Kia Ora!Posted on September 24, 2019 in Intellectual Property , Commercial (Tags: Trade Marks, Intellectual Property, Branding, Air New Zealand)
Air New Zealand’s decision to withdraw its trade mark application for its logo “Kia Ora” has highlighted the difficult balancing act of what is and is not appropriate when adopting or protecting a new brand. When an application for a new trade mark is made to the Intellectual Property Office (IPONZ) the mark is examined by a trade mark examiner against the requirements of the Trade Marks Act. There are two broad analyses of the trade mark undertaken by the examiner. The first is to assess whether or not the mark is inherently capable of being registered. Reasons why a mark might not be registrable include:
- Use of the mark would be likely to deceive or cause confusion.
- Use of the mark is contrary to New Zealand law or would otherwise be disentitled to protection in any court.
- The trade mark would be likely to offend a significant section of the community, including Maori.
- The application is made in bad faith (usually this involves issues of ownership of the mark).
- The mark has no distinctive character or is overly descriptive.
The second analysis undertaken involves the mark being examined against other trade marks already applied for to ensure that it does not conflict with trade marks which have priority.
In the case of the Kia Ora application by Air New Zealand, Air New Zealand was not trying to trade the words “Kia Ora” but rather protect the masthead of its inflight magazine of that name. A number of trade marks for both the words “Kia Ora” and also in a stylised format have already been accepted for registration by IPONZ in the past in relation to a wide range of goods and services including clothing, textiles, water safety education, phone cards and water. In the case of the more recent applications, the mark would have been referred to the IPONZ Maori Advisory Committee which examines the marks to ensure that they are not likely to offend Maori.
There was significant public outrage at the suggestion that Air New Zealand could trade marks the words Kia Ora in relation to its magazine. Air New Zealand chose to withdraw its mark in the light of the public reaction. However it is not necessarily the case that the Maori Advisory Committee would have rejected the use of the trade mark simply because the phrase Kia Ora is a Maori phrase. IPONZ own practice guidelines suggest that in order for a mark to be offensive it would need to offend against certain Maori culture and protocols. For example, use of the image of a Maori chief bearing the Moko to advertise Worcestershire sauce, pickles and chutney would be considered offensive when used together.
It is quite possible that Air New Zealand would have succeeded in registering its mark had it not decided to withdraw the application after consultation with Maori leaders. Christopher Luxon has stated that the Government needs to undertake an urgent review of the rules governing the trade marking of words and phrases from the Maori language. Are there some members of our community who have greater legitimacy to use Maori words as trade marks than others? Trade marks are freely transferable once accepted for registration, so it would be difficult to restrict use of a particular trade mark to applicants who have a legitimate reason to use it.