16 September 2019

A hot topic in the news this week is the trade mark application filed by AIR NEW ZEALAND for the KIA ORA trade mark.

On 17 May 2019 Air New Zealand filed a trade mark application for its stylised use of KIA ORA covering magazines, both printed and digital.

There have been objections from the Maori Council on the registration of the mark. Just earlier this week we reported that several pieces of intellectual property legislation are under review as part of the whole-of-government approach to examine the parties that are entitled to make or participate in decisions regarding indigenous flora and fauna and Māori culture, as raised in the Wai 262.

The Ministry of Business, Innovation and Employment (MBIE) has created a new page on their website which will continue to provide information on the review.

There are currently 16 registered trade marks in New Zealand for, or incorporate, the word KIA ORA.

These registrations and the application by Air New Zealand for KIA ORA may get caught up with some of these reviews.

Leaving aside the issues of the protection of indigenous words, we look at what is achieved through a registered trade mark.

Every business has some form of intellectual property. It is what sets them apart from their competitors, it is what is used to create a connection between the goods and/or services and the provider.

Besides protecting business interests, intellectual property, including trade mark registrations, help protect the consumer as well. Consumers should not be confused by two products and be unsure as to which product they were referred to or are purchasing.

When two products use a similar name for the same or similar goods consumers are likely to be the ones left confused.

If Air NZ obtained a registered trade mark for KIA ORA it could potentially prevent others from using those words for their own printed or digital magazines names. Similar to WOMEN’S DAY or NZ HERALD (both of which are registered trade marks).

There is a difference between use as a trade mark and just using common words. The question to ask is “Is the use of the words trying to create a connection between that product and the company?”

If they are using the words to try and create a connection, or lasting memory to a consumer, then it is likely to be seen as use as a trade mark and could potentially be an infringement under the Trade Marks Act 2002.

In light of this if you are at the stage of developing a trade mark it is important to undertake searches to ensure you are not going to infringe another parties rights.

Even if you have been used a trade mark for some time and have created a reputation in that trade mark, you should ask yourself if you have adequate protection in place to prevent competitors getting too close to you?

We are happy to discuss where you are at with your intellectual property and point you in the right direction.