1 December 2017Trademarks

INTA Berlin 2017: Trademarks v traditional knowledge

When brand owners take inspiration from indigenous cultures, it can cause offence but may not be a legal issue, an industry conference heard.

Speaking at INTA’s Brand Authenticity conference in Berlin today, December 1, Kiri Toki, indigenous fellow at the World Intellectual Property Organization (WIPO), outlined two examples of “inspiration”.

Lego, a “very reputable” company, said Toki, created a Bionicle toy range and used Māori words such as “tohunga” and “Mata Nui” in its branding and within the story of the toys.

In the culture of the Māori of New Zealand, a “tohunga” is an expert practitioner of a skill.

“Lego legally didn’t have too much of a problem, as ‘Bionicle’ was the only word trademarked, but they acknowledged that they had borrowed from the culture and immediately withdrew the problematic range,” said Toki, adding that Lego also undertook not to draw inspiration in this way in future and engaged with the Māori on how to remedy the problem.

She also outlined the dispute between retailer Urban Outfitters and Native American tribe Navajo Nation where Urban Outfitters had sold underwear and alcohol flasks featuring the term ‘Navajo’.

Navajo Nation owns numerous trademarks for the word ‘Navajo’ and alleged infringement of these marks, along with breach of the Indian Arts and Crafts Act, a piece of US legislation.

The parties have now settled, entered into a supply and licence agreement, and plan to collaborate on authentic American Indian jewellery in the coming years.

Toki added that WIPO can help facilitate successful collaborations with its extensive range of networks and contacts. She also suggested that brands work with indigenous tribes on these types of projects.

Janet Fuhrer, of Ridout & Maybee, provided a Canadian perspective, explaining that there’s some incompatibility between Western IP systems and indigenous values.

Fuhrer added that while Western IP rights seek to promote commercialisation, traditional knowledge and traditional cultural expressions involve communal aspects.

She noted that it can be tempting for brands to incorporate aesthetic values from indigenous cultures, as it becomes more and more difficult to come up with original ideas, but warned that brands should be aware of backlash and should collaborate with the indigenous peoples.

“Some of this has to be voluntary self regulation. Not many jurisdictions will examine trademarks against traditional knowledge or traditional cultural expressions, with the exceptions of New Zealand and Jamaica,” concluded Fuhrer.

Massimo Vittori, managing director of the Organization for an International Geographical Indications Network (oriGin), presented on how geographical indications (GIs) contribute to cultural sustainability.

He explained that GIs help protect tradition as well as the investments required for production, stating that the indications help ensure valuable traditions in the production of goods “developed over decades or centuries in a given geographical area” are preserved.

Marion Heathcote, partner at Davies Collison Cave, moderated the session. All presenters were speaking in a personal capacity at the conference, which ended on December 1.

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