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Feature By Tracey L Mosley

Getting expressive – indigenous cultures and trademarks

As efforts continue to develop protection for traditional cultural expressions, brand owners need to ensure they are tracking the latest legal developments as they develop new trademarks and brands

Imperfect for the task though they may be, the basic concepts of trademark law may provide a route towards recognition and protection for the traditional cultural expressions (TCEs) of indigenous peoples. TCEs, along with traditional knowledge (ie, cultural practices and knowledge handed down from one generation of a group of indigenous people to the next) and genetic resources (ie, natural resources located on, above or below the land traditionally inhabited by indigenous peoples), have increased in profile due to their morally sensitive nature and the prospective changes that their recognition and enforcement may bring to IP laws. This article addresses TCEs in the context of trademark law.

Defining TCEs and trademarks Firmly defining ‘TCEs’ (which are sometimes referred to as ‘expressions of folklore’) is impossible because they represent knowledge that can be sacred and ancient, as well as being rooted in skills or practices handed down inter-generationally, not for the purpose of personal or commercial gain, but rather to sustain identity and support family and community. The World Intellectual Property Office (WIPO) describes TCEs as including “music, art, designs, names, signs and symbols, performances, architectural forms, handicrafts and narratives” – parts of that description easily call to mind trademarks. In its narrowest legal interpretation, a ‘trademark’ is a mark that has been adopted by its use in association with a product or service for the purpose of distinguishing that product or service from the products or services of others. In practice, however, trademarks attract attention, generate wealth, hold goodwill, are registrable as property and can transcend geographic boundaries. Trademarks thrive not on intergenerational inheritance or communal links, but

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Feature: Indigenous cultures and trademarks

on the strategic choices of their owners. knowledge in the public domain, WIPO created the Intergovernmental Is it possible that there are places where TCEs and trademarks Committee on Genetic Resources, Traditional Knowledge and Folklore, can overlap? Places where TCEs can be recorded, used as trademarks which has worked steadily to draft a treaty for the protection of without losing their sacred nature and protected from misuse and genetic resources, traditional knowledge and TCEs. Late in 2011 the misappropriation? committee’s focus turned from theoretical discussions towards text- Just what can constitute the subject of a trademark changes based negotiations, with the aim of creating one or more international constantly. While in the past, technology limited the forms of treaty documents. The resulting texts are to be submitted to the 2012 trademarks to words, symbols or designs that could be depicted on WIPO General Assembly, which will decide whether to convene a surfaces, now one jurisdiction after another has extended protection diplomatic conference. Diplomatic conferences typically serve the to three-dimensional (3-D) marks and colour marks, as well as to purpose of concluding treaty negotiations. marks comprising sounds, holograms, scents, moving images, While awaiting developments on the prospective WIPO treaty, textures and even tastes. various nations and regions have attempted – in some cases successfully It is a curious coincidence that the many new forms of – to develop laws that recognise the existence of TCEs and the need to trademark are spoken of as ‘non-traditional’ trademarks. Are there protect them from unauthorised use or outright misappropriation. TCEs that are non-traditional in form when considered as potential In 2010 the African Regional Intellectual Property Organisation trademarks? Quite possibly, given that TCEs can taken the form of (ARIPO) adopted the Swakopmund Protocol on the Protection of songs or spoken words (sound marks), pre-literary forms (3-D Traditional Knowledge and Expressions of Folklore. The language of marks), carved objects (texture marks), prepared comestibles (taste the protocol is confident and assertive, stating that the ARIPO marks) and dances (motion marks). countries (Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia, The ever-widening definition of a ‘trademark’ increasingly opens Malawi, Mozambique, Namibia, Rwanda, Sierra Leone, Somalia, the door to seeing TCEs as recognisable as the ‘mark’ part of a Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe) are trademark – but what of the ‘trade’ element? “convinced that traditional knowledge, traditional cultures and Whether a party must conduct trade under a mark to effect use folklore are diverse frameworks of ongoing innovation, creativity of a trademark in its own country mostly rests on the definition of a and distinctive intellectual and creative life that benefit local and ‘trademark’ used in that country. traditional communities and all humanity”. The protocol also speaks It can be difficult to escape the notion that the possession of a of being “mindful” of the need to acknowledge and protect the product must transfer by way of sale in order for a mark to be used dignity and integrity in the culture and values of traditional in association with goods. There may be more latitude in using a communities. Importantly, the protocol desires “to preclude the mark for services, where advertising the services may be sufficient, grant and exercise of improper intellectual property rights in… as opposed to someone actually purchasing a service. After all, not expressions of folklore and works and products derived therefrom”. all service trademarks exist for commercial purposes. Many The protocol requires contracting states to provide “adequate represent deeply rooted social values. The names of cherished non- and effective legal and practical measures” to ensure that a relevant profit institutions can be trademarks. In many countries, taxpayer- community can prevent, among other concerns, “the acquisition or funded social programmes are known universally by a trademark. exercise of intellectual property rights over the expressions of Most charities would struggle if existing and potential donors could folklore or adaptations thereof”. Subject to an expression of folklore not separate them, by their trademark, from other causes. remaining in use in accordance with the practices of the community Each jurisdiction is different; holders of TCEs must assess the that created it (even if a specific creator cannot be identified), the registrability of a TCE as a trademark under their own national laws protocol holds the expression of folklore to be enduring. or those of any other jurisdiction where they desire registration. The Pacific Model Law 2002 was not a law imposed by a nation; Trying to establish whether a TCE is a trademark and in use, rather, it was a means by which member countries of the Secretariat particularly for the purposes of registration before a national of the – an international organisation which trademark office and certainly for enforcement against misuse by works to assist Pacific Island countries to achieve sustainable unauthorised users, calls into question the idea of adoption – that is, development – could develop and enact their own laws for the is it possible to pinpoint the moment in time when a TCE became a protection of traditional knowledge and expressions of culture. The trademark? If the TCE is ancient (ie, if it has been handed down Pacific Community comprises 22 Pacific Island nations: American through multiple generations), it may be difficult or impossible to , the , the Federated States of , Fiji, establish the date of creation or adoption, even though the TCE has , , , the Marshall Islands, Nauru, New been transferred through the generations by way of inheritance. Caledonia, , the , , Papua New However, as indigenous peoples innovate, it may be possible to Guinea, the , Samoa, the Solomon Islands, Tokelau, present the results of such creativity to the marketplace and to have Tonga, , Vanuatu and , plus Australia, new TCEs carry both sacred and trademark characteristics, allowing France, and the United States. for their potential registration as trademarks. Extensive guidelines support the model law to assist Pacific While the issue may be finding the capacity, on a jurisdiction-by- Community nations in developing their own national legislation to jurisdiction basis, to find ways to register TCEs as trademarks, or to protect traditional knowledge and cultural expressions, including prevent unauthorised use or registration of a TCE by aligning a TCE through registers and databases of heritage knowledge, and laws with trademark protection, for some aboriginal peoples imposing prohibiting the misappropriation and misuse of TCEs. the limits of trademark statutes on their TCEs may be insupportable. While created within an IP context, from the outset the aim of If so, are there alternatives? the model law was to ensure that the recognition and protection of TCEs would occur on a basis that aligns with existing manifestations Protecting TCEs through legislation of intellectual property (eg, recognition of ownership and the right In response to growing international concerns over the loss of control of exclusive use, including the right to permit others to use of genetic resources and the unwanted placement of traditional identified TCEs). The model law also anticipates innovation and

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It remains to be seen whether an all-encompassing WIPO treaty will prove possible or acceptable. It may be that smaller multilateral instruments, or national efforts such as those made by New Zealand and Panama, will provide a smoother transition to the recognition and protection of TCEs

creativity, including by way of development with permission of the The regulations were unlimited in suggesting what can constitute a TCE owners, as well the prospect of commercialising TCEs. Critical to right recognisable under the law, noting that images, symbols, art, the model law is the idea that benefits derived from the use of a TCE music and traditional artistic expressions were just some of the should be shared by the holders of the TCE. subject matter that could be protected. Importantly, the law states Also in 2002, New Zealand amended its Trademarks Act to include that “the collective rights of indigenous peoples shall neither lapse an absolute ground for not registering a trademark where the nor have a fixed duration”. commissioner of trademarks “considers that its use or registration The Panamanian law does not recognise subject TCEs as actual would be likely to offend a significant section of the community, trademarks, but allows their registration by the Department of including Maori”, the indigenous people of New Zealand. Under the act, Collective Rights and Expressions of Folklore created under the New Zealand has a Maori Trademark Advisory Committee which meets Directorate General of Registration of Industrial Property of the quarterly to address whether any proposed use of a trademark or Ministry of Commerce and Industry. It states that TCEs demonstrate application to register a trademark appearing to be derived from a the “originality and authenticity” of the subject matter and such Maori sign may be offensive to the Maori people. registrations, held collectively by the relevant indigenous group, cannot In July 2011 the long-awaited WAI 262 report addressed a New be adopted as trademarks by others unless authorised by that group. Zealand treaty claim encompassing ownership and use of flora and The Panamanian law and regulations not only recognise the fauna and inventions and products derived from flora and fauna, as existence of TCEs for the purposes of recordal and defence against well as cultural expressions collectively known as taonga (which unauthorised third-party use, but also provide that TCEs may be translates loosely to ‘treasures’, whether tangible or intangible). The “suitable for commercial use”, suggesting that the indigenous Treaty of Waitangi, signed in 1840, signifies the founding of New Panamanian people themselves may contemplate commercial use Zealand, but also guarantees the Maori people rights to their land. of their TCEs – language which appears not to limit such commercial Among the recommendations in the report was replacing the Maori use to being encapsulated in trademarks. Trademark Advisory Committee with a commission empowered to In 1996 the Andean Group (a trade organisation currently hear objections and make binding decisions about trademarks comprising Bolivia, Colombia, Ecuador and Peru) protected the offensive to Maori culture. The report remains under intense study traditional signs of indigenous, African-American or local in New Zealand and elsewhere because of its directional nature in all communities by disallowing their registration as trademarks, unless aspects of intellectual property. the application for registration of such a mark was filed by the In 2001 the US Patent and Trademark Office (USPTO) created the community or with its consent. Database of Native American Tribal Insignia, which uses the data Finally, the RIO + 20 UN Conference on Sustainable Development held inside the USPTO’s main trademark database, but which is held in Brazil in June 2012 brought together government officials, searchable using a designated input. Federal and state-recognised members of the private sector and non-government organisations, Native American tribes may contribute their insignia to the thus bringing into the public eye the historic connection between database on a voluntary basis. Trademark rights do not arise by indigenous peoples and their lands and the need to protect their virtue of submitting insignia to the database; however, US intellectual knowledge. trademark law prohibits the registration of marks for various reasons, including on the basis that a mark suggests a false Looking to the future connection with persons or institutions. It follows that a trademark It remains to be seen whether an all-encompassing WIPO treaty will that is sufficiently similar to a Native American tribal insignia in the prove possible or acceptable. It may be that smaller multilateral database may be rejected on that basis. Entering such insignia on instruments, or national efforts such as those made by New Zealand the database does not preclude registration of the insignia as a and Panama, will provide a smoother transition to the recognition trademark by the rightful owner. and protection of TCEs. Before entering into treaties or protocols, In 2000 Panama brought into force a law entitled the Special IP countries may follow the lead of the United States by developing Regime Governing the Collective Rights of Indigenous Peoples for the registers or databases that can help to prevent trademarks from Protection and Defence of Their Cultural Identity and Their being adopted and registered where they conflict with known TCEs. Traditional Knowledge, and enacted supporting regulations in 2001. However, submission to such registers and databases would not be

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Feature: Indigenous cultures and trademarks

mandatory, thus creating an uneven record of TCEs. expression by not placing it in the public domain. Whatever the most effective path forward, it will likely become Those seeking permission to use TCEs commercially should do so increasingly useful to have domestic registers holding the TCEs of with a realisation that others have recieved an appreciative response. indigenous peoples for defensive reasons. Adherence to a treaty The Zia people of New Mexico hold sacred their Zia sun symbol (which might encourage indigenous peoples to add their TCEs to a domestic can be seen on the state flag), but when asked, have allowed it to be register. However, until such registers or databases exist, it falls to used respectfully for commercial purposes, including by an airline and those creating and adopting trademarks to ensure that their choices to commemorate the 400th anniversary of the City of Santa Fe. In the are original and not knowingly the symbols or distorted symbols of past, the Navajo tribe has given permission to use the tribal name in any indigenous group. association with motor vehicles. In contrast, use of the word ‘Navajo’ Individual goodwill and good taste may prevent a lone proprietor and Navajo-themed graphics without permission for products from improper use of a TCE. In the case of entities that utilise including underwear and an alcohol flask generated offence. designers or consultants to develop trademarks, the source material For many native cultures, traditional knowledge is central to for each new mark under consideration could be reviewed. In general, identity, existence and preservation of culture. TCEs are the outward there is nothing to stop anyone from asking whether a mark might be symbols of that knowledge. Recognition of TCEs provides an a known indigenous word or symbol when contemplating its opportunity not only to protect against unwanted use, but also to adoption, just as they must consider whether a mark is a surname, create a historic record of those expressions, thus cementing their descriptive or confusing with an pre-existing trademark. value and origin and providing the means by which their unwitting Those inspired by native arts or expressions should seek out the misappropriation can be avoided and their misuse addressed. In the source of those cultural representations before using them as end, the need to protect TCEs is both a local and an international trademarks or reproducing them for sale (eg, as designs on material challenge that may necessitate parallel streams of protection, using used for clothing or imagery to be placed on objects). Such IP laws and treaties as well as creating registers or databases of communication demonstrates respect for the source of the TCE and cultural expressions for information purposes. WTR an opportunity to work collaboratively to understand whether use of an expression is acceptable and ensure there is no misuse of that Tracey L Mosley is a partner and trademark agent at expression. Importantly, by seeking out collaboration and Borden Ladner Gervais LLP permission to use a TCE, a person enhances the import of the [email protected]

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Protecting Maori intellectual andFeature culturalFeature property

In a recent opposition hearing, the Intellectual Property Office of Maori; it will relate to ancestral connections, and contain or reflect New Zealand found in favour of Prokiwi International Limited, a traditional narratives or stories”. Taonga works are those considered New Zealand-themed souvenir company, and refused to register most sacred and will always having living kiatiaki. Taonga can be applications by Te Runanga o Toa Rangatira Incorporated (‘the translated as ‘treasures’, and the term encompasses both the Runanga’) for KA MATE, UPANE KAUPANE, WHITI TE RA and KA tangible (ie, land, flora, fauna and cultural works) and intangible (ie, ORA (Te Runanga O Toa Rangatira Incorporated v Prokiwi language and matauranga Maori). The Ka Mate appears to fall International Limited [2012] NZIPOTM 14, June 1 2012). The assistant within this definition of a Taonga work. commissioner considered that the marks had no distinctive The report defines a ‘Taonga-derived work’ as “a work that character because other traders were likely, in the ordinary course derives its inspiration from matauranga Maori, but does not relate of their business, to want to use the marks legitimately in relation to or invoke ancestral connections , nor contain or reflect to their own goods or services. traditional narratives or stories, in any direct way. A Taonga- The words of the applied-for trademarks form part of the Ka Mate derived work is identifiably Maori in nature, but has neither mauri haka, a traditional Maori dance. Authored in the 1820s by Te (lifeforce) nor living kaitiaki”. Rauparaha, a chief from the Ngati Toa tribe, the Ka Mate haka is now Taonga works and closely held matauranga Maori would be known and associated internationally with New Zealand. Te granted the highest level of protection under the proposed Rauparaha’s authorship and Ngati Toa’s role as kaitiaki (guardians) of framework. Any future commercial use of Taonga works and Ka Mate have been acknowledged by the New Zealand government. closely held matauranga Maori would require prior consent from The Runanga is a Ngati Toa representative body and was acting the relevant kaitiaki. However, there would be no limitation on on the tribe’s behalf in pursuing these trademark applications. One private, non-commercial use, provided that such use was not of the stated ambitions of the Runanga was to prevent culturally offensive or derogatory. offensive and unauthorised commercial use of the haka. On the other hand, under the proposed framework, Taonga-derived The Ka Mate haka is widely regarded as being symbolic of New works would be free to be used commercially or otherwise without Zealand and many souvenir suppliers feature words from the haka prior permission, provided that such use is not offensive or derogatory. on their products. It is clear these traders are not making use of The report proposes giving the committee the power to: the haka in an attempt to represent that Ngati Toa is the source of • hear objections that use of a Taonga work, Taonga-derived their products. However, the question remains of whether the use work or matauranga Maori is offensive or derogatory of the Ka Mate haka by souvenir supplies can be considered (objections can be made by anyone); “legitimate”, as concluded by the assistant commissioner, when • hear objections by kaitiaki that a Taonga work or closely held these traders are attempting to gain commercial benefits from matauranga Maori is being used commercially without culturally offensive and/or unauthorised use of the haka. If the consultation or consent from kiatiaki; ruling is correct, it provides further evidence that the existing IP • decide whether a work is a Taonga work or closely held framework is inadequate to prevent the misuse or matauranga Maori; misappropriation of Maori intellectual and cultural property. • provide declaratory rulings on whether the use of a Taonga work or closely held matauranga Maori is permissible; WAI 262 report • identify kaitiaki; The limitations of the current IP framework in relation to Maori • keep registers of Taonga works and kaitiaki; intellectual and cultural property have recently been acknowledged • develop and establish best practice guidelines for the use, by the Waitangi Tribunal. The tribunal is a commission of inquiry care, protection and custody of Taonga works, Taonga-derived established by the New Zealand government to investigate and works and closely held matauranga Maori; and make recommendations on claims brought by Maori relating to • develop and establish best practice guidelines for consultation acts or omissions of the crown which breach the promises made in with kiatiaki and Tohunga (experts). the Treaty of Waitangi (an 1840 treaty between the crown and various Maori tribal leaders). The 262nd claim brought before the Implications of the proposed framework tribunal (known as ‘WAI 262’) covered a wide range of subject If the proposed framework were in place, souvenir sellers wishing matter, including the claim that the crown has breached its to use the Ka Mate haka on their products would need the prior obligations by failing to provide adequate protection under the consent of Ngati Toa to do so. This is because the haka appears to current IP framework for Maori intellectual and cultural property. fall within the definition of a Taonga work and Ngati Toa is already In its report, issued in July 2011, the tribunal agreed acknowledged as its kaitiaki. The proposed committee would have with the claimants in this respect and recommended that an the power to make rulings on objections to unauthorised alternative framework be set up to protect Maori intellectual commercial use raised by Ngati Toa as kaitiaki or objections to and cultural property. offensive or derogatory use. The report proposed varying levels of protection for different The outcome of the hearing discussed above is that Ngati Toa categories of Maori intellectual and cultural property and the is unable to fully perform its role as kaitiaki of the Ka Mate haka by establishment of a new expert committee to adjudicate on disputes preventing culturally offensive and unauthorised commercial use related to the use of Maori intellectual and cultural property. of it. The decision provides further evidence that the existing IP In proposing graduated levels of protection, the report framework is incapable of providing adequate protection for Maori introduced new terms: ‘Taonga works’,’ Taonga-derived works’ and intellectual and cultural property, and it is clear that the ‘closely held matauranga Maori’. establishment of an alternative framework is a workable solution. ‘Matauranga Maori’ translates roughly as ‘Maori knowledge’, However, the road to implementation of the tribunal’s but is broader than that as it refers not only to the knowledge recommendations is likely to be slow. The Runanga have elected itself, but also to the Maori way of knowing. No clear definition of not to appeal the hearing decision, but are considering taking this ‘closely held matauranga Maori’ was given. However, it appears matter to the Waitangi Tribunal. that matauranga Maori will be considered closely held when it attaches to a particular iwi (tribe) or hapu (sub-tribe), and has Lynell Tuffery Huria is a senior associate and Jude Antony whakapapa (ancestral) connections and living kiatiaki (guardians). an associate at AJ Park The report defines a ‘Taonga work’ as “a work, whether or not it [email protected] has been fixed, that is in its entirety an expression of matauranga [email protected]

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