Insight

What do you need to consider when using Indigenous words and concepts in trade marks?

A recent decision from the Australian Trade Marks Office raises questions about how to ensure indigenous cultural and intellectual property are protected from misuse when used in trade marks for commercial purposes.

The decision related to an application (No. 1762487) by the corporation organising this month’s Commonwealth Games on the Gold Coast to register the trade mark BOROBI, the official name of the Games’ surfing koala mascot.

The application was opposed by Jabree Ltd, a registered cultural heritage body for the indigenous Yugambeh people of the Gold Coast region. Jabree was established in 2010 to assist the Yugambeh people with a native title claim – and more broadly it claims to manage and protect the cultural heritage of the Yugambeh people.

The decision highlights two matters:

  1. Should there be a special process or procedure during the examination process that requires input from representatives of Indigenous Australian communities as to whether trade marks that consist of indigenous words, symbols, concepts or ideologies are contrary, or culturally offensive, to the interests of these groups; and
  2. The case reflects the difficulties in following a consultative process outside of the trade marks registration system which meets the needs and requirements of the relevant communities at large.

Examination procedure and Indigenous trade marks

The word ‘Borobi’ originates from the Yugambeh language and means 'koala' in English.

In Australia, the Trade Marks Act 1995 (“the Act”) requires an Examiner to consider whether a trade mark may be offensive or scandalous to a sector of the community, including the Indigenous Australian community in part or at large.

While offering some protection against the misuse of Indigenous intellectual property, the legislation does not involve a requirement that the applicant of the trade mark prove that it has obtained the consent, or at least consulted with, members of the relevant Indigenous group regarding its use.

Furthermore, when considering if a trade mark is offensive to Indigenous Australians, can a provision of this nature be truly effective if the determination is not considered from the viewpoint of one or more people who are engaged, educated and/or immersed in the life and culture of Indigenous Australians?

Seemingly innocuous words and symbols can often have a spiritual or cultural significance to an Indigenous community which is not obvious to a person who does not have a good cultural knowledge or understanding.

In New Zealand, a trade mark containing Māori words and symbols must pass through a Māori trade mark advisory committee which advises the Commissioner of Trade Marks 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.

The committee came into existence in 2002 following the enactment of the New Zealand Trade Marks Act 2002. The requirement for the committee and its function forms part of the trade mark legislation in New Zealand and overall, has been largely successful.

Trade marks which contain Māori words and symbols are also given a special ‘Māori’ trade mark type status or classification on the Register. Unique image identification codes (as part of the Vienna Classification system) which are specific to common Māori symbols or images are also included for figurative marks.

As Australia is larger than New Zealand with many more language dialects, it could reasonably be assumed that a system like New Zealand’s may be harder to develop in Australia – but surely not impossible?

It is also important to note that even protective measures such as that taken in New Zealand are not exhaustive and are open to interpretation. But the opposition process can be used to capture gaps or inconsistencies that arise.

Overall, the benefit of an approach like that taken in New Zealand is that at the very least, it provides a minimum standard and puts in place a legal framework to ensure that Māori are adequately considered when granting individual IP rights. An objective and independent consultative measure such as that undertaken in New Zealand would likely benefit Indigenous Australians in similar ways.

The Opponent provided statements from 16 different Indigenous language groups across Australia who were aggrieved by the Applicant’s use of the trade mark and the perceived lack of appropriate consultation.

The Opponent stated that contrary to Section 42(a) of the Act, the trade mark caused scandal and offence within indigenous communities and specifically:

“As a result of the actions of the Applicant, we lose esteem, we lose respect. In effect we become the laughing stock of Indigenous Australia because we have lost control of our culture and we have lost control of our heritage”.

Ultimately, the Delegate decided against the Opponent on the issue of whether the trade mark was scandalous stating that “it is difficult to see how such a word used as a trade mark in relation to the Applicant’s goods and services would be likely to offend or scandalise in a way contemplated by the Act” – that being that the trade mark contained scandalous matter to a level which would be regarded as shameful, offensive or shocking.

The Opponent’s claims that registration of the trade mark was also contrary to law, namely the Racial Discrimination Act 1975, were also dismissed for similar reasons on the basis that the trade mark did not meet the threshold of being likely to “offend, insult, humiliate or intimidate another person or group of people”.

While a similar standard as to the likelihood of offence in accordance with the trade mark legislation is applied in the New Zealand context, it requires this to be considered from the viewpoint as to what is, or may be, culturally offensive or inappropriate. This often requires different considerations than the considerations undertaken in determining what is offensive in broader society – and as previously stated, may not be obvious to a person who lacks the relevant cultural awareness.

This article is not intended to consider the correctness of the outcome, but rather illustrate the procedural differences between the two nations when it comes to indigenous intellectual property.

Consultation with Indigenous communities

A broader issue arose from the case surrounding consultation.

The dispute between the parties arose largely through disagreement as to how the Yugambeh people should have been consulted over the Applicant’s desire to use the BOROBI word and more broadly, the representation of the 'Borobi' character and his 'story' which the Opponent claimed imitates an artificial Dreamtime connection to the traditional land of the Gold Coast region. More information about the mascot can be found here.

The Opponent claimed that the Yugambeh people had an approved decision-making process that was carried over from the 2010 native title claim. The Applicant did not use this process and the Opponent claimed that the consultation that was undertaken by the Applicant was “merely a display” as it had already decided to use the trade mark as the name for the mascot before it began.

The Opponent argued that registration of the trade mark should be refused on the grounds of Section 43 of the Act and Section 42(b) for being contrary to law, specifically Section 29(1)(h) of the Competition and Consumer Act 2010. Their claim was essentially that the Applicant's conduct amounted to a misappropriation of the Yugambeh people's intangible cultural heritage and that a connotation existed in the trade mark that the Applicant had the approval, or was affiliated with, the Yugambeh language group people when in fact it was not.

The Applicant argued that it had followed an appropriate consultation process - two advisory committees were established which included recognised community elders and traditional custodians from the Yugambeh language group people.

These committees were tasked with providing advice and support to the Applicant regarding many aspects of the Games, including intellectual property. The Opponent was invited to participate in the Applicant’s consultation but declined because it did not involve the alleged “approved” process as previously mentioned.

The Applicant claimed that it obtained support and endorsement from these committees to the use of the BOROBI trade mark as the name of the mascot.

In the end, and in noting the issue was a sensitive one, the Delegate said:

“even though it was not required to do so the Applicant did seek consultation with the Yugambeh people about the adoption and use of their word ‘Borobi’ as the name for the Games mascot in a respectful and inclusive manner albeit not in a way the Opponent recognises”.

Did the trade mark infer an affiliation with, or the approval of, the Yugambeh people?

On finding in favour of the Applicant, the Delegate noted:

“the area of law is clear that the filing of a trade mark application does not require consultation with any party. To the extent that the Applicant has made representations those representations can only be that the Applicant formed two committees which consisted of Indigenous Australians who it consulted with in relation to the Games and the naming the Games mascot ‘Borobi’. I am satisfied that those representations are neither misleading as to sponsorship, affiliation, or approval…”.

The Delegate went on to say in answering the Section 43 ground of opposition:

“I find that the Trade Mark does not create a connotation that the traditional owners of the Gold Coast Regions, being the Yugambeh people, have somewhat endorsed, approved or provided a license for the use of their language in the promotion of the Games and its associated proposed commercial and cultural activities. However, in case I am wrong in this and such a connotation may possibly exist in the minds of relevant consumers, deception or confusion is not the likely result as I have before me evidence from the Applicant pointing to a form of endorsement from the representatives of the Yugambeh people”.

In many indigenous cultures around the world, cultural words, symbols, customs, and properties are owned by the community at large - in other words, community or collective ownership as opposed to individual property rights that are often associated with many types of property, including intellectual property rights.

Therefore, it can be difficult to establish a common ground with indigenous communities surrounding the use of cultural properties for commercial purposes. The Borobi dispute illustrates the complexity surrounding intellectual and cultural property in indigenous communities.

Despite the complexities, there is a need for businesses to handle the adoption of trade marks using indigenous words and imagery with sensitivity and inclusiveness with the relevant indigenous communities.

A review of the trade mark examination practices and legislative requirements for consultation would likely help both businesses and local indigenous communities streamline this process and obtain more certainty in this area.