Background Information
[ Last Updated 26 October 2005 ]
Contents
Section 177 of the Trade Marks Act 2002 requires the Commissioner of Trade Marks ("the Commissioner") to appoint an advisory committee to advise the Commissioner whether the registration of a trade mark that is, or appears to be, derivative of Māori text and imagery, is likely to be offensive to Māori. This provision is the result of recommendations made to the government through a consultative process.
The process began in 1990 when the then Ministry of Commerce (now Ministry of Economic Development) released a discussion paper titled Review of Industrial Property Rights, with the intention of undertaking a broad-ranging and integrated law review of New Zealand's intellectual property rights legislation. It was subsequently decided that work should be progressed in three stages, encompassing trade marks, patents, designs and other issues.
In 1991 the Ministry of Commerce proposed a number of changes to the Trade Marks Act 1953. In view of concerns expressed by Māori that the 1953 Act did not adequately protect Māori cultural and intellectual property, work on the legislation was suspended in order to undertake consultations with Māori. Four national hui were held in 1994, resulting in the establishment of the Māori Trade Marks Focus Group ("the Focus Group").
The Focus Group met during 1995 and 1996 and produced a background paper (Māori and Trade Marks: A Discussion Paper) which reported on the outcome of the Focus Group's deliberations relating to the registration, as trade marks, of Māori words, symbols, sounds or smells. It was used as the basis of discussion for a series of eight further hui which were held throughout New Zealand.
The work of the Focus Group, and subsequent consultations, formed the basis of recommendations to Cabinet in April 1999, concerning measures to be included in the Trade Marks Act. Included was a recommendation that a consultative group to advise the Commissioner be established. In September 1999 Cabinet agreed that the Trade Marks Act should include a provision to establish what is now referred to as the Māori Trade Marks Advisory Committee.
Policy Rationale
A key rationale for establishing the Advisory Committee is to minimise the risk that the Crown may inadvertently register as trade marks, Māori text and imagery, where registration or use of the trade mark is likely to cause offence to Māori.
In order to achieve this, it is necessary that the Commissioner have access to expert advisers to provide assurance that the decisions the Commissioner is required to make in respect of the registration of trade marks containing Māori text or imagery are made appropriately.
Process
All trade mark applications containing Māori text or imagery will go through a three step process.
Step One
All trade mark applications received by the Intellectual Property Office of New Zealand ("IPONZ") will be assessed to determine whether they contain, or are derived from, Māori text or imagery. Applications identified as containing Māori text or imagery will be forwarded by IPONZ (on behalf of the Commissioner) to the Advisory Committee.
Step Two
If the trade mark does contain Māori text or imagery, applicants will be advised that the Commissioner is seeking the advice of experts (the Committee) to determine whether the mark is likely to be offensive to Māori.
To ensure there are no undue delays to registration, individual Committee members will be required to advise the Commissioner within a set timeframe of the outcome of their "preliminary consideration". If individual members are confident that the registration of the trade make will not cause offence to Māori, IPONZ will advise the applicant accordingly, and the application will then proceed through the usual process of trade mark examination.
Step Three
If individual committee members have initial concerns, the Committee will meet to consider the application and determine whether the trade mark is:
- Not offensive to Māori;
- Not likely to be offensive to Māori;
- Likely to be offensive to Māori;
- Offensive to Māori.
Alternatively, the Committee may advise that further information is required before a determination can be made. In such a case the Committee must advise the Commissioner of this, together with the nature of the further information required. The Commissioner will consider the Committee's advice in such cases and determine whether to advise the applicant to obtain this additional information.
The advice of the Committee is not binding on the Commissioner. The Commissioner will consider the advice taking into account all relevant factors affecting registrability and may come to a determination on the eligibility of an application that is different to the advice received from the Committee.
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