Ka Mate haka is denied trademark protection

In Te Runanga O Toa Rangatira Incorporated v Prokiwi International Limited ([2012] NZIPOTM 14, June 1 2012), assistant commissioner Walden was tasked with deciding an opposition to the registration of four word marks, each comprising a phrase from the haka Ka Mate. The haka Ka Mate is a traditional Māori 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).

The four word marks were important phrases from the haka Ka Mate, 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 Ngāti Toa Rangatira. The applicant for registration was Te Rūnanga O Toa Rangatira Incorporated, who was found to have the mandated authority to apply for registration of the marks on behalf of Ngāti 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
• were signs or indications that had become customary in the current language or in established trade practices.

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

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 that 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 that:

• use by other traders under the du Cros test does not require the use to be trademark use;
• each mark is a “recognisable phase” of the haka Ka Mate; and
• 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 as to whether they were exposed to infringement proceedings.

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

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. 

With the phrases forming such a significant part of New Zealand’s public domain, obtaining a monopoly in the words was always likely to prove an uphill battle. However, the assistant commissioner made some interesting observations that may assist other trademark owners faced with the same issue, including the following:

• 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 dessert industry”.
• The proprietor of a trademark 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 that 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 trademark protection. However, keeping control of that use is another issue.

Sarah Tallon, James & Wells Intellectual Property, Auckland