Trade marks and the battle over ‘bula’

By Andrew Nicholson >>

ANYONE who has been to Fiji will have been welcomed (enthusiastically) by locals with a hearty greeting of “bula”.

However, shots are being fired over the Pacific as Fijians have become very upset by the proposed use of the term (and their native language) which has been registered as a trade mark in the United States.

It has been reported that tensions have grown in recent weeks after Florida-based Ross Kashtan trade marked the common Fijian greeting for his bar Bula on the Beach, sparking heated online debate and the circulation of a petition seeking to protect the word. 

An online petition reached its 5000-signature target on the day of the Fijian Government's announcement to fight the trade mark.

Fiji's Attorney-General has said that his Government is "shocked and outraged" and has described the use of the bula trade mark as a "blatant case of heritage-hijacking".

He is further reported to have said, "We would never give permission for anyone – particularly someone outside of Fiji looking to profit – to effectively claim ownership of bula, a word so deeply-rooted in our national identity that it has become synonymous with Fiji itself.”

REFERRAL TO WIPO

The Fijian Government has confirmed that the matter will be raised with the World Intellectual Property Organisation (WIPO), which controls the filing of international trade marks. However, as trade marks are registered on a country-by-country basis, that approach may have little impact on the US Patents and Trade Marks Office (USPTO) which governs trade mark registration within the US and which has already accepted the mark.

It appears that the intent of the approach to WIPO is to generate “…some sort of guidelines … so that questions needed to be asked to business people who want to trade mark words, or music, or designs, or whatever they want to trade mark, that it's not theirs”.¹

The Australian Trade Marks Office may have its own matter to address shortly with an application for the mark ‘Bula Beer’ having been filed in June with the following endorsement – the applicant has advised that the English translation of the Fijian words ‘Bula Beer’ appearing in the trade mark is ‘Hello Beer’.

Different countries have their own mechanisms for dealing with indigenous language issues in trade marks.

For example, in New Zealand, a trade mark containing Māori words and symbols must pass through a Māori trade mark advisory committee which advises the Commissioner of Trade Marks whether the registration of a trade mark that is, or appears to be, derivative of Māori text and imagery, is likely to be offensive to Māori.

Trade marks which contain Māori words and symbols are also given a special ‘Māori’ trade mark type status or classification on the Register.

TRADE MARKS ACT 1995

In Australia, the Trade Marks Act requires an examiner to consider whether a trade mark may be offensive or scandalous to a sector of the community, including the Indigenous Australian community in part or at large. 

However, there is no requirement for the applicant to prove that it has obtained the consent of, or consulted with, the relevant Indigenous group.

The situation was highlighted just prior to the recently completed Gold Coast Commonwealth Games, where the mascot’s name ‘Borobi’ was adopted from the indigenous Yugambeh language – translated into English to mean koala.

It was suggested by Jabree Ltd – a registered cultural heritage body for the indigenous Yugambeh people – that allowing the Commonwealth Games Corporation to use the word effectively made the Yugambeh people a “laughing stock” as it indicated that they could not control the use of their native language.

The Yugambeh people opposed the registration of the mark and the matter was resolved by a decision of the Trade Marks Office only weeks before the Games were due to commence. The decision found that:

• there was no inherent restraint on the use of Indigenous words as trade marks;
• even though it was not legally required to do so, the Commonwealth Games Corporation had consulted with the Yugambeh people about the use of the word in a structured and inclusive manner (although there were differing accounts as to whether consent had been given by Yugambeh elders);
• the mark did not create a connotation that the Yugambeh people approved of or endorsed the use of their language by the Commonwealth Games Corporation; and
• the use of the word ‘borobi’ in the context adopted by the Commonwealth Games Corporation was not offensive, shameful or shocking and not scandalous or used contrary to law under the Trade Marks Act.

The examples above are illustrative of the additional considerations which are necessary when adopting indigenous and/or culturally sensitive words as trade marks.

They also highlight (as is the case with all marks) the care which needs to be taken when selecting trade marks and the need to undertake appropriate due diligence and background enquiries to ensure that problems don’t arise.

www.mullinslawyers.com.au

Andrew Nicholson is an intellectual property law specialist and a partner at Mullins Lawyers in Brisbane. Mullins Lawyers is a foundation Industry Expert partner with Queensland Leaders, the organisation fostering the next generation of leading Queensland-based companies.

¹ABC News, 28 September 2018

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