Protecting intellectual
property with a Māori
cultural element
User Guide
Disclaimer: The information provided in this intellectual property guide is intended to provide general
information to the public and every effort has been taken to ensure that the information contained in it
is accurate. However users of the guide are advised that the information provided does not replace or
alter the laws of Aotearoa-New Zealand and any statements made or views expressed in this guide do
not necessarily reflect Aotearoa-New Zealand government policy. Readers should seek specific advice
from a professional qualified in the relevant subject area before undertaking any action following the
information received in this guide.
ISBN (online) 978 0 947497 96 5
Cover image: Spiral carving, New Zealand, credit: One Shot/PNZ/Stephen Roke
MB13524 JUNE 2016
Contents
Introduction 2
Māori Advisory Commiees 6
Cultural considerations
in relation to mātauranga Māori 9
Trade marks and
mātauranga Māori 17
Patents and mātauranga Māori 23
Design registration and
mātauranga Māori 26
Plant variety rights and
mātauranga Māori 29
Copyright and mātauranga Māori 31
Geographical indications
and mātauranga Māori 35
Trade Secrets and
mātauranga Māori 37
Enforcement of intellectual
property rights 38
Tips for an effective
intellectual property strategy 41
Foreword
Intellectual property rights can be key economic assets for businesses. Used strategically, they
can play a leading role in realising the full financial potential of New Zealand’s creative and innovative
industries.
He Kai Kei Aku Ringa, the Crown-Māori Economic Growth Partnership, sets out the government’s
strategy and action plan for economic development in the Māori business sector. As the government
agency responsible for the granting and registration of intellectual property rights, the Intellectual
Property Office of New Zealand (IPONZ) recognises the unique social and cultural significance of
Māori knowledge, innovations and cultural practices. IPONZ contributes to He Kai Kei Aku Ringa by
assisting Māori businesses, communities and organisations to identify, manage and protect their
intellectual property.
New Zealand is internationally recognised as a leader in the area of indigenous intellectual property.
The First International Conference on the Cultural and Intellectual Property Rights of Indigenous
Peoples was hosted in New Zealand in 1993, and nations continue to look to us for guidance
as we work to protect Māori cultural heritage. Our trade mark and patent laws are recognised
internationally for providing for the establishment of Māori Advisory Commiees to advise the
Commissioner on whether proposed intellectual property would be offensive to Māori, or contrary
to Māori values, if approved.
This guide is designed to assist Māori individuals, communities, organisations and enterprises to
gain an understanding of intellectual property rights in order to manage effectively the creativity
and innovation taking place in the Māori economic sector.
This guide is also designed for others, both in New Zealand and internationally ‒ who wish to
register intellectual property with a Māori element, but who may lack knowledge of the cultural,
spiritual and economic values associated with mātauranga Māori (Māori knowledge), and of the
government policies in place to protect it.
Mandy McDonald
Commissioner of Patents, Trade Marks, Designs and Plant Variety Rights
Karen Te O Kahurangi Waaka
Chair, Trade Marks Māori Advisory Commiee
Pare Keiha
Chair, Patents Māori Advisory Commiee
Overview
This publication gives guidance on the special considerations in New Zealand around the use and
registration of intellectual property that contains an element of Māori culture, for example, a Māori
word, image, or design.
It will assist Māori communities and businesses to understand how intellectual property rights work
as commercial assets, and give them guidance on how they can use unique aspects of Māori culture
appropriately to create business opportunities, aract investment, and increase profits.
It also explains the purpose and role of these special considerations in the protection of mātauranga
Māori ‒ the values, concepts, meanings and traditional knowledge of Māori culture ‒ and shows
people from diverse cultural backgrounds how they can use Māori cultural elements in their
intellectual property without causing offence.
Intellectual Property Office of New Zealand
The Intellectual Property Office of New Zealand (IPONZ) is the government agency that manages the
granting and registration of intellectual property rights in New Zealand. IPONZ is a business unit of
the Ministry of Business, Innovation and Employment (MBIE).
The IPONZ website offers extensive information on intellectual property, designed for a wide range
of users, from those with lile knowledge of intellectual property, to businesses already managing
multiple intellectual property rights, and intellectual property professionals such as business
advisors or patent aorneys.
IPONZ has made its services easy to use, and is the first intellectual property office in the world to
do all of its business online, including receiving and processing applications for intellectual property
rights. Once applications are received, they are assigned to an IPONZ staff member who is available
to answer any questions not covered by the general information available.
This document will at times suggest that the reader go to the IPONZ website for more information
on a particular topic. The IPONZ website address is www.iponz.govt.nz.
The Commissioner
New Zealand Patents, Trade Marks, Designs and Plant Variety Rights laws require the government to
appoint a Commissioner to carry out specific roles in relation to these intellectual property rights. All
final decisions about whether applications for intellectual property rights are approved are made by
the Commissioner. The communications that tell applicants whether their intellectual property right
has been granted or approved will come from the Commissioner.
Introduction
Intellectual property and mātauranga Māori
Mātauranga Māori is a unique New Zealand taonga (treasure), central to our national identity. Most
commonly translated as Māori knowledge, mātauranga Māori is a broad term referring to the body of
traditional knowledge that was first brought to Aotearoa–New Zealand by Māori ancestors. It is a living
body of knowledge passed from generation to generation, and so it may also refer to modern-day
Māori values, perspectives, and creative and cultural practices, including te reo ‒ the Māori language.
There are some aspects of mātauranga Māori, such as traditional knowledge, that are difficult to
protect using registered intellectual property rights. For example, to be registered or granted, a
design or a patent must be new and original, but inventions derived from traditional knowledge
may have developed over centuries. Also, most intellectual property rights are owned by individuals
or a commercial business, while traditional knowledge belongs to a collective group.
Despite these issues, it is possible to identify elements of Māori culture that present unique
branding opportunities and potential commercial benefits that can be protected through intellectual
property rights. These intellectual property rights can help Māori individuals, organisations and
businesses control the commercial use of their cultural expressions and traditional knowledge,
to ensure that mātauranga Māori is recognised and respected.
It is also important that people with diverse cultural backgrounds understand how they can borrow
and use aspects of Māori culture in their intellectual property in appropriate and respectful ways.
New Zealand’s patent and trade mark laws require the government to set up special processes for
the protection of mātauranga Māori in the granting of intellectual property rights. These processes,
discussed in detail in the next chapter, empower the Commissioner to prevent the registration of
trade marks and designs, and the granting of patents, that would be considered offensive to Māori,
or contrary to Māori values.
Māori cultural elements in intellectual property
A Māori cultural element is some aspect of the intellectual property that reflects, or is taken from,
mātauranga Māori. A Māori cultural element could include:
› a Māori word or design
› indigenous (native to New Zealand) plants or birds
› Māori music or dance
The Māori cultural element may be a small part of the intellectual property (such as the use of a Māori
design or word on a product not specifically related to Māori culture), or it may involve the entire
intellectual property (such as recording or performing a Māori song or dance).
Types of intellectual property
There are seven types of intellectual property discussed in relation to mātauranga Māori in this
guide: trade marks, patents, designs, copyright, plant variety rights, geographical indications,
and trade secrets.
IPONZ manages the registration of trade marks, patents, designs, and plant variety rights.
The registration of geographical indications by IPONZ is scheduled to begin in 2016. Copyright
and trade secrets do not need to be registered, as they belong automatically to the owner of the
creation (for example, the author of a book, or the owner of a particular drink with a unique flavour).
Applications for Trade marks and patents have a special advisory process for the consideration
of Māori cultural elements by a Māori Advisory Commiee, discussed in the next section. Design
applications may also go through the advisory process set out for trade marks.
Plant variety rights do not have a separate process for considering Māori cultural elements.
The table on the next page shows the main types of intellectual property rights, what they protect
(with examples), and their duration.
Types of
intellectual
property
What it protects Duration
Registered by IPONZ
May be referred to
a Māori Advisory
Committee for
consideration of Māori
cultural elements.
Trade Marks Unique symbols, words, or names that are part
of a brand or logo a business uses to identify its
goods and services in the marketplace.
Examples: logos used on goods and services
10 years
(renewable
indefinitely)
Patents New and non-obvious inventions, products,
and processes.
Examples: manufacturing processes, chemical
compounds, pharmaceuticals, textiles, and food
processing equipment
Up to 20 years
Designs Designs, including shapes, configurations, patterns
or ornaments that are applied to an article by an
industrial process.
Examples: fabric, bottles, crockery, clothing
Up to 15 years
Geographical
Indications when
in force
Place names used on wines and spirits from a
specific location with particular qualities that are
attributable to that place of origin.
Example: the term 'champagne' can only be used
in relation to wine produced in the Champagne
region of France
Not yet
determined
Registered by IPONZ
No separate
consideration process
for Māori cultural
elements.
Plant Variety Rights Exclusive rights to produce a new plant variety
for sale and to sell its propagating material.
Example: new varieties of apples
20-23 years
Do not need to
be registered
They exist automatically.
Copyright Exclusive right to use and distribute original literary,
artistic and musical works; performances, sound
recordings, film, software and broadcasts.
Also moral rights for authors and directors in
relation to their works and performers’ rights over
live communication of their performances to the
public and recording of their performances.
Examples: Waiata, kapa haka performances, koauau
tunes, weaving, carvings, jewellery, books
Life of the author
plus 50 years
Trade Secrets Confidential business information about the
composition or manufacture of a product that gives
a company a competitive advantage.
Example: recipes
Not applicable
THE INTELLECTUAL PROPERTY OFFICE OF NEW ZEALAND GUIDE TO PROTECTING INTELLECTUAL PROPERTYWITH A MĀORI CULTURAL ELEMENT
Waitangi Tribunal report
Ko Aotearoa Tenei
(Wai 262)
In July 2011, the Waitangi Tribunal issued a report entitled Ko Aotearoa Tenei,
commonly referred to as the WAI 262 report. Since its release, the WAI 262
report has been under consideration by the Crown. The claims and report raise
a wide ranging number of matters with implications for many different areas,
including intellectual property.
Here are four examples of actions taken by the government in relation
to intellectual property as a result of the WAI 262 claims:
New Zealand’s trade mark registration rules were
changed in 2002 to empower the Commissioner
of Trade Marks to refuse to register a trade mark
if its registration or use would be likely to offend
a significant section of the community, including
Māori. A Māori Advisory Commiee was
established to advise the Commissioner of Trade
Marks on whether the registration or proposed
use of a trade mark would be likely to be offensive
to Māori. (Note that this was in response to claims
that had been made public prior to the issuance
of the report.)
The Haka Ka Mate Aribution Act 2014 was
passed, which provides a right of aribution to
Ngāti Toa in respect of the haka Ka Mate’. Any
person who publishes, broadcasts or shows a film
in public featuring Ka Mate’ must aribute it to
Te Rauparaha and Ngāti Toa Rangatira. Ka Mate’
is an example of a taonga work.
A Māori Advisory Commiee for patents was
set up by the Commissioner of Patents under
the Patents Act 2013 to advise the Commissioner
on whether an invention claimed in a patent
application is derived from Māori traditional
knowledge or from indigenous plants or animals,
and if so, whether commercial exploitation of that
invention is likely to be contrary to Māori values.
The Geographical Indications (Wine and Spirits)
Registration Amendment Bill was introduced to
Parliament in November 2015. The Bill empowers
the Registrar of Geographical Indications to refuse
to register a geographical indication if its
registration or use would be likely to offend a
significant section of the community, including
Māori. This effectively aligns the government’s
approach on geographical indications with the
approach it has already taken on trade marks
and patents.
2015
2014
2013
2002
New Zealand trade mark and patent law requires the government to set up a Māori Advisory
Commiee to provide advice on the registration of trade marks and granting of patents that have
a Māori cultural element. There are two advisory commiees:
› Trade Marks Māori Advisory Commiee
› Patents Māori Advisory Commiee
Design applications with a Māori cultural element may also be considered by the Trade Marks Māori
Advisory Commiee.
Māori Advisory Commiee members have a deep understanding of mātauranga Māori, and tikanga
Māori (Māori cultural protocol). They play an important role in ensuring that the government does
not register trade marks, patents or designs that are offensive to Māori or contrary to Māori values.
Examples of the type of questions considered by the commiees include:
› whether an image in a trade mark draws from Māori culture in a manner that could be offensive
to Māori
› whether an invention claimed in a patent application is derived from Māori traditional knowledge
or from indigenous plants or animals
› whether commercial exploitation of an invention (producing, marketing and selling it) would be
contrary to Māori values
Decisions on whether a trade mark or patent can be registered are made by the Commissioner
of Trade Marks and Patents. The Commissioner considers the advice received from the Māori
Advisory Commiees in relation to an application, but is not required to agree with that advice.
The Commissioner will consider the Commiee’s advice alongside other relevant factors that
determine whether the trade mark, patent or design can be registered or granted. The advice of
the Commiee is shared with the applicant when the Commissioner tells the applicant whether
the application has been approved.
There is no extra cost when an application for a trade mark, design or patent goes to an advisory
commiee.
Further information about the Māori Advisory Commiees, their members and the Memorandum
of Understanding and Terms of Reference for each is available on the IPONZ website.
Māori Advisory
Committees
New Zealand law setting up the Māori Advisory Committees
There are sections of the intellectual property laws (Acts) which currently provide for the Māori
Advisory Commiees:
TRADE MARKS ACT 2002
Section 17(1)(c) of the Trade Marks Act says that the Commissioner must not register a trade mark
“the use or registration of which would, in the opinion of the Commissioner, be likely to offend
a significant section of the community, including Māori.”
Sections 177-178 require the Commissioner to establish a Māori Advisory Commiee “to advise the
Commissioner whether the proposed use or registration of a trade mark that is, or appears to be,
derivative of a Māori sign, including text and imagery, is, or is likely to be, offensive to Māori.”
PATENTS ACT 2013
Section 15 of the Patents Act 2013 says that an invention that is “contrary to public order or morality”
cannot be patented, and states that the Commissioner can “seek advice from the Māori Advisory
Commiee” in making this determination.
Sections 225-228 require the Commissioner to appoint a Māori Advisory Commiee whose members
“have knowledge of mātauranga Māori (Māori traditional knowledge) and tikanga Māori (Māori
protocol).” The Commiee is to advise the Commissioner on whether “an invention claimed in
a patent application is derived from Māori traditional knowledge or from indigenous plants or
animals,” and, if so, “whether the commercial exploitation of that invention is likely to be contrary
to Māori values.”
DESIGNS ACT 1953
The Designs Act 1953 does not provide for a Designs Māori Advisory Commiee, nor does it make
mention of Māori directly. It contains a more general provision that prevents the Commissioner from
registering a “design the use of which would, in his opinion, be contrary to law or morality.” The Trade
Marks Māori Advisory Commiee may be asked to consider design applications with a Māori cultural
element under this provision.
The advisory committee process
When an application for a trade mark, patent, or design with a Māori cultural element is received by
IPONZ, they decide whether the application needs to be considered by a Māori Advisory Commiee.
Some Māori cultural elements in trade marks and designs do not need Commiee consideration
(this is discussed in detail in the chapter Trade marks and mātauranga Māori).
All applications with a Māori cultural element received by IPONZ go through the same consideration
process, regardless of the cultural background of the applicant.
If IPONZ decides the application needs to go to an advisory commiee, the following will happen:
› IPONZ will let the applicant know that the application has been forwarded to a Māori Advisory
Commiee.
› The Māori Advisory Comiee will consider the application in relation to mātauranga Māori at the
same time that IPONZ is considering other issues that may determine whether the intellecutal
property can be registered or granted.
› The advice of the Māori Advisory Commiee will be sent to the Commissioner via IPONZ, who will
share the advice with the applicant when the decision on the application is issued.
If the Commissioner decides that an application must be declined based on advice from a Māori
Advisory Commiee, the applicant will be given the opportunity to respond. The Commiee will
be asked to reconsider the application in light of any additional information from the applicant
and give its advice to the Commissioner again.
When an application is approved, the advice of the Commiee may be shared with the applicant.
Its advice may provide useful insights on how a product or service might be perceived by potential
consumers, or it may raise other concerns that could influence whether the intellectual property
is commercially successful.
The advisory commiee process is shown in the following diagram in the context of the general
application process. General application process flow charts for trade marks, designs and patents
are available on the IPONZ website.
MĀORI ADVISORY COMMITTEE PROCESS
The Māori Advisory Committee
receives the application and
considers whether it would be
offensive to Māori, or contrary
to Māori values, if registered.
The Māori Advisory Committee
reaches a consensus, and
sends its advice to the
Commissioner (at IPONZ).
The applicant is told of the
outcome of their application,
including the Māori Advisory
Committee advice. If the
Commissioner has rejected
the application on the grounds
it may be offensive to Māori
or contrary to Māori values,
the applicant may respond,
giving reasons why they
disagree with the finding.
The applicant’s response will
be sent to the Committee,
who will decide if the response
overcomes their concerns.
The normal IPONZ process
happens at the same time
as the consideration of the
application by the Māori
Advisory Committee.
The applicant is told that
their application has gone to
a Māori Advisory Committee.
IPONZ sees that the application contains a Māori cultural element that needs to go to a
Māori Advisory Committee for advice. IPONZ forwards the application to the committee
and tells the applicant they have done so and why. (Some Māori cultural elements in trade
marks and designs do not need Committee consideration. See the chapter on Trade marks
and matauranga Māori.)
IPONZ receives an application
for a trade mark, patent,
or design.
IPONZ
MĀORI ADVISORY
COMMITTEE
APPLICANT
IPONZ follows steps for
declined applications.
IPONZ follows steps for approval
and registration of the new trade
mark, design or patent.
The Commissioner receives
the advice from the Māori
Advisory Committee and
considers it along with other
general application criteria.
The Commissioner is not
bound by the advice of the
Committee. The Commissioner
reaches a decision on the
application.
or
Many people who apply to protect intellectual property with a Māori cultural element are familiar
with Māori culture and may have chosen their intellectual property for its specific Māori meaning.
However, a growing number of products are referencing traditional Māori art and design, both
in New Zealand and overseas. Many of these items are mass-produced in factories outside
New Zealand, oen by non-Māori artists, and few of them have an understanding of Māori
culture to support them.
The general information in this section about Māori culture and protocols can help anyone owning
or planning to develop intellectual property with a Māori cultural element understand the cultural
reasons behind some of New Zealand’s intellectual property laws and application processes.
The information could save intellectual property owners time and money in developing intellectual
property that may not be able to be registered.
Recognising a Māori cultural element
It may not always be obvious, even to the owner, that their intellectual property has a Māori element.
Consider the following example:
An applicant wants to register the trade mark Tane’ for a new garden design consultancy. Tane’
means seed in Japanese. The applicant may not realise that Tane’ also refers to Tānemahuta, the
Māori god of the forest. ’Tāne’ is sacred to Māori, and the name could be offensive to Māori as a
trade mark in New Zealand. The application would need to go to the Māori Advisory Commiee for
consideration.
The same principle may apply to Māori imagery. For example, a spiral–whether it is a koru or a Greek
spiral design–is recognised as a Māori sign in New Zealand, and will be treated that way when a trade
mark or design application is assessed.
For most Māori cultural elements, there is not a single set of explicit rules, or a one-size-fits-all
process to follow.
Cultural significance
Certain Māori words, expressions, performances, images, places, and things have special social,
cultural and spiritual significance or meaning for Māori. There are many cases where it would not
be appropriate to copy or use a Māori cultural element, especially a traditional one.
Cultural considerations
in relation to
mātauranga Māori
Even commonplace Māori words and designs should be treated with care because of their cultural
significance. They may be familiar to the public, but significant to Māori, and therefore deserve
special consideration and respect. Failure to show appropriate respect may offend the public, and
can impact on the sales and success of a product. Consider the hei tiki:
CULTURALLY SIGNIFICANT IMAGE:
NEW ZEALAND HEI TIKI
The hei tiki is one of New Zealand’s most familiar,
popular and recognisable Māori symbols. The
hei tiki is a small, carved ornament, usually of
greenstone, worn suspended from the neck.
Hei tiki is culturally significant, as it represents
the unborn child and is associated with
Hineteiwaiwa, the Māori goddess of childbirth.
Using hei tiki for particular products or services
may be offensive to Māori. This can be raised
as an objection against an application for a
New Zealand trade mark or design, and may
impact market sales.
(Note that today hei tiki are oen referred to
simply as tiki, but this shorter word traditionally
referred to the much larger human figures
carved in wood guarding the entrance to a Māori
pa (fortified village) and also the smaller wooden
carvings used to mark a tapu (sacred) place.)
There are two objects with Māori cultural significance that are protected by law in New Zealand:
› Ngāi Tahu’s relationship with pounamu (greenstone) is protected in the Ngāi Tahu (Pounamu
Vesting) Act 1997 and the 2002 Pounamu Resource Management Plan
› the significance of the haka Ka Mate’ as a taonga of Ngāti Toa Rangatira is acknowledged in the
Haka Ka Mate Aribution Act 2014.
Intellectual property owners, no maer how familiar they are with Māori culture, may benefit from
taking time to learn more about the cultural significance of the specific Māori cultural element in
their intellectual property, and how it fits into their business plans. This might include contacting the
appropriate Māori elders or iwi
1
representatives to discuss how they plan to use or apply the Māori
cultural element. It might also be helpful to talk through the circumstances in which the product was
developed and the business plan.
Applicants might also ask permission to use a particular Māori element, though in some cases it
may be difficult to establish ownership and identify who has the authority to grant permission.
The process of seeking permission could also work against the need to keep some intellectual
property, such as a design or an invention, confidential until it has been protected.
1 An iwi is an extended kinship group of Māori, often associated with a distinct territory. An iwi may be composed of several
hapū, a family sub-group of an iwi.
DATE: 14.10.15CLIENT: IPONZ ITERATION: 1JOB: MAORI IP
3
TYPICAL MAORI DESIGN SHAPES
Note: These graphics are supplied with and without the accompanying descriptions
The concepts of tapu and noa
Tapu is the strongest force in Māori life. It has numerous meanings and references. Tapu can
be interpreted as sacred’, or defined as spiritual restriction,’ and can contain strong rules and
prohibitions. A person, object or place which is tapu may not be touched or, in some cases, not even
approached.
Noa is the opposite of tapu and includes the concept of being common. Noa also has the concept
of a blessing as if it can li the rules and restrictions of tapu from a person or object.
To associate something that is extremely tapu, with something that is noa, is offensive to Māori.
In the application to register the name Tane’ for a new garden design consultancy, the applicant
might be able to explain that the use of the word Tane’ (meaning seed’ in Japanese) is as a reference
to man or men, and demonstrate that the designs or icons associated with the consultancy are
consistent with that meaning. In this case, it would not necessarily be regarded as offensive
because it does not involve anything noa.If, on the other hand, the word was to be associated
with a seed cake or biscuit, then the application might be regarded as offensive because of the
association of something tapu with something noa.
The association of tapu and noa in trade marks can be illustrated further:
TAPU AND NOA: PAPATŪĀNUKU CHEESE
Papatūānuku is one of the most significant
Māori atua or tipuna (god or spiritual ancestor)
and therefore tapu.
A trade mark containing Papatūānuku on
goods (food) that are noa would be considered
offensive, and could be raised as an objection
against a New Zealand trade mark application.
Cultural offensiveness may also impact
market sales.
Māori world view and values
Many Māori values are related to the Māori story of the origin of the world, in the relationship
between Ranginui (the sky father) and Papatuanuku (the earth mother) and their children, from
whom all living things are believed to descend. All plants and animals, according to the Māori
world view, therefore share a sacred (tapu) origin.
The relationship between people and all living things is characterised by a shared origin or life
principle referred to as mauri. Mauri is not limited to animate objects. A waterway, for example,
has mauri, and a mountain has mauri by virtue of its connectedness to Papatūānuku.
Any act that undermines or disrespects mauri is therefore objectionable. These values
are the basis for the obligation Māori feel to act as kaitiaki (guardian, custodian) of mauri.
Values that enhance and protect mauri are:
› Tika: truth, correctness, directness, justice, fairness, righteousness
› Pono: being true, valid, honest, genuine, sincere
› Aroha: affection, sympathy, charity, compassion, love, empathy.
DATE: 14.10.15CLIENT: IPONZ ITERATION: 1JOB: MAORI IP
1
FICTITIOUS PRODUCT EXAMPLE ONE:
Papatuanuku Cheese
Inappropriate associations
Associating Māori cultural elements with some types of goods and services could be considered
offensive, as they may appear to make inappropriate assumptions about Māori. For example, alcohol,
tobacco, genetic technologies, gaming and gambling all have the potential to devalue Māori people,
culture and values.
INAPPROPRIATE ASSOCIATION: ATUA IPA ALE
Associating Māori cultural elements with certain goods, like alcohol, could be
considered offensive.
These historical examples of inappropriate association would not be acceptable today for many
reasons, including the juxtaposition of noa and tapu.
HISTORICAL EXAMPLES
NOT ACCEPTABLE TODAY
1914 1927 1935
Images from Well Made New Zealand: a Century of Trademarks. Richard Wolfe, Reed Methuen, 1987.
Māori to English translation
Some Māori words and concepts can be translated into English without risk of causing offence.
However, sometimes there is another layer of meaning or understanding in relation to a Māori word
that is lost when it is translated into English.
For example, the word kuia could be translated as grandmother. This is accurate, but the translation
does not reflect its full significance for Māori as a name used to show great respect, recognising a
person’s achievements, wisdom and contribution. In this light, it would be offensive for kuia (tapu)
to be associated with things like food or alcohol (noa) in a trade mark.
Māori imagery, artwork and design
Pre-colonial Māori had no wrien language, so traditional knowledge was passed down through the
generations through stories and visual art. Full of meaning and symbolism, traditional Māori art and
design form an important part of Māori identity and culture.
Large pieces, like waka (canoes) and wharenui (meeting houses), and small pieces, like weapons,
vessels, tools, jewellery and clothing, all communicate a story and have meaning and significance.
Each shape, colour and material was carefully selected for its cultural or spiritual meaning.
FEATURES OF MĀORI IMAGERY
The images below illustrate some of the distinctive features of Māori imagery and design,
including the curvilinear designs depicted in tā moko (taooing), kowhaiwhai (raer paerns)
and whakairo (carving), and rectilinear designs depicted in tukutuku (ornamental panelling)
and taniko (embroidery).
MĀORI IMAGERY AND DESIGN
All illustrations are reproduced with permission from the Alexander Turnbull Library,
Wellington, New Zealand. Reference numbers are to specific library collections.
Meeting house Te Mana-o-Turanga,
on Whakato Marae, at Manutuke
(date unknown) Reference number: 1/2-051434G
Flax kete or woven
basket. (Late 19th
century) Collector
Mansfield, Katherine
1888-1923; Reference
number:
Curios-018-1-003
Tukutuku panels,
wooden carving and
kowhaiwhai
(ca 1930s) Reference
number: 1/2-51556
Wooden carvings
(poupou) Interior of
Te Mana-o-Turanga
meeting house (date
unknown) Reference
number: 1/2-051454-G
MĀORI IMAGERY AND DESIGN
Drawings of Māori
raer paerns
Godber, Albert Percy,
(1876-1949). 19. 34W
20. 30W and, 21. 1W.
MA1. “PitauaManaia”.
(1939-1947).
Reference number:
E-302-q-1019/021
Flax piupiu or skirt
and a length of
taniko weaving,
probably at Koroniti
(1921) Reference
number:
PA1-q-257-43-4
Drawings of Māori
raer paerns
Godber, Albert Percy
(1876-1949). 10. 13W.
MA13. “Ngutukaka”
11. 19W. MA19.
“Maui”and, 12. 20W.
MA20. “Maui”.
(19391947).
Reference num:
E-302-q-1-010/012
MĀORI TIKANGA THE ‘RIGHT WAY’ TO DO THINGS
Māori artists oen dedicate themselves to studying a specific art form. Part of this study includes
learning tikanga, or the right way to do things (protocol). The work of these Māori artists is highly
sought aer and each piece is treated as a taonga (treasure).
If an intellectual property application goes to a Māori Advisory Commiee for consideration, respect
for tikanga may play a role in the assessment of whether it is potentially offensive to Māori. When
using or commissioning Māori artwork or designs, owners should consider using an artist or designer
who is familiar with traditional Māori culture and tikanga to ensure that the trade mark or design is
represented correctly and is culturally appropriate.
This is also important in relation to copyright. Even though there is no advisory commiee for
copyright, inappropriate cultural references could affect commercial success in the marketplace.
TRADITIONAL MĀORI DESIGN ELEMENTS
Below are some examples of traditional Māori icons and their meanings. These icons may be a small
part of a design, the entire design, or the inspiration for a new design.
TRADITIONAL MĀORI ICONS
DATE: 14.10.15CLIENT: IPONZ ITERATION: 1JOB: MAORI IP
3
TYPICAL MAORI DESIGN SHAPES
Note: These graphics are supplied with and without the accompanying descriptions
DATE: 14.10.15CLIENT: IPONZ ITERATION: 1JOB: MAORI IP
3
TYPICAL MAORI DESIGN SHAPES
Note: These graphics are supplied with and without the accompanying descriptions
DATE: 14.10.15CLIENT: IPONZ ITERATION: 1JOB: MAORI IP
3
TYPICAL MAORI DESIGN SHAPES
Note: These graphics are supplied with and without the accompanying descriptions
DATE: 14.10.15CLIENT: IPONZ ITERATION: 1JOB: MAORI IP
3
TYPICAL MAORI DESIGN SHAPES
Note: These graphics are supplied with and without the accompanying descriptions
DATE: 14.10.15CLIENT: IPONZ ITERATION: 1JOB: MAORI IP
3
TYPICAL MAORI DESIGN SHAPES
Note: These graphics are supplied with and without the accompanying descriptions
DATE: 14.10.15CLIENT: IPONZ ITERATION: 1JOB: MAORI IP
3
TYPICAL MAORI DESIGN SHAPES
Note: These graphics are supplied with and without the accompanying descriptions
Koru
The koru depicts an
unfolding fern frond.
It symbolises new
beginnings, growth
and harmony.
Hei matau
The hei matau or
fish hook depicts
abundance, strength
and determination. It is
also said to be a good
luck charm for those
journeying over water.
Manaia
The manaia depicts a
spiritual guardian. It has
the head of a bird, the
body of a man, and the
tail of a fish. A manaia
provides spiritual
guidance and strength.
Pikorua
The pikorua symbolises
the joining together of
two people or spirits. It
is also said to represent
life’s eternal paths.
Toki
The toki is a stylised
adze that represents
strength, control and
determination.
Roimata
Roimata means tear
drop’ and symbolises
sadness or grief. It was
sometimes given as a gi
to comfort or console.
Trade marks and
mātauranga Māori
Trade marks are distinctive symbols or words that help consumers identify and distinguish products
and services in the marketplace. Trade marks can include logos, words, images, colours, shapes,
sounds, smells ‒ or any combination of these.
Many trade marks in the marketplace are not
registered. These unregistered trade marks
(sometimes referred to as common law’
trade marks) may carry the symbol
TM
.
Registration of a trade mark is evidence of ownership
of the trade mark and makes it easier for owners to
enforce their rights. Once registered, a trade mark
can carry the
®
symbol or the
TM
symbol.
Registering a trade mark in New Zealand only gives protection in New Zealand. Trade mark protection
in other countries requires a separate application process in that country, or use of the international
trade mark system (the Madrid Protocol
2
).
All applications for trade mark registration in New Zealand are assessed for Māori cultural elements
or features derived from mātauranga Māori. Any that need special consideration are forwarded to
the Trade Marks Māori Advisory Commiee.
The Trade Marks Māori Advisory Commiee has issued a set of guidelines it follows when assessing
applications it receives from the Commissioner. These are available on the IPONZ website.
Trade mark law in New Zealand
The Trade Marks Act 2002 and Trade Marks Regulations 2003 set out the legal framework for trade
marks in New Zealand.
Criteria for registering a trade mark
In order for a trade mark to be registered, it must meet the detailed and specific criteria for
registrability outlined in the Trade Marks Act 2002 and the Trade Marks Regulations 2003.
2 The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (commonly referred to as the
Madrid Protocol), is a filing treaty. It provides a cost-effective and efficient way for trade mark holders to apply for protection for
their trade marks in multiple countries with one application and given if its one application, in one language and with one set of
fees, in one currency. More information is available on the IPONZ website.
TM
®
A trade mark must be distinctive in relation to the goods and services it will be applied to. A trade
mark that describes or names a characteristic or quality of goods or services is not distinctive and
therefore not registrable. For example, an apple (āporo in Māori) is considered distinctive if used on
electronic devices, but not when used on products or services in relation to apples.
A trade mark should not:
› be the same as or similar to other trade marks on the trade marks register which are applied
to the same or similar goods and/or services
› mislead or confuse consumers about the nature or origin of the goods
› contain material protected or prohibited by other laws.
Benefits of registering a trade mark
A registered trade mark helps consumers distinguish between similar goods and services in the
marketplace.
In addition, a registered trade mark:
› makes the owner the only person who can legally use the trade mark throughout New Zealand
to promote the goods and/or services that it covers
› has legal protection that can be used to prevent others from trying to imitate the owner’s brand,
or benefit from its success
› is listed on the publicly searchable trade mark register (administered by IPONZ), so that other
businesses intending to use or register an identical or similar trade mark can see that the trade
mark is registered
› has been through a formal registration process that will assist in ensuring that the trade mark
does not infringe the rights of other registered trade marks
› is personal property that can be sold or licensed to another person or business
› may provide information to consumers about the quality (high, low or in-between) of the goods
and services on offer
› may help to create commercial ‘goodwill’ (good reputation and regular, trusting customers) that
can increase substantially over time as the trade mark becomes established in the market.
Ownership of a trade mark
A trade mark can be owned by one or more individuals, a company, two partners, one or more
company owners, or other legal entities such as an incorporated society or a runanga (the governing
council or administrative group of a Māori iwi or hapū which has been established as a legal entity).
Although ownership of a trade mark can be transferred aer it is registered, it is preferable to clarify
in advance who will own the trade mark. It may be a good idea to get legal advice.
Unrestricted Māori words and designs
There are some Māori words and designs that the Trade Marks Māori Advisory Commiee has
determined are generally not considered offensive and can be freely associated with a wide range
of goods and services.
The Māori words and designs that do not require assessment are:
› Māori geographical names
› The word kiwi’
› The spiral koru design (also known as pitau).
However, applications that contain these Māori cultural elements will go to the Trade Marks Māori
Advisory Commiee if they also include:
› other Māori words or images
› anything that could be considered offensive or ambiguous in relation to the particular goods
and services the trade mark represents
› an atua (god) or tīpuna (ancestor) name or image
› an association with wahi tapu (a place sacred to Māori in the traditional, spiritual or religious,
ritual, or mythological sense)
› a word that may be regarded by whanau (extended family group), hapū or iwi as having mana
(high importance).
Statistics on trade mark applications with a Māori element
The table on the next page shows the total number of trade mark applications filed, the number
of applications where a Māori cultural element was identified, the number of those applications
referred to the Trade Marks Māori Advisory Commiee, and the number of Māori trade marks
considered to be offensive by the Commiee, from 2003 to 2015.
The percentage of applications with a Māori cultural element sent to the Māori Advisory Commiee
has ranged from 58% to 70% over the past 11 years. (Prior to 2005, all applications with a Māori
cultural element went to the Commiee).
The number of applications found to have a Māori cultural element that would be offensive to Māori
is generally below 3% (in 2015 it reached 5%).
On average 3% of
applications the Maori
Advisory Commiee
recieve annually are
deemed culturally
offensive
3%
In 2015 the highest
number of applications
in 10 years was sent
to the Maori Advisory
Commiee
2015
In 2009 the Maori
Advisory Commiee
recieved 602 (a record
number) of applications
with a cultural element
602
Trade Mark Māori Advisory Committee statistics
Year Total trade mark
applications filed
(classes)*
Applications with
a Māori cultural
element
Applications
sent to
Committee**
Māori trade marks
deemed potentially
offensive
by Committee
2015 22,122 (45,800) 406 301 (74%) 15
2014 20,390 (39,472) 417 244 (58%) 4
2013 18,559 (35,370) 363 210 (58%) 9
2012 17,858 (33,180) 523 343 (65%) 10
2011 17,726 (32,239) 570 402 (70%) 6
2010 17,158 (31,339) 571 407 (71%) 3
2009 16,464 (29,373) 602 416 (69%) 11
2008 18,129 (33,349) 476 316 (66%) 9
2007 20,181 (36,660) 601 404 (67%) 1
2006 19,362 (33,702) 610 427 (70%) 2
2005 16,905 (28,779) 546 426 (78%) 4
2004 16,205 (27,255) 488 488 (100%) 6
2003 19,236 (23,252) 480 480 (100%) 3
*Note: New Zealand trade mark registration uses an international classification system published by the World Intellectual
Property Organisation. Trade mark applicants must classify the goods or services they intend to use the trade mark on into one
or more of 45 classes. One trade mark may be applied in several classes. The classes’ figure in the table above offers a picture
of how many types of goods or services have Māori trade marks applied to them.
**IPONZ is only able to accurately count the number of trade marks with a Māori cultural element that did not go to the Māori
Advisory Committee after 2012, when it introduced its online case management facility. Other figures in the table are estimates.
Application process information
Before applying for trade mark registration, applicants should make sure their trade mark is not
already being used. Tools and resources are available on the IPONZ website to help:
› the ONE check tool ‒ checks the companies register, domain name register and trade
marks register
› Trade Mark register and search function
› International Trade Mark Register
General searching on the internet may uncover competitive unregistered trade marks.
The trade mark application process must be completed online. The IPONZ website has detailed
instructions on how to apply, and information on fees.
Overcoming an offensiveness objection
If the Commissioner raises an offensiveness objection to a trade mark, based on the advice of the
Trade Marks Māori Advisory Commiee, the applicant is entitled to respond giving reasons why
they think the trade mark is not offensive.
IPONZ will send the applicant’s response to the Trade Marks Māori Advisory Commiee, to review
and in turn advise the Commissioner if the applicant’s response overcomes their original concerns.
While applicants have disagreed with the advice provided by the Commiee, as at December 2015,
no trade mark application has resulted in a hearing to challenge the Commissioner’s decision.
There have been cases where an offensiveness objection has been overcome:
› In one case the applicant was advised to seek consent from the relevant authority. The applicant
got this and the trade mark was then accepted.
› In another case, the trade mark was considered offensive because it contained a tapu word to
be used on goods that could serve food (noa). In this case the applicant amended their trade
mark specification to state glass plates, bowls; the aforementioned goods being of a decorative
nature and not for use with food. This overcame the Commiee’s concerns and the objection
was withdrawn.
Example case
TRADE MARKS
A local beekeeper, Pētera, decided to create a honey brand that is uniquely kiwi and
references his Māori ancestry. He selected the brand Ranginui as it reflects his desire
to promote an organic and delicious New Zealand honey.
Pētera decided to apply for the trade mark Ranginui, combined with a logo, on the goods
honey in class 30.
Aer making his application, Pētera was contacted by IPONZ notifying him that because
the trade mark application contained a Māori word and image, his application had been
sent to the Māori Advisory Commiee for their opinion.
Because he was culturally aware, and because his trade mark had been professionally
designed, Pētera assumed that the application approval process would be smooth.
A fortnight later Pētera received notification from IPONZ that his trade mark was
considered to be offensive to Māori. Ranginui is one of the most significant Māori atua
or tipuna (a god or spiritual ancestor) and therefore tapu. The use of Ranginui in relation
to honey, which as a foodstuff is considered noa, would aempt to li the tapu from
Ranginui, and would therefore cause offence.
Pētera had to decide how to proceed. He knew he could aempt to change the
Commiee’s opinion through a wrien submission but there was no guarantee that this
would be effective, especially given the nature of the objection raised. Alternatively he
could continue without a trade mark registration but protecting his intellectual property
could be more difficult and costly. He also knew that both of these options, to proceed
with his proposed brand could alienate a portion of his customer base or lead to
unfavourable media coverage for his business.
Finally, Pētera decided that rebranding was a beer option, and would not be too costly
as he had not yet sold any honey using the proposed brand or gone to the expense of
investing in packaging or signage.
Not wishing to cause offence to Māori, Pētera consulted with local iwi regarding some
other brand names and selected the brand name Iorangi (referring to cirrus cloud,
light cloud, and mares’ tails), which in their opinion is not tapu and therefore not likely
to cause offence.
Once his new design proof was final, Pētera made a new successful application.
Patents and
mātauranga Māori
Patent law protects inventions and other new products and processes, including those based on
mātauranga Māori, such as rongoā (traditional Māori medicine) or processes where the formula
or use has not been previously disclosed.
IPONZ will refer applications for patents to the Patents Māori Advisory Commiee if:
› the invention is derived from Māori traditional knowledge, or
› the invention is derived from indigenous plants or animals.
The Patents Māori Advisory Commiee will consider whether commercial exploitation of the patent,
(producing, marketing and selling the invention) is likely to be contrary to Māori values.
The Patents Māori Advisory Commiee was established in 2013. It has not yet considered any patent
applications. The Commiee intends to publish guidelines to provide clear guidance on Māori cultural
issues to patent applicants.
Owners of inventions who want to apply for a patent must keep the invention confidential until aer
the patent application has been filed. If an invention is described, used, or displayed in public before
an application for a patent has been filed, the invention will no longer be new and can no longer be
granted a patent.
A New Zealand patent gives protection only within New Zealand. To get patent protection in another
country, it is necessary to file a patent application in that country.
It may also be possible to file through processes established by the Patent Cooperation Treaty PCT
(an international treaty with more than 145 Contracting States). The PCT makes it possible to apply
for patent protection in many countries with a single international patent application. The granting
of patents remains under the control of the national or regional patent offices in those countries.
Owners of inventions who want to
apply for a patent must keep the
invention confidential until aer the
patent application has been filed.
‟
Patent law in New Zealand
The Patents Act 2013 and the Patents Regulations 2014 set out the legal framework for patents in
New Zealand.
Criteria for granting of patents
For a new product or process to be patented it must be:
› new different from anything previously known
› inventive not obvious to someone with a good knowledge of the subject
› useful has a practical application that works
› not otherwise excluded from patent protection (see IPONZ website and the Patents Act 2013 for
more information on what is excluded; exclusions include methods of treatment by surgery or
therapy, methods of diagnosis, plant varieties, and inventions contrary to public order or morality,
such as a process for cloning human beings).
Benefits of a granted patent
A patent grants the patent owner the right to:
› be the only person who can produce and sell the invention for up to 20 years
› sell or license the patent
› take legal action to prevent others from making and selling the invention without permission.
Ownership of a patent
The inventor is usually the owner of the patent. When the invention is created as part of someone’s
employment, the employer may instead be the legal owner of the patent (this would usually be set
out in an employment contract).
Application process
Preparation of a patent application, including the specification that describes the invention or
innovation, is very complex. IPONZ recommends that those interested in applying for a patent
contact a patent aorney for professional assistance. A list of New Zealand registered patent
aorneys is on the IPONZ website.
Anyone considering applying for a patent should refer to the IPONZ website before applying to:
› Make sure the invention can be patented (not all inventions can be patented)
› Find out if the invention is already known (by searching both the IPONZ and overseas patent
registers) to avoid infringing someone else’s patent for the same invention
› Get information about patent aorneys
› Prepare the technical and legal information about the invention needed to complete
a specification document ‒ a wrien description of the invention, which may include
drawings, and may require other documentation.
The patent application must be completed online. The IPONZ website has detailed instructions
on how to apply, and information on patent fees.
Example case
PATENTS
The plant poroporo, solanum aviculare is a New Zealand native plant used by Māori
in the treatment of rheumatism.
Emma, an overseas pharmaceutical researcher, has isolated a toxic alkaloid, solasodine,
from the leaves and unripe fruit of the poroporo. Emma wants to cultivate the plant
overseas specifically for the production of steroid contraceptives, to be marketed and
sold by her pharmaceutical company.
Emma sends an application to patent the medicine in New Zealand to IPONZ.
IPONZ staff ask the following questions when assessing the application:
Is the invention derived from Māori traditional knowledge?
Answer: Based on the facts, it is not clear; Māori have a pre-existing use for poroporo
but not as a contraceptive.
Is the invention derived from indigenous plants and animals?
Answer: Yes. Consequently, the application for the commercial exploitation of the
poroporo extract will be sent to the Patents Māori Advisory Commiee for advice.
The Patents Māori Advisory Commiee will consider whether the commercial exploitation
of the poroporo-derived invention is likely to be contrary to Māori values.
The Commiee would consider the wider benefits of the invention, particularly to Māori,
and might also look for steps that could address any negative impact on Māori values.
Design registration
and mātauranga Māori
The design of a product is what makes it visually aractive to customers and may be its strongest
selling point. This makes the design of a product a valuable asset to protect.
There is no specific Designs Māori Advisory Commiee. However, designs that contain a Māori
cultural element may be sent to the Trade Marks Māori Advisory Commiee to assess whether they
may be offensive to Māori.
In rare cases, an applicant may be advised to seek the consent of the person or group who are the
traditional owners of the Māori cultural element within the proposed design. If that consent is not
given, then IPONZ may refuse to register the design if the Commiee find that it may be offensive.
It is essential that a design not be published prior to applying for registration, as doing so will
prevent registration, or mean that the registration is invalid.
Design law in New Zealand
Design protection in New Zealand is provided through the Designs Act 1953 and the Designs
Regulations 1954.
Criteria for registering a design
For a new design to be registered it must be:
› new, or have original features of shape, configuration, paern or ornament
› applied to an article by an industrial process
› appealing to the eyes, and judged solely by the eyes.
The requirement that the design is new means not just that it is freshly devised, or new to the
designer, but that it is not published in New Zealand before the date of application for registration.
In particular, the design must not be used on a website or in publicity pamphlets until aer a design
application has been made.
A design registration will not be granted for hand-craed, one-off, or bespoke pieces.
Benefits of registering a design
Registering a design will mean the design owner is the only one who can make, import, sell or license
their design for up to 15 years. Design registration offers stronger and more defensible protection
than copyright.
Overseas manufacturers looking for partnership opportunities oen search the New Zealand
Design Register to find new designs and products.
Manufacturers and importers should check the register to see if their designs could infringe
a registered design.
Ownership of a design
A registered design can be owned by one or more people, a company, two partners, one or more
company owners, or other legal entities. Although ownership of a design can be transferred aer
it is registered, it is preferable to clarify in advance who will own the design. It may be a good idea
to get legal advice.
Application process
Information on the IPONZ website will assist anyone considering registering a design to do the
following before applying:
› Make sure the design meets the legal criteria to be registered
› Check the New Zealand Design Register to make sure the design is not similar to another
registered design.
The design registration process must be completed online. The IPONZ website has detailed
instructions on how to apply, and information on fees.
Example case
DESIGN
Tamati, a New Zealand small business owner, developed a new range of sandals with Māori
paerns and motifs laser-cut into the soles. These sandal designs were visually unique,
and were going to be sold to the public through a new business Tamati was planning to
register as a company.
Tamati decided to apply for design registration for five models of sandals with the
following Māori designs:
› Koru paerns (representing peace, personal growth, new life and harmony).
› Single Twist paerns (representing the path of life)
› Double and Triple Twist (representing the joining of cultures, and friendship for life)
› Hei Matau (signifying abundance, plenty, strength and determination)
› Manaia (a spiritual guardian, provider and protector over the sky, earth and sea).
When IPONZ received the application, they saw that the proposed designs included
imagery that could be of cultural or spiritual significance for Māori, so the application was
sent to the Trade Marks Māori Advisory Commiee for consideration. IPONZ told Tamati
his application had been forwarded to the commiee.
The Māori Advisory Commiee returned feedback stating that the application of the koru
to the footwear was acceptable, in keeping with their general guidelines on imagery that
can be used freely without causing offence, and that the hei matau was also acceptable.
The Commiee found that the application of the other three Māori cultural elements to
footwear, and the resulting association of Māori values and imagery with feet, and the
significance of some imagery being walked on and engaging with earth and soil, could
cause offence to Māori.
This advice was helpful to Tamati, who did not want to invest time and money in
manufacturing and selling a new product that could be culturally offensive to potential
customers and to the general public.
Tamati was able to remove the offensive versions of the sandals from the design
application, and go ahead with registering the other two designs with confidence that they
were unlikely to offend customers or other members of the public.
Plant variety rights
and mātauranga Māori
New plant varieties can be protected through registration, and granting of plant variety rights.
The owner of a plant variety right is the only person allowed to produce the new plant variety
for sale and to sell its propagating material (e.g. seeds and cuings).
Plant variety rights can apply to all plant varieties, but not to algae or bacteria.
Plant variety rights apply provisionally from the date of application. Once granted, a plant variety
right lasts for 20 years for non-woody plants and 23 years for woody plants.
Plant variety rights apply only in New Zealand. To get protection for the plant variety in another
country, the owner must apply in that country. New Zealand is a member of the International Union
for the Protection of New Varieties of Plants (UPOV) which allows New Zealand plant breeders to
apply for protection for their new varieties in all other member countries.
Plant variety right applications do not go to a Māori Advisory Commiee, and there are no separate
processes or criteria in relation to mātauranga Māori in the application process.
Plant variety law in New Zealand
The Plant Variety Rights Act 1987 and Plant Variety Rights Regulations 1988 set out the legal
framework for plant variety rights in New Zealand.
Criteria for granting of plant variety rights
To qualify for registration, a plant variety must be all of the following:
› distinct ‒ different, in one or more ways, from all commonly known varieties at the date
of application
› uniform and stable ‒ each plant needs to match the variety description, and the variety itself
needs to be consistent, even aer repeated propagation
› new ‒ new plant varieties must have been sold in New Zealand for less than a year, or overseas
for less than six months, prior to application
› named ‒ have a proposed variety name (denomination) that conforms to internationally
accepted guidelines.
Benefits of granted plant variety rights
As well as having exclusive rights to produce a new plant variety for sale and to sell its propagating
material, the owner of a plant variety right can also:
› prevent others from selling the plant variety and its propagating material
› licence the reproduction and sale of the plant variety by others
› sell the plant variety right to another person or business.
Note, however, that a plant variety right does not stop others from:
› growing or using a protected plant variety for non-commercial purposes, such as in the home
garden or for research purposes
› eating a protected plant variety or using it for other non-propagating purposes
› using a protected plant variety for plant breeding.
Ownership of plant variety rights
Plant variety rights can be owned by one or more individuals, a company, two partners, one or more
company owners, or other legal entities. Legal advice may be required.
Application process
Information on the IPONZ website will help applicants prepare an application to register a plant
variety.
The plant variety right registration process must be completed online. The IPONZ website has
detailed instructions on how to apply and information on fees.
Example case
PLANT VARIETY RIGHT
While out running, Hamish, a nursery owner, noticed an interesting seedling of a local
native plant and decided to dig it up and grow the seedling. Hamish poed the seedling in
his nursery and observed it over several growing seasons. Propagation was carried out and
Hamish’s nursery developed the seedling into a cultivar.
Following an expression of interest in the new cultivar from another nursery, and good
feedback from a garden centre, Hamish lodged an application for a plant variety right.
Because the plant variety originated from discovery and development, Hamish was required
to state on the plant variety rights application where and when the original seedling had
been found.
The seedling was found on land administered by the local iwi, and Hamish was requested
by the Plant Variety Rights Office (a section of IPONZ) to provide evidence that the local
iwi, as land owner, was aware of the plant variety right application. Hamish had been in
correspondence with the iwi and was able to provide adequate documentation of this to
the Plant Variety Rights Office.
If Hamish had not been able to provide the requested documentation within the requested
timeframe, showing that the iwi was aware he was applying for a plant variety right, the
application could have lapsed (expired) under Section 7 (3) of the PVR Act 1987.
The iwi, as landowner, could lodge an objection during the application period and aer
a grant is made, and possibly claim part ownership.
Copyright and
mātauranga Māori
In New Zealand, copyright protects original works in one or more of the following categories:
› literary works including text such as emails, training manuals, novels and song lyrics tables,
and compilations including multimedia works and computer programs
› dramatic works including dance, mime and film scenarios or scripts
› musical works including the score and sheet music
› artistic works including paintings, drawings, diagrams, maps, models, photographs and
sculptures
› sound recordings separate to the actual music or story
› performances (of music, dance, readings, recitations, etc), live and recorded, in audio
and audio-visual media
› films for any genre or format, separate from the underlying script, music or broadcast
› communication works including radio and television broadcasts and internet webcasts
› typographical arrangements of published editions covering the layout of the edition derived
from a complete or partial literary, dramatic or musical work
› product designs that have been commercialised through industrial application, including product
designs and casting moulds, and works of crasmanship.
The copyright also includes moral rights for authors and directors in relation to their works (the
right to have their works treated with respect), and performers’ rights over live communication (e.g.
television broadcast) of their performances to the public and recording of their performances.
Although copyright can be used to protect the specific physical expression of some forms of
mātauranga Māori, the underlying ideas, content, or style cannot be copyrighted.
Most copyright protection lasts for the life of the creator plus 50 years. The New Zealand time limit
will depend on the work involved and when it was created, published, performed and, in the case
of product designs, commercialised. See the IPONZ website for further detail on copyright terms.
Copyright law in New Zealand
New Zealand’s Copyright laws are contained in the Copyright Act 1994 and the Copyright (General
Maers) Regulations 1995.
Criteria for granting of copyright
Copyright protection is automatic. The right takes effect as soon as an original work is created,
published or performed.
Benefits of copyright
Copyright owners have exclusive rights in relation to their work to:
› copy it ‒ reproduce, scan, record, download and store
› issue copies to the public ‒ publish or distribute
› perform, play or show the work in public
› communicate it to the public ‒ radio and television broadcasts, internet webcasts
› adapt it, including translating the work from one language to another.
Ownership of copyright
The creator of a work will usually be the owner of the copyright. There are two exceptions:
› when the work is created in the course of employment, the employer will be the owner
› when someone commissions a work (pays someone else to produce a photograph, painting,
drawing, diagram, map, chart, plan, engraving, model, sculpture, film, sound
recording or computer program), the person who commissioned the work will be the owner.
These ownership positions can be varied by agreement.
Although not required by law, it is a good idea to include a copyright indicator
or notice on the work (e.g.
© Manu Aroha, 2016). The copyright symbol ©
lets others know the work is protected by copyright, the name of the owner
tells people who to contact to obtain permission to use the material, and the
creation date enables people to calculate when the copyright protection will
expire in New Zealand.
It is also a good idea to keep detailed records of copyrighted works. Records can include print
editions, prototypes, moulds, drawings and any contracts or agreements that clarify copyright
ownership.
Exceptions to copyright
There are some exceptions to the rights in the Copyright Act. These permied acts’ reflect
situations where exceptions to usual copyright restrictions are made in the wider public interest,
or in the interests of particular groups.
Permied acts include:
› copying or using the work for the purposes of criticism, review, news reporting, research
or private study
› limited copying or using the work for particular educational purposes
› limited copying or using the work by librarians or archivists in specific circumstances
› exceptions in respect of certain activities by the Crown
› making a braille copy of the work, subject to certain conditions
› the making of a back-up copy of a computer program
› recording a television programme for the purpose of making a complaint or watching it
at a more convenient time
› copying a sound recording for the purpose of playing that sound recording on other devices
owned by the owner of the sound recording (known as format shiing).
©
Copyright protection overseas
New Zealand is a party to various international agreements on copyright. This means that when an
original work is created in New Zealand, it is also automatically protected in other countries that are
party to those agreements.
Moral rights
A moral right is the right of the author or director to object to derogatory or disrespectful treatment
of their original expression. Moral rights are based on an assumption that a creator’s work is an
extension of the creator’s personality, and any interference with the work that offends the honour
or reputation of the creator should be refrained from.
Performers’ rights
Performers’ rights can be used to protect the expressions of some forms of mātauranga Māori.
For example, the performance of waiata and kapa haka (or the sound or visual recording of
performances). Performers’ rights are different and independent from any copyright that may
exist in the work they perform.
Separate rights apply to each individual in a group performance. In this respect, there is no concept
of group ownership of copyright, and members of a group do not have collective rights in a group’s
performance. For example, in a kapa haka rōpū (group) each member has individual rights in his or
her performance as part of the overall kapa haka performance.
Performers’ consent is required for any live broadcast of their performance and for any recording
made from their performance. A recording made without consent is called an illicit recording and
infringes the performers’ rights when that recording is either played in public or copies are made
and offered for sale.
Consent cannot be withdrawn aer it has been given.
Making a recording of a performance or copying a recording of a performance is permied in
a number of situations. For example, it would not be an infringement of the performers’ rights
if the recording was for private and domestic use or used for educational purposes, criticism
or news reporting.
Example case
COPYRIGHT
Ngahuia is the main composer of all waiata (songs) taught to her Awhina Kapa Haka group.
Most of the waiata relate to stories told by her elders about her hapū and the land and
resources within their rohe (territory). As the tutor of Awhina Kapa Haka, Ngahuia has
recently become aware of intellectual property rights. She isn’t too sure which intellectual
property rights apply to her waiata, but is keen to protect the ones she creates.
The waiata will qualify for copyright protection where they are original (not copied) and
put into material form like sheet music (lyrics and score) or a sound recording. Ngahuia
does not need to apply for copyright, as it exists automatically when an original work
is created.
As the copyright owner, Ngahuia’s permission will be required to:
› Copy her waiata (e.g. photocopying the score or lyrics)
› Publish her waiata
› Perform her waiata
› Adapt her waiata (eg translating the lyrics from Māori into English)
› Broadcast her waiata on radio, television or the internet.
Even where permission has been given to use one of Ngahuia’s works, it would be expected
that the moral rights of the creator would also be acknowledged and respected, meaning
that use will be respectful, and not derogatory or disrespectful.
For example, if a reproduction of one of Ngahuia’s original compositions was altered and
used to sell a product or service that was at odds with the tikanga of her hapū, Ngahuia
could claim that the song was used in a culturally derogatory manner that affected her
reputation and honour among her people.
A geographical indication is an intellectual property right that identifies a product as coming from
a particular location and having a particular quality, reputation or other characteristic that results
from its geographical origin.
A well-known international example of a geographical indication is the name Champagne’, which
can only be applied to sparkling wine from the Champagne region in France.
The Geographical Indications (Wine and Spirits) Registration Amendment Bill was introduced to
Parliament in November 2015. The Bill empowers the Registrar of Geographical Indications to refuse
to register a geographical indication if its registration or use would be likely to offend a significant
section of the community, including Māori.
This effectively aligns the government’s approach on geographical indications with the approach
it has already taken on trade marks and patents.
Geographical indication law in New Zealand
The Geographical Indications (Wine and Spirits) Registration Act 2006 was enacted in 2006, but has
not yet been brought into force. Work is underway to implement the Act (including the changes in
the Amendment Bill), which provides a geographical indications registration regime for wine and
spirits. Implementation is expected in 2016.
The IPONZ website has more information on how the new laws on geographical indications will work
when they come into force.
Currently in New Zealand, geographical indications are primarily protected by the Fair Trading Act
1986 and through the common law tort of passing off’ (falsely representing goods or services in
order to make people believe that they are the goods or services of another person or company).
This is discussed in more detail in the next section on enforcement.
Some owners register their geographical indications under the Trade Marks Act 2002 as either
certification marks or collective marks.
Geographical
indications and
mātauranga Māori
Benefits of geographical indications
Similar to trade marks, geographical indications help brand a product. Geographical indications on
products give consumers information about where the product was produced and the unique quality,
reputation or other characteristics that can be aributable to the location or region where the
product was produced.
Ownership of geographical indications
Unlike most other intellectual property rights, geographical indications are generally collectively
owned by producers in a particular area who are entitled to use the geographical indication.
The use of geographical indications is oen associated with particular rules that producers in the
area must follow, such as the source of a product’s essential ingredients, farming practices and
manufacturing techniques.
Application process
The IPONZ website has more information on the registration of geographical indications.
A trade secret is confidential information about a product or service that gives the owner
a commercial advantage. Once a trade secret becomes public knowledge, the commercial
advantage may be lost.
A trade secret should not be registered, or disclosed to unauthorised personnel, especially
to competitors, as its value to a business lies in it remaining a secret.
Examples of trade secrets include manufacturing processes, recipes that cannot be reverse
engineered, and manuals containing confidential technical know-how about a product’s composition
or its manufacturing process. Industrially applied designs cannot be protected as trade secrets,
but the process of applying a particular design may be.
A trade secret does not stop others from developing an identical product, independently copying
a product once it is on the market, or reverse engineering a product to work out the special process
or recipe from the product itself.
Protecting trade secrets
The best way to protect a trade secret is to limit the number of people who have access to the
confidential information.
If it is desirable to share a trade secret with others for any reason, a confidentiality agreement or
a non-disclosure agreement can be used to make sure the information shared will remain secret.
Trade secrets receive some protection under law. If a trade secret has been given to another person
without permission, it may be possible to get a court order preventing its use by the other person
in possession of the trade secret. It is also a criminal offence for someone to dishonestly take, obtain
or copy a trade secret for the purpose of financial gain or causing financial loss.
Trade secrets and
mātauranga Māori
The owner of intellectual property, whether registered or not, is responsible for keeping an eye
on the way it is used and protecting it against unauthorised exploitation (commercial benefit without
the owner’s permission).
Owners should understand the rights aached to their intellectual property, safeguard its secrecy
if appropriate, be able and prepared to communicate their legal rights to others, and if necessary,
enforce their rights through legal action.
Not all cases of unauthorised use end up in court. Many disputes are seled through private
negotiations. There are penalties for making unjustifiable threats, so it is important for owners to
identify what assets they own and know their rights before sending a warning leer or threatening
to sue.
In New Zealand, a number of statutes provide enforcement procedures and remedies for owners
of intellectual property rights. These statutes include:
› Consumer Guarantees Act 1993
› Copyright Act 1994
› Designs Act 1953
› Fair Trading Act 1986
› Layout Designs Act 1994
› Patents Act 1953
› Plant Variety Rights Act 1987
› Trade Marks Act 2002
› The Crimes Act 1961
An owner can pursue civil enforcement of their rights in court by suing any person who has infringed
their intellectual property rights. Infringement may also constitute a criminal offence where, for
example, the infringement is carried out in the course of business, and may carry penalties.
Depending on which intellectual property right has been infringed, and how, various New Zealand
enforcement agencies may be able to assist intellectual property owners.
Before contacting any enforcement agencies, owners should consider consulting either a Patent
Aorney or a legal professional specialising in intellectual property.
Enforcement of
intellectual property
rights
The Copyright Act 1994 and the Trade Marks Act 2002
The Copyright Act 1994 and the Trade Marks Act 2002 both contain provisions imposing civil liability
for activities that constitute copyright and trade mark infringement. Civil liability refers to a court
case that may result in payment of damages or other court-enforcement. Criminal liability means
the person infringing another’s intellectual property rights may be found guilty of a crime
and punished.
Copyright and trade mark owners can enforce their rights by taking court action (suing someone)
if they believe their rights have been infringed. The courts have a wide range of remedies they
can use to compensate owners of copyright and registered trade marks. These include damages,
injunctions, orders to account for profits, and orders to deliver up infringing goods to rights holders.
The Copyright Act and the Trade Marks Act also contain criminal penalties for wilful infringement
on a commercial scale. For example, piracy of copyright and counterfeiting of registered trade marks
for commercial gain. The Chief Executive of the Ministry of Business, Innovation and Employment is
empowered to prosecute the offences of manufacturing, importing and selling counterfeit goods
and pirated works prescribed in those Acts. A person convicted of this type of activity may be
imprisoned for up to five years or fined up to NZ$150,000.
The Fair Trading Act 1986
The Fair Trading Act is useful for intellectual property owners, and trade mark owners in particular,
seeking to protect their rights. The Act imposes penalties for forging a trade mark or for falsely
applying or using a trade mark or sign that looks similar to an existing trade mark in a way that could
mislead or deceive consumers. Whether these provisions will apply to activities involving counterfeit
goods will depend on the facts of the particular case.
Border enforcement measures
New Zealand also has a number of border enforcement measures in place to help copyright and
trade mark owners prevent the importation of goods into New Zealand that infringe their rights.
These measures allow trade mark and copyright owners and licensees to request the New Zealand
Customs Service to temporarily detain goods being imported into New Zealand intended for sale
that are suspected of infringing a registered trade mark or copyright. Border enforcement
measures do not apply to goods that people have imported for their private or domestic use.
Intellectual property owners can ask the Customs Service for help by lodging notices of their
New Zealand registered trade marks and goods subject to copyright protection. When a notice
has been lodged, the Customs Service is able to hold suspected infringing copies of trade marked
goods or copyright works for a period of ten working days to enable the rights holder to intiate
court action against the importer for infringement of their trade marks rights or copyright. If rights
holders don’t initiate court action within this period, the Customs Service must release the goods
to the importer.
For more information, see the New Zealand Customs Service website www.customs.govt.nz.
Passing off
Passing off is a common law doctrine that protects the right of a business to a particular name or the
goodwill in that name.
The most common example of passing off is where a person claims that their products are somehow
connected to another business’s products, essentially cashing in’ or free-riding’ on the goodwill
and reputation that those products may enjoy in the marketplace. If the market is confused and the
fake products are inferior, the business may suffer damage, including lost sales and loss of market
goodwill.
Even unregistered trade marks are in some situations protected by this passing off common law.
To enforce this law, the owner of an unregistered trade mark would need to convince the courts
that they own the trade mark by showing they were the first to use it, and that goodwill and a good
reputation among consumers had been created through their use of the trade mark.
The owner of a trade mark (both registered and unregistered) can take someone to court to stop
them from passing off trade marks and/or products.
Tips for an effective
intellectual property
strategy
Intellectual property, and intellectual property rights, like any business asset, should be actively
managed to make them as commercially valuable as possible, to ensure that they are effective long-
term, and to secure the competitive advantage they represent. Intellectual property rights should
be integrated into business planning.
It may be helpful to seek advice from business advisors and/or intellectual property experts (such
as a patent aorney or a lawyer specialising in intellectual property) before acting on any specific
business plans in relation to intellectual property.
The tips below are designed to help intellectual property owners look aer their intellectual property
and develop an intellectual property business strategy.
Develop expertise
Intellectual property owners should take time to educate themselves and those around
them about the value of intellectual property and how it can be protected. In larger
business contexts, owners should clarify who is responsible for developing, maintaining and
protecting the intellectual property.
Understand your intellectual property assets
Owners should create a business culture that identifies and captures intellectual property
assets, and scans the environment for new intellectual property opportunities that can be
integrated into business plans.
IDENTIFY INTELLECTUAL PROPERTY OPPORTUNITIES AND OPTIONS
Owners should consider protection options when intellectual property is first captured, and
maintain up-to-date inventories of both registered and unregistered intellectual property.
Records should include application and registration numbers, copyright information, record
security protection and confidentiality measures. Intellectual property calendars can be
developed for milestones, such as fee payments that are required to maintain intellectual
property applications or registrations.
CHECK THAT THE INTELLECTUAL PROPERTY IN USE IS OWNED, OR PERMISSION
TO USE IT HAS BEEN SECURED
Owners should review contracts and agreements before applying for intellectual property
protection and using licensed intellectual property.
REGULARLY REVIEW INTELLECTUAL PROPERTY
Intellectual property rights can be bought, sold and licensed. Owners can sell or license
intellectual property rights that are no longer core to business, and acquire new intellectual
property rights to help grow business in different sectors or markets.
1
2
3
4
5
Review contracts
Contract law is complex. Best practice is to have legal advisors, including patent aorneys
or lawyers specialising in intellectual property, review employment contracts, licenses and
other intellectual property agreements before they are signed.
Keep records
Keep evidence that shows how a new product, process or copyright work was developed.
Include for example, dated and signed drawings, project notes and dras.
Use intellectual property systems effectively
Intellectual property that is considered critical to business success could benefit from
a registered intellectual property right. It is worth remembering:
› Intellectual property rights are not always appropriate for protecting traditional forms
of innovation and creativity, especially if ownership is uncertain.
› Trade mark, design and patent applications with Māori cultural elements can be assessed
by the Māori Advisory Commiee. Even if a trade mark or design application is not
considered offensive, sometimes other concerns are raised that could impact market
sales in New Zealand. It is wise to consider the Māori Advisory Commiee advice, as their
perspective represents how the products or services will be perceived in the marketplace.
Most owners do not want to unwiingly alienate potential customers.
› Searching the intellectual property registers will give applicants valuable information
about the intellectual property of others.
› Intellectual property protection and enforcement decisions are some of the hardest
business choices owners have to make. Owners should get the best advice they can afford
and take time to consider all of their options, including estimated costs and the time it can
take to achieve intellectual property goals. Owners should look for business opportunities
in disputes, such as seling the dispute by making the alleged infringer a business partner.
› Intellectual property registered in New Zealand is only protected in New Zealand, so
owners should look overseas and consider where their business is going and what steps
might be needed to protect their intellectual property in overseas markets, (particularly
potential export markets). This might include developing an intellectual property filing
strategy or running clearance checks as part of general business expansion planning.
