In the globalised world in which we live, culture is certainly trending, but brands need to keep cultural sensitivities in mind to avoid marketing mishaps and public backlash.
The rise of culture
Earlier this year, the Federal Court of Australia awarded $2.3 million in pecuniary penalties against a wholesaler for misleading and deceptive conduct for falsely marketing souvenir products as hand-painted, or made, by Australian Aboriginal persons. The Court referred to the award as a “robust deterrent message” which was required because of the potential economic, social and cultural harms that Indigenous Australians may suffer from businesses misrepresenting their affiliation with or the origins of Australian Indigenous art and artefacts.1
In recent years, the rise of commercial art sales and the world’s renewed interest in the traditions of its oldest cultures has meant brands more readily consider indigenous people’s cultural heritage as providing a unique marketing tool in an increasing competitive global market. As a result, we have seen a surge of disputes involving alleged misuses of indigenous people’s cultural heritage. Not just in Australia, but worldwide.
In Australia, an applicant who attempts to register a trade mark is not required to obtain permission from traditional owners if that trade mark contains indigenous cultural material.There is no provision in the Australian Trade Marks Act 1995 (Cth) (the Act) that explicitly protects indigenous words, symbols, images or designs from becoming registered trade marks, nor is there anything in the Act that requires the Registrar of Trade Marks to reject an application on the grounds that it incorporates an indigenous word, symbol, image or design. There is no requirement that applicants consult with indigenous communities and words can be registered without the prior informed consent or knowledge of the traditional owners.
A recent trade mark application for the words “Gumby Gumby”, which roughly translates to "woman woman medicine" in the Indigenous Ghungalu language, has been under examination at the Trade Marks Office for over a year. Whilst no formal opposition has been filed, adverse reports have been published and through this process Ghungalu elders have raised concerns that the application will prevent indigenous people from being able to use their own assets for commercial purposes.2
But it’s not just indigenous medicinal terms that are being adopted; Last year, the mascot for the Gold Coast Commonwealth Games, Borobi, the board short-wearing koala, nearly attended the international games nameless. This is because Borobi is the term for ‘koala’ in the traditional language of the Yugambeh people.
Prior to the Games, the Gold Coast Commonwealth Games Corporation (GOLDOC) sought to trade mark the word ‘Borobi’, but Jabree Ltd, a registered cultural heritage body, opposed the application claiming that the trade mark should be denied on the basis that:
- it contained or consisted of scandalous matter;
- its use would be contrary to law; and/or
- it is misleading because it suggests an association with and approval by the Yugambeh people.
However, the trade mark was allowed to proceed to registration on the basis that:
- the word simply meant koala and therefore didn’t contain any scandalous matter;
- ‘Borobi’ was already a protected word under the Commonwealth Games Arrangements Act 2011 (Qld) and thus it could not be contrary to law; and
- Jabree Ltd had not provided sufficient evidence to establish that registration of the trade mark would be likely to deceive or confuse consumers.
The hearing officer also gave weight to the fact that there are already over 170 Aboriginal words on the Australian Trade Mark Register and the GOLDOC had conducted two consultation with the Yugambeh people before applying for registration.3
This controversy about cultural appropriation is not unique to Australia’s Indigenous peoples. Disney has experiencing significant community backlash for its trade mark registration of the phrase “HAKUNA MATATA”, which is a Swahili phrase meaning “no trouble”. Disney also previously applied to register a trade mark for “DIA DE LOS MUERTOS”, which refers to the “Day of the Dead” in Spanish, but following extensive critical media attention, it withdrew its application.
Certain countries, including Costa Rica, Canada and New Zealand have legislation in place to protect certain cultural appropriation.
In New Zealand trade marks which contain Māori words or images must pass through the Māori Advisory Committee. That committee then determines whether the registration is likely to cause offence to the Māori community. New Zealand also has a series of trade marks which are used to brand authentic Māori art.
In Canada, the Igloo tag trade mark was established in the 1950’s to protect works created by Indigenous artists. Indigenous groups have also been granted the status of 'public authority' under the Canadian Trade Marks Act, which means they can prevent the registration of indigenous works by non-indigenous people.
IP Australia’s 2018 Indigenous Knowledge discussion paper suggested that trade mark examiners could play a much bigger role in protecting Australia’s indigenous languages and recommended the development of indigenous knowledge tools and training for examiners, including language databases.4
Businesses need to make themselves aware of the origins of any cultural materials they seek to appropriate, especially in marketing campaigns, and consider whether they are authorised to acquire and use those materials. Failure to give due consideration to cultural materials may mean your trade mark is invalid or you may otherwise be exposed to significant public backlash.
- ACCC v Birubi Art Pty Ltd (in liquidation) (No 3)  FCA 996.
- Australian Trade Mark Application 1839890.
- Jabree Ltd v Gold Coast Commonwealth Games Corporation  ATMO 156 (14 December 2017).
- IP Australia, Indigenous Knowledge: Issues for protection and management discussion paper, 2018.
The contents of this publication are for reference purposes only and may not be current as at the date of accessing this publication. They do not constitute legal advice and should not be relied upon as such. Specific legal advice about your specific circumstances should always be sought separately before taking any action based on this publication.
© Herbert Smith Freehills 2021