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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BANK BOARDS will have to find new ways to incentivise staff, according to the University of NSW (UNSW) Centre for Law Markets and Regulation (CLMR) director, Dimity Kingsford Smith.

Bringing clarity to the September 28 release of the Interim Report of the Royal Commission into Misconduct in the Banking, Superannuation and Financial Services Industry, Professor Kingsford Smith said remuneration arrangements were crucial in rebalancing the current prominence of the financial voice in banks.

“The Commissioner’s view is that currently much of the misconduct ‘can be traced to entities preferring pursuit of profit to pursuit of any other purpose’,” Prof. Kingsford Smith said. 

“Finding and instilling purposes that motivate bank staff to treat customers well may be the Commissioner’s biggest challenge to bank boards.”

Prof. Kingsford Smith said banks and their executives should also be prepared for more ongoing scrutiny internally and externally on non-financial risk and customer welfare.

She said the interim report showed there was a need for greater focus on the customer, stronger regulatory action and “greater use of sanctions at the higher levels such as civil penalties and even prosecution”.

“Amongst the many questions raised by the Commissioner, are reservations about whether more regulation would be useful, although in areas such as mortgage broking he suggests that legal clarifications would be helpful,” Prof. Kingsford Smith said.

“Rather, he raises many questions, in a climate of sharpened political will for regulatory reform, and better resourcing for regulators.

“Boards used to their banks influencing the regulatory agenda, will have to respond.”

Prof. Kingsford Smith said there would be more external regulatory scrutiny of banks and this would require greater responsiveness to regulatory requirements such as breach notices, and more resources for remediation of customers and faulty systems like misleading website disclosure or fees for no service.

She suggested banks would have to better resource legal compliance, internal audit and risk processes so that these areas could have greater authority over banks’ business units.

“Banks should also scrutinise executive performance on failure to ensure customer financial well-being and bank reputation, and consequences should include haircuts on executive remuneration and even loss of tenure,” Prof. Kingsford Smith said.

“Banks need to ‘do it right, and put it right for customers’ – cost, complexity, broken processes and lack of information are no excuse.

“These problems are all in the control of boards and executive leadership. 

“This includes considering remuneration arrangements so that the mind-set and practices of dealing with customers changes.”

She said banks needed to manage the gap between community expectations of customer treatment and the standards set by the law.

“The Commissioner holds nothing back in his expectation, shared by the community, that banks should comply with the law,” Prof. Kingsford Smith said.

“He and counsel assisting have often asked witnesses, did you understand you were breaking the law? And, to regulators, why did you not enforce the law?

“In his report the Commissioner observes, ‘Compliance appeared to have been relegated to a cost of doing business’.”

Prof. Kingsford Smith said remediation had been tardy and inadequate when risks realise losses to customers.

“The community finds this unacceptable, and the Royal Commissioner seems to share this view.”

www.unsw.edu.au

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By Andrew Powell >>

THE Australian Taxation Office’s (ATO) Single Touch Payroll reporting change came into effect on July 1 this year, and with it came some tumbleweeds and the chirps of crickets.

It is one of the most important changes to payroll practices in recent memory in Australia; its magnitude only matched by how underdiscussed it was.

Despite its clear importance to the operations of a business, the fact of the matter is many organisations across the country have not put the systems in place to affect the change to their reporting systems. 

Whether this is because businesses are simply taking their time to get their houses in order or have no idea about the change won’t matter in the end, as there is one immutable truth they should be aware of already: the ATO never takes ignorance as an excuse.

For those unaware of the change – and there will be quite a few in that category – it requires companies with 20 or more employees to report to the ATO payments such as salaries and wages, Pay-As-You-Go (PAYG) withholding and superannuation information from their payroll solution each time employees are paid, rather than once at the end of each financial year. This will extend to businesses with fewer than 20 employees for the start of FY19.

It effectively streamlines the process of payroll reporting: once the system is in place, the ATO will have all of the information at hand for the end of the Financial Year, and one of the key benefits of the change is the reduction in reporting for both businesses and employees.

It will spell the end of payroll summaries and the stresses that come with the rush to report at the end of each year – for large enterprises and their payroll departments, it’s the loss of a high level of annual stress.

But for many enterprises those stresses are set to continue, as there’s a chance their systems aren’t set up for the change – some software suppliers may not have had their STP solutions ready for July 1, and it was therefore compulsory for them or their clients to seek a deferral from the ATO to 'be ready' for September.

It’s incumbent on businesses to immediately start discussions with their software or ERP (enterprise resource planning) providers to determine whether said provider has sought and obtained a deferral to September and determine how far away a software upgrade is – because if said provider hasn’t started the certification process by now, they likely won’t make it there by September because the process of obtaining STP certification is arduous.

It can take months, if not a full year, to obtain certification as there are myriad tests that need to take place before a go-live date. Further, there is a rigorous process that needs to be passed with regards to tax, legal and regulatory requirements.

This isn’t as easy as flicking a switch – and it’s why the lack of discussion about the change has been so alarming. Businesses need to start talking about this change.

They need to talk about how well they are equipped to process the new requirements. They need to talk to their software and ERP providers about what they’re doing to get their systems updated and ready to go, and if they aren’t, then they need to know the process that is in place to get them up to speed.

They need to speak to these providers about what is expected from them and what the benefits and, perhaps more importantly, the penalties are to non-compliance.

This new way of reporting is live, now. The ATO gave businesses enough warning about it that non-compliance at this stage is not really an option and they need to start considering how they can make the transition as soon as possible.

www.riministreet.com

• Andrew Powell is the general manager Asia-Pacific for Rimini Street, a company which provides IT engineering and systems support to enable companies to extend and improve the use of their enterprise software suites and innovate into the future.

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IF THE WORK of law researchers at QUT is an indication, buying and selling property will soon become a safe and seamless online experience.

However, the QUT law academics warn that digital success will require a thorough overhaul of existing property laws in Queensland.

QUT Commercial and Property Law Research Centre professor Sharon Christensen said an overhaul of the 43-year old Property Law Act was sorely needed to simplify the process and “save time, money and a lot of paper”. 

“Technology being applied to real estate agency and legal practice is moving ahead faster than the law,” Professor Christensen said. “Our recommendations would validate electronic contracting in land sales including the use of electronic signatures.

“This would facilitate digitisation of the ‘front-end’ of the real estate transactional process. It would complement the existing electronic conveyancing system, which already exists through PEXA (Property Exchange Australia) for the settlement and registration process.

“It would also complement the increasing number of pieces of government information already available online.”

Prof. Christensen  said for an entirely digital land sales process to work, client  identity would need to be checked at the outset.

“At the moment you have to have a lawyer do a 100-point identity check before engaging the PEXA process which must be undertaken through a lawyer,” she said.

“An identity check for an e-signature would be needed so that the process could then be digitised from the signing of the contract to the registration of the land in the owner’s name.”

Prof. Christensen said the review’s recommendations, if enacted, would legally validate the electronic processes already in use.

“Digitisation of most processes is going to happen anyway so the recommendations are just bringing property law into the 21^st century,” Prof. Christensen said.

QUT’s 1000-page Property Law Act 1974 – Final report  recommends modifications to many aspects of Queensland’s property law and transactions including co-ownership, the creation of electronic deeds, together with simplifications to the law affecting mortgages, leases and  easements.

The centre’s comprehensive review of Queensland’s Property Law Act is online and open for submissions until end-August.

www.qut.edu.au

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