Can companies legally use Māori names?

Last week, RNZ examined the branding of HOKA, a billion-dollar French American shoe brand that's exploded in global popularity in recent years.

In te reo Māori, hoka means 'to fly'. The company initially accredited their use of the word to the “ancient Māori language” in 2010, but there is no attribution to its roots now and the word is pronounced wrongly in its marketing videos.

Some readers emailed us about other overseas companies using te reo Māori in their branding. Other readers questioned why one company was singled out for using a word from a specific language while, for example, your local cafe with a French name doesn’t attract the same scrutiny.

Let’s take a deeper look into New Zealand’s trademark law, and the legal and cultural implications of using te reo Māori in business branding.

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The short answer is yes, but if they want to trademark the word then they have to apply for it through the Intellectual Property Office of New Zealand (IPONZ), which offers some protection to Māori text or imagery. A trademark is a legally registered word or symbol associated with a specific company.

When a trademark application is submitted to the IPONZ there are three elements to consider, says Andrew Brown, an intellectual property specialist.

First, the trademark must be available and it must not infringe upon existing trademarks. For example, you can’t call your milk company 'Milk' because the word is too generic. You can’t call your milk company 'Fonterra' because it’s already trademarked.

The second test is whether the word is a Protected Geographical Indication (PGI). This is why New Zealand sparkling wine cannot call itself champagne (that’s a PGI of an area in the French winemaking region) and an Austrian wine brand can’t name itself Marlborough (that’s a New Zealand winemaking area with PGI status).

The third element is questioning if the trademark “is likely to offend a significant section of the community, including Māori,” according to the Trade Marks Act 2002.

Any trademark application that contains a word or imagery that could be considered Māori automatically goes to a Māori advisory committee. The committee is made up of Māori language and intellectual property experts who consider if the application could offend a significant number of Māori if approved. The committee then makes a recommendation to the commissioner on whether the trademark should be approved or rejected.

No other community in New Zealand has a committee that relevant trademark applications automatically go to, says Brown.

The 2002 act requires the Commissioner of Trade Marks to have a Māori advisory committee. That requirement likely comes down to the Crown’s obligations under the Treaty of Waitangi, he says.

“...For Māori, [te reo Māori] is a treasure - taonga - and that’s been found to be the case by the Waitangi Tribunal. So I think the fact that it’s a treasure means that it’s great that there is this additional layer of protection that’s been put in place.”

Jayden Houghton, senior lecturer and Law School assistant dean at the University of Auckland, has conducted research into cultural misappropriation and trade mark law.

"My research suggests that the Commissioner has never registered a mark where the Māori Trade Marks Advisory Committee advised that it was likely to offend Māori," Houghton says.

One reason the Māori advisory might decline an application is if it fails the noa/tapu test. This is where something that is considered common like a tobacco product should not be married with something sacred such as using a Māori word.

“Simply using a te reo word doesn't appear to be enough for the committee to say that the mark is offensive. It depends on what the goods/services claimed are and what the word (or symbol etc) is,” says Dr Alexandra Allen-Franks, a senior lecturer on intellectual property at the University of Auckland.

However, the IPONZ encourages applicants who want to use Māori words or imagery “to obtain specialist advice or engage with Māori before adopting a trade mark that contains elements of Māori culture or appears to be derivative of elements of Māori culture.”

Neither Brown nor Allen-Franks knew of any other countries that had special provisions in trademark law to protect indigenous languages.

“That's kind of held up as a model in other countries of like, ‘Oh look how New Zealand's doing it. They have this special advisory committee to advise about offensiveness in relation to this particular group of people,’” says Allen-Franks.

In this context, Brown sees two types of languages: vulnerable and dominant such as English, French and Spanish.

“There’s not generally much collective sensitivity about words in [dominant languages] being used for trademarks,” says Brown.

He did note that in New Zealand’s free trade agreement with the European Union, New Zealand had to agree to protect and not use about 2,000 PGIs including Champagne, Cognac and Gorgonzola, as in the blue cheese created in the northern regions of Italy.

“The Europeans have been very clever in making sure that when they bargain for free trade agreements, they protect all these geographical indications,” says Brown.

A potential trademark must be advertised publicly before it is approved. During this time, any community is invited to object to it due to offence or argue that it infringes on an existing trademark.

Even after a trademark is approved, a community can complain and potentially get the approval reversed.

It’s fair to say there is a court of law and there is a court of public opinion, which is made all the more louder by social media. In some cases, the court of public opinion has more power than the court of law.

Allen-Franks used the example of the Washington Commanders football team, which was previously called the Washington Redskins, a name the team used since 1933. Redskin is a racial slur for Native Americans. Following public pressure, the team stopped using the Redskins name in 2020 even though they were legally allowed to use it.

In 2001, the Lego toy company said it would no longer incorporate names from other cultures in its Bionicle sets. The company had used Māori names for various characters but faced a public outcry from Māori. The names were never trademarked so it was purely public pressure that forced the reversal and a commitment from Lego going forward:

"The Lego company will seek to develop a code of conduct for cultural expressions of traditional knowledge."