black story, which is very much linked to NZ (Warren, 2002). Aside from the fern used as the focal image of one NZ’s most recognised brands, the All Blacks, both the fern leaf and the koru have a long history of use in NZ commerce, sport and by government authorities. The history of its usage, culminating in its selection as the symbol of NZ is discussed in the next section.

A brief history of the fern as New Zealand’s national symbol The use of the fern as a badge of NZ’s national identity can be traced to the sporting field, where in 1884 the country’s first rugby team to play overseas against wore a gold fern on a dark blue shirt. Four years later the “Natives”, as they were affectionately known, sported a black shirt with a silver fern and in 1892 the NZRU was formally established and made the now familiar white fern on a black jersey their official uniform. The All Blacks trademark featuring a fern was registered in 1905 and has been updated several times since then. In the meantime, the New Zealand Dairy Board registered a trademark “Fern Leaf” with a picture of a fern for use on butter and cheese. By the end of the century, the fern also became established as the predominant badge of the NZ Army by the time of the First World War. The symbol has also been incorporated into the branding of cigarettes by, British American Tobacco Brands Trademark which registered “silver fern” in 1944. Twenty years later, Vinnell Shoes Limited did protection of the same. In the same decade, decimal currency first appeared in NZ with a stylised fern leaf on the 1 cent coin and a kiwi and fern bush on the 20 cent coin. It was also country brands used in the Olympic rings emblem to represent the NZ Olympic Committee in 1979. The analysis of registered trademarks featuring a fern revealed that so far a variety of firms and organisations has utilised the symbol. To comprehend the extent of 297 trademark registrations featuring a fern, a systematic search of the online IPONZ trademark database was conducted. The objective of the search was to identity all the registered trademarks that included either the word “fern” (specifically “fern”, “silver fern” and “Fern Mark”) or a representation of a fern. A total of 182 hits were generated for “fern”, 7 hits for “Fern Mark” and 75 hits for “silver fern”. An additional search was performed for “All Blacks” which generated 107 hits. In the next step, duplicate entries, and trademarks that were filed awaiting registration, expired, or otherwise non-registered were removed from the list. At the end of this process 46 registered trademarks incorporating a fern in some way were identified with the specified product categories for each registration. Some of the most common categories of registrations were food, sporting equipment, clothing, textiles and services like education and travel. In addition to registered trademarks, many fern-like logos are widely used within NZ in all possible industries from tourism to political parties. Among them are: with its curled fern, or koru; New Zealand Wools; New Zealand Lotteries, a government controlled entity; finance companies; engineering and environmental management firms; graphic design and landscaping consultants. These are just a few examples of the many organisations across different sectors, both public and private, that use a representation of the fern as part of their identity. Some of the owners use the TM indicator to protect their “version” of a fern, some however simply incorporate the design in their logos or/and names. Thus, the fern symbol (either in registered or unregistered form) in a sense automatically became a sign of NZ. In turn, an obvious need for its management and protection appeared as private organisations recognised the strength of the symbol. When rugby was professionalised in the mid-1980s the NZRU took several important steps to generate revenue through registration and licensing of the All Blacks name and silver fern device. These first steps to protect and capitalise on a strong brand through the trademark have proven to be highly lucrative for the organisation. Apart from substantial long-term contracts with sponsors such as Adidas (NZ$200 million over 9 years) and the granting of exclusive broadcast rights to News Limited (NZ$50 million a year), their trademarks and images are licensed to a number of individuals and organisations for use on a range of goods and services. The potential benefits of implementing a country trademark as an embodiment of a country brand include the creation of a coherent country image, protection of national symbols, and future value enhancement. These opportunities were recognised by NZ government authorities who undertook various activities as part of a coherent country trademark program. Insights from their efforts are described and evaluated in the next section. JPMD Governmental use of the Fern Mark in NZ 1,3 The iconic fern leaf has been used by NZ governmental organisations and institutions for more than 20 years. For the first time, in 1985, an alternative fern design, the miha[2], was developed to represent New Zealand exporters. The impetus for the logo came from the need to present a consistent visual identity to external audiences in order to enhance awareness and visibility of New Zealand on the global stage. The Export Institute 298 organised a project in 1984 to deal with the perceived “clash of symbols” shown across New Zealand sport, government, culture and business – kiwis, ferns, the Southern Cross, koru, the term “NZ”, the map, etc; with the miha being launched in 1985. This logo was described as positively symbolising “young potential in the South Pacific about to unleash itself on the world” (Smythe, 2005). However, the design was also criticised heavily as projecting an introverted image of New Zealand. As a consequence of the criticism, this proposed NZ brand development program was not implemented. New Zealand’s industry development agency (New Zealand Trade and Enterprise) returned to the fern in the early 1990s as the logo of its “New Zealand Way” campaign (NZW). An early version of the fern logo was registered in 1991 by NZW Ltd A focal point of the branding program, a joint venture initiative of Tradenz (the Trade and Development Board) and the Tourism Board, was a new trademark named “Brand New Zealand”, which was registered in 1992. The brand program was designed to provide a cohesive and tailored image of NZ based on market research of international visitors’ perceptions of NZ’s personality which revealed six characteristics of NZ and its people that the brand would convey. These were “unaffected, honest and open”; “young, active, fresh”; “not knowing the meaning of can’t do”; “resolute”; “quiet achievers”; and “seeking contemporary solutions” (Masterton, 1992). Continued use of the fern as the visual anchor of Brand NZ meant that it could be applied to a potentially unlimited range of NZ products and services. However, the blue and green colourings of the spruced-up fern suggested strong links to NZ’s agricultural sectors and natural environment. Extension of the logo to high-tech products and services was less attainable. Those responsible for the program explained that the major barrier was implementing the use of the symbol. Tradenz developed the brand program to create a “strong national umbrella brand which adds value to the marketing of NZ origin products” (Aldersey-Williams, 1994, p. 31), but could not impose its use on firms. Only firms supporting its brand values and meeting a rigorous assessment for quality and environmental management practices could use it. A redesigned black and white fern logo was introduced in November 1999 that replaced the blue-and-green boxed one. Named “Brand New Zealand” the design was less flowery and bore similarities to the initial black and white boxed fern that had proved to be more popular with organisations, including the Tourism Board since the former seemed to cause an “uncomfortable fit” (The New Zealand Herald, 1999). Approximately NZ$17,000 was spent on researching and designing the new logo which was incorporated with the Tourism Board’s “100% pure” campaign in 1999 and gradually introduced into the export sector by New Zealand Trade and Enterprise in 2000. Other agencies also have a stake and play an active role in moulding NZ’s brand identity – the Ministry of Foreign Affairs and Trade, Education New Zealand, Immigration Service and Creative New Zealand, all adapting the logo, or part thereof, in their communication strategies. A brief summary of the fern’s most important applications through history is presented in Table I. Trademark Date Events Images protection of 1884 New Zealand’s first rugby team to play country brands overseas (the natives) wore a gold fern on a dark blue shirt 1888-1889 “Natives” wore black shirt with a silver fern 299

1892 New Zealand Rugby Union was established and makes the white fern on a black jersey the official uniform

1893 Notice trade-marking the name “Fern Leaf” with a picture of a fern for use on butter and cheese is made in the New Zealand Gazette

1899-1902 New Zealand Army contingents who saw overseas service in the South African war of 1899-1902 are understood to have worn fern leaf badges. The fern leaf becomes the predominant badge in the army by World War I 1905 Use of the stylised version of the fern by the All Blacks

1944 Trademark registered by tobacco company Benson & Hedges (NZ) Limited for use on raw and manufactured tobacco products

1967 Decimal currency first appeared in circulation on 10 July 1967. The 1 cent coin featured a stylised fern leaf enclosing the figure “1”, and the 20 Table I. cent coin featured a Kiwi facing right Chronology of the key and fern bush with figure “20” usage of the fern in NZ (continued) trademarks JPMD Date Events Images 1,3 1979-1980 The silver fern and rings emblem was introduced to represent the NZOCGA in 1979. It comprised the rings and the silver fern in monotone (with the rings the same colour as the fern) and was 300 used by the NZ Team at the 1980 Olympic Games in Moscow

1985 Launch of the miha to represent New Zealand exporters on the global stage

1985-1986 Registration of the silver fern with the words “New Zealand Rugby Union” and the following year the silver fern without the words

1991 The NZRFU registered a trademark with the words “All Blacks” and its own stylised silver fern

1992 On 11 February 1991 the new NZ$1 coin was introduced to replace the NZ$1 note. The coin was designed by Robert Maurice Conly, M.B.E. of Wellington. It features a fern and the kiwi

1991-1992 Registration of the Fern Mark by The New Zealand Way to represent Brand New Zealand

Table I. (continued) Date Events Images Trademark protection of 1994 The flag of the New Zealand Olympic Committee (NZOC) was changed to a country brands white background with the Olympic rings in its five colours. The Silver Fern was rendered in black. As the Commonwealth Games Federation 301 now has a new emblem (introduced in 2001), the NZOC flag is no longer used

1995 Introduction of the Fern Mark to badge the quality assurance scheme of the New Zealand Wool Board. This Fern Mark logo was registered in 1996

1998 Registration of a new, colourful fern logo by The New Zealand Way. The logo had been launched in 1993 as part of the New Zealand brand program to represent New Zealand’s exporters and tourism industry

1999 Registration of the updated and stylish Fern Mark by The New Zealand Way is filed

2002-2003 Registration for an updated “silver fern” with All Blacks filed in 2002 and registered the following year

Table I.

The management of New Zealand’s trademark The present iteration of the Brand New Zealand (Brand NZ) program began in December 2002 and is administered by New Zealand Trade and Enterprise. Its purpose is to promote a richer understanding of NZ in the global marketplace. In particular, JPMD it aims to enhance NZ’s national brand to better differentiate the country 1,3 internationally, support key sectors, and enhance NZ’s established/emerging areas of comparative advantage (Ministry of Economic Development, 2006a). According to the Chair of the Cabinet Economic Development Committee, the value of implementing this national branding strategy for NZ trade and investment is derived from changing dominant perceptions of NZ – from a commodity producer to a source 302 of innovative and creative offerings (Ministry of Economic Development, 2006b). To achieve this ambitious aim, the program has a budget of approximately NZ$3.556 million per annum (Ministry of Economic Development, 2006a). Both New Zealand Trade and Enterprise (NZTE) and Tourism New Zealand (TNZ) own Brand NZ (and its intellectual property including the Fern Mark and URL www. newzealand.com) through a joint venture company – The New Zealand Way Limited (TNZWL). Registration of the Fern Mark was initially filed by TNZWL in November 1999 and was recently renewed till October 2016. The structure and ownership of Brand NZ is shown in the Figure 1. Under the umbrella of the Fern Mark, NZTE apply the slogan “New Zealand New Thinking”, which was registered in 2004; and TNZ apply the “100% pure” positioning statement. According to the Ministry of Economic Development (2006a), these two statements are viewed as complements in building the overall brand personality for NZ – “clean, green and smart”. More specifically, the brand messages that underpin the New Zealand New Thinking proposition are a new Pacific nation, an entrepreneurial spirit, globally connected, resourceful, and space and openness. The brand values underlying these messages which were identified through the brand development process are open, authentic, resourceful, collaborative, creative and free.

New Zealand (fern mark)

New Zealand 100% Pure New New Thinking Zealand

Interaction with private sector Other through sector government organisations, agencies companies and Figure 1. business people The New Zealand Way governance structure Source: Based on Ministry of Economic Development (2006a) Alongside the Brand NZ program is the Brand Partner program which was first Trademark launched in June 1993. Running for over a decade in different forms, the program is protection of also designed to raise awareness of the Fern Mark through licensing it to public and private sector organisations for a specified period of time (usually a 3-year contract). country brands Unlike the Brand NZ program, which promotes general awareness of the Fern Mark by endorsing events and promotional opportunities, the Brand Partner program permits users to place the Fern Mark on their products and marketing collateral. Previous 303 programs allowed users to become licensed to use the Fern Mark if they succeeded in winning an export award, were part of an export network, or met a set of criteria set out in an application process. Users that take the latter approach are required to pay NZ$500 to offset assessment costs of the accreditation process, based loosely on the Baldridge quality assessment criteria, as part of their application. Up to 200 companies, mostly in the food and beverage sector, were licensed to use the Fern Mark in the previous Brand Partner program. Following a review of Brand NZ in January 2006, this sub-program is being repositioned in line with the New Zealand New Thinking statement and is due to be re-launched in 2007 to feature more companies from ICT, biotechnology and creative industries. TNZ apply the “100% pure” slogan to the Fern Mark in a new logo for their tourist operators’ quality assurance scheme, Qualmarkw, launched in July 2002. Also, the silver fern links quality assurance with the Visitor Information Network, creating a recognisable and unified brand for the visitors. As with other famous NZ icons, like the kiwi, use of the fern has multiplied and is entering an “already crowded space”. But, according to NZTE’s marketing manager, “we should only have one icon we go for, and that’s the fern” (Eaton, 2006, p. 9). To protect the Fern Mark from use in overseas markets by other organisations, the Brand NZ Fern Mark (logo) has been registered in NZ, Australia, Germany, Japan, Singapore, Taiwan and the USA. Protection has been applied for in Hong Kong and the European Union (TNZ, 2005).

Conclusions, implications and recommendations As the importance of building and managing country brands grows, the development of appropriate protocols and systems for protecting and managing country brands becomes crucial. This is a challenging task for managers as legal protection and the process of managing country brands is difficult due to their complexity and distributed ownership. This paper has contributed to the issue by extending the concept of trademarks, once the domain of products and service brands, to the emerging field of place branding and the specific case of country brand management. The NZ experience was examined to demonstrate the application of the trademark to the country brand management context. As the evidence shows, the design and development of an appropriate trademark for NZ featured competing interests and national symbols to represent the values of the nation. It might be assumed that this is a permanent feature of any country’s trademark decisions derived from the country’s former associations, history, identity and the previous trademark-related actions of different parties. NZ itself is rich with national symbols that accord with internal and external audiences and have been adopted by various organisations over time to convey a sense of “New Zealandness”. One symbol in particular, the fern, has featured constantly in the iconography of NZ in various arenas – sports, commerce, public administration, and international relations; JPMD finally becoming the trademark for NZ trade and enterprise, education and tourism. 1,3 Other organisations, such as the All Blacks, adopted the symbol before its official national use to represent some of NZ’s major industries internationally. As such, it is misleading to classify NZ’s brand architecture as a proactively managed branded house strategy, as previously suggested (Dooley and Bowie, 2005), since this arrangement is a retrospective placement of corporate, sectoral and national brands to fit the typology, 304 rather than a depiction of the actual hierarchy of these brands (for example, the All Blacks brand is not a brand extension of the NZ Brand, nor does it fit within a sectoral sub-brand). Therefore, the former existence and usage of country symbols (registered or not) makes it more difficult to design an umbrella trademark for many countries’ offerings and then extend the trademark into new categories. Very often, it is the bottom-up approach that should be used to find the most relevant symbol for national branding purposes (such as rugby and the All Blacks in the case of NZ). At the same time, the symbol chosen should be broad enough in its meaning and associations to serve and cover a range of different country product and service offerings. However, the intuitive acceptance of former symbols presents other challenges, since the icon itself might be too popular or too broadly used to distinguish the country brand. Consequently, the overuse of national symbols, such as the fern, could dilute the impact of the brand associations embodied in individual brands. The distinctiveness and uniqueness of the brand may be lost through misuse (inappropriate applications) and overuse (proliferation of applications). Therefore, ownership and protection of country trademarks are central issues that need to be made explicit with appropriate governance mechanisms in place to ensure the integrity and longevity of the country brand; including an appropriate licensing system and governance structures to prevent successive governments from altering the essence of the brand which would destroy its equity built up over time. Also, the country trademark should be registered in advance in all markets where it will be used to protect it from misuse. Next, appropriate governance structures and systems should be established, as well as cooperation between government agencies and departments, together with companies that promote official and unofficial versions. Consequently, the country trademark, if properly selected, applied and managed, can become a prominent, protected signifier of country brand identity on the world stage.

Notes 1. Despite these protective mechanisms, NZ cultural icons are not adequately shielded from use or exploitation by unauthorised users. Several cases involving the objectionable use of Maori images and Haka (Maori dance) have brought attention to the inadequacy of the existing regulatory regime (New Zealand Press Association, 2006). 2. The miha was the name given to this symbol, which is the Maori word meaning young fronds of fern, as represented by the uncurling frond (Krupa, 1996).

References Aaker, D.A. (1996), Building Strong Brands, Free Press, New York, NY. Aldersey-Williams, H. (1994), “Cities bid to make their marque”, Management Today, 31 August, pp. 30-3. American Marketing Association (AMA) (2006), “Dictionary of marketing terms”, available at: www.marketingpower.com/mg-dictionary.php (accessed 5 July 2006). Anholt, S. (2006), “Why brand? Some practical considerations for nation branding”, Editorial, Trademark Place Branding, Vol. 2 No. 2, pp. 97-107. protection of Blichfeldt, B.S. (2005), “Unmanageable place brands?”, Place Branding, Vol. 1 No. 4, pp. 388-401. country brands Brandchannel (2006), “Brand careers – glossary”, available at: www.brandchannel.com/ education_glossary.asp#B (accessed 10 August 2006). Chan, K. (2006), “National symbols as trade marks, and practical advice for owners”, Bulletin, 4 January. 305 Dooley, G. and Bowie, D. (2005), “Place brand architecture: strategic management of the brand portfolio”, Place Branding, Vol. 1 No. 4, pp. 402-19. Eaton, D. (2006), “Kiwi no more a flyer for New Zealand”, The Press, 8 March, p. 9. Ganguli, P. (2003), “Brand management: role of trademarks, collective/certification marks, geographical indications and industrial designs as marketing tools for EMEs: practical experience and case studies”, paper presented at the WIPO/QCCI Sub-Regional Seminar on SMEs for the Member States of the Gulf Cooperation Council (GCC), 14-15 October. Haigh, D. (2006), “Brand valuation: what it means and why it matters, brands in the boardroom”, IAM Supplement, No. 1, available at: www.brandfinance.com/Uploads/pdfs/ BrandValuation_Whatandwhy.pdf (accessed 10 August 2006). Intellectual Property Office of New Zealand (IPONZ) (2006), Introduction to Trademarks, Ministry of Economic Development, Wellington. Krupa, V. (1996), “Nature in Maori metaphor”, Asian and African Studies, Vol. 5 No. 1, pp. 14-27. Masterton, A.M. (1992), “‘New Zealand Way’ program to foster brand image”, Tour & Travel News, Vol. 47 No. 262, p. 47. Ministry of Culture and Heritage (2006), “NZ emblems: symbols of New Zealand’s national identity”, available at: www.mch.govt.nz/emblems/index.html (accessed 10 August 2006). Ministry of Economic Development (2006a), Evaluation of Brand New Zealand, Ministry of Economic Development, Wellington. Ministry of Economic Development (2006b), Report Back on Recent Evaluations of New Zealand Trade and Enterprise Programs, Office of the Minister for Economic Development, Wellington. Morgan, O.J. (2004), “Protecting indigenous signs and trade marks under the New Zealand Trade Marks Act 2002”, Working Paper No. 02/04, Intellectual Property Research Institute of Australia, University of Melbourne, Melbourne. Newzealand.com (2006), “Kiwiana – celebrating our national identity”, available at: www. newzealand.com/travel/about-nz/culture/culture-kiwiana.cfm (accessed 10 August 2006). New Zealand Press Association (2006), “Fiat’s use of haka in car ad labelled culturally insensitive”, available at: www.tmcnet.com/usubmit/2006/07/03/1702838.htm (accessed 10 August 2006). OECD (1995), Draft of Part II, Transfer Pricing Guidelines for Multinational Enterprises and Tax Administration, OECD, Paris. Papadopoulos, N. and Heslop, L. (2002), “Country equity and country branding: problems and prospects”, Journal of Brand Management, Vol. 9 Nos 4-5, pp. 294-314. Park, T. (2002), “Open letter – a new brand for New Zealand or a New Zealand visual language?”, NZEDGE, April/May, available at: www.nzedge.com/features/nz _visual_language.php (accessed 10 August 2006). Seethamraju, C. (2000), “The value-relevance of trademarks”, doctoral dissertation, Stern School of Business, New York University, New York, NY. Smith, G.V. (1997), Trademark Valuation, Wiley, New York, NY. JPMD Smythe, M. (2005), “The creative continuum: tracing the trajectory of New Zealand design”, available at: www.betterbydesign.org.nz/readingandlinks/features/thecreativecontinuum/ 1,3 (accessed 20 December 2005). Temes, J. (2003), “Trademark town”, Crain’s New York Business, Vol. 9 No. 35, pp. 23-5. The New Zealand Herald (1999), “New brand for NZ goods”, 11 December, p. 7. Tourism New Zealand (TNZ) (2005), Annual Report 2004-2005, TNZ, Wellington. 306 Virtualoceania (2006), “Virtual New Zealand, Kiwiana”, available at: www.virtualoceania.net/ newzealand/culture/kiwiana/ (accessed 10 August 2006). Virtualoceania (2008), “Virtual New Zealand, Koru”, available at: www.virtualoceania.net/ newzealand/photos/flora/koru/ (accessed 15 July 2008). Warren, S. (2002), “Branding New Zealand competing in the global attention economy”, Locum Destination Review, Winter, pp. 54-6. Wikipedia (2006a), “Kiwiana”, available at: http://en.wikipedia.org/wiki/Kiwiana#Kiwiana (accessed 10 August 2006). Wikipedia (2006b), “Ferns”, available at: http://en.wikipedia.org/wiki/Fern (accessed 10 August 2006). Williams, S. (2001), “The New Zealand Rugby Football Union (Incorporated) v Saint Publishing Limited”, unreported, High Court of New Zealand, 2 October. WIPO (2002), “The role of trademarks in marketing”, WIPO Magazine, February, pp. 10-11.

Further reading Miles, S. (2006), “National symbols as trade marks, and practical advice for owners”, Simkins’ Early Warning Bulletin, available at: www.simkins.co.uk/ebulletins/sjmTradeMarks.aspx (accessed 10 August 2006).

Corresponding author Magdalena Florek can be contacted at: m.fl[email protected]

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