New Zealand: Trade Mark rights in the Haka reviewed – New Zealand

Last Updated: 25 August 2012
Article by Sarah Tallon

regarding the use of a traditional Maori phrase - Ka Mate, Ka Mate

KA MATE, KA MATE - TRADE MARK RIGHTS IN THE HAKA REVIEWED - NEW ZEALAND

In Te Runanga O Toa Rangatira Incorporated v Prokiwi International Limited [2012] NZIPOTM 14 (1 June 2012), Assistant Commissioner Walden was tasked with deciding an opposition1 to the registration of four word marks, each comprising a phrase from the haka Ka Mate. The haka Ka Mate is a traditional Ma-ori dance, often performed as a challenge and, in the words of the Assistant Commissioner, "a powerful reference to New Zealand, which appears to be largely attributable to its performance by the All Blacks rugby team since 1905" (at 48).

Background

The four word marks were important phrases from the haka Ka Mate, KA MATE, UPANE KAUPANE, WHITI TE RA and KA ORA, with each translated as follows:

  • KA MATE: Will it be death?
  • UPANE KAUPANE: Up one step, then up another.
  • WHITI TE RA: Into the sun.
  • KA ORA: Will it be life?

The composer of the haka Ka Mate was Nga-ti Toa Rangatira. The applicant for registration was Te Ru-nanga O Toa Rangatira Incorporated, who was found to have the mandated authority to apply for registration of the marks on behalf of Nga-ti Toa Rangatira's tribe (hence overcoming the ground of opposition based on the applicant's entitlement to claim ownership of the marks).

The opponent, Prokiwi International Limited, is a New Zealand company specialising in the sale of souvenirs and New Zealand themed memorabilia.

In essence the opponent argued that registration of the marks should be refused because the marks had no distinctive character, and that the marks were signs or indications that had become customary in the current language or in established trade practices.

A lack of distinctive character

The applicant was unable to prove that any of the four phrases had distinctive character for the purpose of the Trade Marks Act 2002. The test applies was that of W & G du Cros Ltd's Application2.

Under du Cros, the key to determining whether a mark is distinctive requires consideration of whether "...other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods [and services]".

The Assistant Commissioner held that each of the four marks failed this test, finding that the evidence was clear other traders would legitimately want to use the "entire" wording of the haka Ka Mate, because of its connection with New Zealand heritage.

The Assistant Commissioner then considered whether use of the entire wording of the haka Ka Mate constituted use of each opposed mark, despite it being common ground between the parties that each mark is distinct to the haka Ka Mate as a complete work. Again, the decision turned against the applicant, given:

  • by other traders under the du Cros test does not require the use to be trade mark use.
  • Each mark is a "recognisable phase" of the haka Ka Mate.
  • Honest traders would be hindered in using the haka Ka Mate for New Zealand themed merchandise and commercial sporting events because they would be uncertain whether they were exposed to infringement proceedings.

As such the opponent was successful on this ground of opposition.

Customary use

The issue here was whether, at the date of application, each mark had become customary in the current language, or in established trade practices, in respect of the applicant's goods and services of interest. While the evidence showed that a number of traders had made use of the words of the haka Ka Mate, there was nothing to suggest that at the relevant date each mark had fallen into generic use in respect of the applicant's goods/services.

Concluding comments

With the phrases forming such a significant part of New Zealand's public domain, obtaining a monopoly3 in the words was always likely to prove an uphill battle. However, the Assistant Commissioner made some interesting observations that may assist other trade mark owners faced with the same issue, including:

  • Despite use by a number of traders, each of the marks was unlikely to be viewed as generic for the goods and services in question "...in the same way that 'treat' is in the desert industry".
  • The proprietor of a trade mark in New Zealand is the first person to use the mark in New Zealand, and the threshold for establishing such prior use is low.
  • There was no evidence the applications were merely defensive and the applicant's evidence was sufficient to show an intention to use.

With this in mind, it just may be that key phrases of a new haka are eligible for at least some degree of trade mark protection. However, keeping control of that use is another issue.

Footnotes

1In New Zealand, once a patent application has been accepted, it will be published in the Intellectual Property Office Journal. There is then a three month period where the application may be objected to (or opposed), by a third party. If no opposition is made the patent application will proceed to grant.
Any party that has an interest in the subject matter of the patent can oppose acceptance. The grounds that can be used to oppose a patent application include lack of novelty, lack of inventive step and insufficient disclosure of the invention.
Not all countries have an opposition period on patent applications. For country specific information, contact your IP advisor.

2In most jurisdictions patent applications are subjected to an examination process to determine whether the subject matter is novel and inventive. The terms "application", "pending" or "patent application" are used to describe the status of the application up to grant.

3A patent grants the patentee a monopoly in the invention that is the subject of the patent. The monopoly extends to the exclusive rights to make, sell, use or import the invention.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

James & Wells Intellectual Property, three time winner of the New Zealand Intellectual Property Laws Award and first IP firm in the world to achieve CEMARS® certification.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
James & Wells Intellectual Property
James & Wells Intellectual Property
James & Wells Intellectual Property
James & Wells Intellectual Property
James & Wells Intellectual Property
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
James & Wells Intellectual Property
James & Wells Intellectual Property
James & Wells Intellectual Property
James & Wells Intellectual Property
James & Wells Intellectual Property
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions