Signalling a fundamental shift in the way traditional knowledge is viewed, recognised and protected, the landmark World Intellectual Property Organization (WIPO) treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge (Treaty) is the first time that Indigenous people's traditional knowledge is being recognised in the International Intellectual Property (IP) System.
While the focus of the Treaty is on patents, IP Australia has taken a pro-active approach by broadening its Indigenous Knowledge focus to all IP applications, resulting in the creation of the Indigenous Knowledge Panel pilot.
The Panel will consist of three Aboriginal and Torres Strait Islander peoples who will advise on policy and legislative matters relating to Indigenous Knowledge as well as promoting awareness and understanding of both Indigenous Knowledge and IP rights.
One of the practical and interesting aspects is the Panel's participation in the assessment of trade mark applications that contain or appear to contain Indigenous Knowledge.
What is Indigenous Knowledge?
Indigenous Knowledge is intended to be an expansive term encompassing the tangible and intangible cultural heritage of First Nations people in Australia. Indigenous Knowledge includes Traditional Knowledge Traditional Cultural Expressions, and rights to genetic resources of native flora and fauna in traditional lands.
Traditional Knowledge is defined as "know-how, practices, techniques and skills", and Traditional Cultural Expressions are "visual imagery, performance, design, words and names" derived from the knowledge held by First Nations people.1
Use of Traditional Cultural Expressions will be the most relevant Indigenous Knowledge consideration in trade mark applications.
Current practice and gaps
Indigenous words and connotations that are likely to deceive or cause confusion.
If an Indigenous word is used in a trade mark, the applicant is required to specify the language or nation from which the word originates.2This disclosure can be made at the time of filing or is requested from the applicant during examination. Effectively, IP Australia is heavily relying on the voluntary disclosure of the meaning of Indigenous words rather than being able to make their own assessment of the word or mark.
On the other hand, if a mark contains a reference to Indigenous people, for example, a statement such as "Aboriginal designed", IP Australia can raise an objection under section 43 of the Trade Marks Act 1995 (Act) on the basis that the connotation within the trade mark is likely to deceive or cause confusion.3
Offensive marks
Section 42(a) is utilised for offensive marks that contain Indigenous Knowledge on the grounds that "the trade mark contains or consists of scandalous matter". The proviso that the matter be "scandalous", limits the applicability of the provision to use of Indigenous Knowledge in trade marks in a manner that would be offensive to the relevant Indigenous community.
Broadly, section 42(a) could be described as a catch-all provision that allows IP Australia to reject offensive trade mark applications, including marks that use Indigenous Knowledge in an offensive manner – it is an ancillary provision, given it was not originally designed to recognise and protect use of Indigenous Knowledge in trade marks.
Interaction with other laws
Another catch-all provision is section 42(b) which allows the Registrar to take into consideration court decisions and other legislation, and to reject a trade mark application if "its use would be contrary to law".
An interesting application of section 42(b) is to the Australian Aboriginal flag and Torres Strait Islander flag which are protected by copyright, and permission from the copyright holders is required to reproduce either flag.4 This allows IP Australia to reject trade marks applications containing the Aboriginal or Torres Strait Islander flags unless the relevant consent has been obtained – but the underlying protection is within copyright rather than in the trade mark system.
Current protections for Indigenous Knowledge inadequate
The current approach to Indigenous Knowledge in trade marks is problematic as it relies on provisions that were not designed to be used for Indigenous Knowledge. A great deal depends on how IP Australia chooses to apply certain provisions to trade marks containing Indigenous Knowledge, rather than the law mandating the recognition and protection of Indigenous Knowledge. There is a very real risk that inappropriate or unauthorised use of Indigenous Knowledge in trade mark applications are routinely being missed by IP Australia.
Stand-alone legislation for Indigenous Knowledge
Current protections for Indigenous Knowledge in Australia's trade mark system are far from adequate. These are largely reactionary and focussed on preventing trade mark applications that are offensive to Indigenous people from being registered, rather than providing a means for Indigenous Knowledge to be recognised, protected and commercialised. There is a systematic failure in recognising the intrinsic commercial value of Indigenous Knowledge, and more importantly its commercial utilisation in a culturally appropriate manner.
Stand-alone legislation for the commercialisation and protection of Indigenous Knowledge in Australia is likely required and was a recommendation in a cross-department Indigenous Knowledge Working Group report: Scoping study on standalone legislation to protect and commercialise Indigenous knowledge. The report also recommended creating a new IP right in respect of Traditional Cultural Expressions and Traditional Knowledge.
The "contrary to law" provision in section 42(b) would allow IP Australia to apply any Indigenous Knowledge related legislation to trade mark applications without the need for any changes to the existing Act – it would only require a change in practice. Likewise, stand-alone Indigenous Knowledge legislation could quickly introduce comprehensive recognition and protection of Indigenous Knowledge into the existing trade mark system without the need for a complete overhaul of the current Act.
The Indigenous Knowledge Panel's mandate incudes advising on legislative frameworks, and the Australian Government's Cultural Policy appears committed to introducing stand-alone Indigenous Knowledge legislation. IP Australia is in the midst of making changes to its practice on trade marks containing Indigenous Knowledge – so a change is imminent regardless of any actual change to the legislative framework.
The future – how will IP Australia identify Indigenous Knowledge in trade mark applications?
Identifying whether a trade mark application contains Indigenous language, words or imagery will be the first hurdle for IP Australia.
The preliminary assessment as to whether a trade mark application contains Indigenous Knowledge will be made by examiners and referred to the Panel for consideration as required. One of the suggestions in the 2021 Indigenous Knowledge Consultation Paper was to change the trade mark application form to require applicants to state whether they have used Indigenous Knowledge. Such a change is fairly easy for IP Australia to implement and would readily indicate to examiners that a trade mark application contains Indigenous Knowledge. Another practical tool proposed by IP Australia is the creation of a dictionary database as this will increase the likelihood that use of Indigenous words in trade mark applications will be identified by examiners.5
There is also a suggestion that the Panel's involvement may go as far as to engage with the relevant cultural authorities identified by the applicants in matters such as obtaining consent to use Indigenous Knowledge. The Panel's exact role in such matters is unlikely to be finalised until the trial phase ends.
Consent and consultation considerations relating to Indigenous Knowledge
IP Australia's guidelines around Respectful use of Indigenous Knowledge strongly recommends an applicant secure consent if they are developing IP containing Indigenous Knowledge in particular:
- seek informed consent from the Traditional Custodians of this knowledge;
- obtain permission to use it; and
- thoroughly document the approach for consent.
It is unclear what would constitute "informed consent" but a thorough consultation with all relevant stakeholders including disclosure of how the applicant intends to use the Indigenous Knowledge will likely be required. Additionally, documenting the approach for consent is advised as it will form the basis of the evidence filed with IP Australia that proves that use of the Indigenous Knowledge in the trade mark is authorised and complies with relevant cultural protocols.
IPONZ's Maori Trade Marks Advisory Committee
The Panel's role in assessing Indigenous Knowledge in trade mark applications follows the lead of the Intellectual Property Office of New Zealand (IPONZ) which has an established Maori Trade Marks Advisory Committee.
The Maori Trade Marks Advisory Committee has had reasonable success in identifying Maori elements (i.e. Traditional Cultural Expressions) in trade mark applications. Examiners identifying trade marks that contain or appear to contain Maori elements routinely refer to the Committee for assessment. Applicants are also given the option of completing the Aratohu Matauranga checklist if their trade mark application is identified as having Maori elements, and the checklist requires applicants to:
- identify the Maori content, the origins and significance of the Maori elements;
- state why the Maori elements in the mark were chosen;
- explain the meaning of the Maori elements;
- identify who designed and developed the pictorial elements in the trade mark;
- confirm whether advise and permission from the relevant party was obtained; and
- state if they have considered if use of the Maori elements acknowledges and respects any associated cultural practices.
Cultural context plays a part in the Committee's success with Te Reo Maori (the Maori language) and concepts such as Tikanga Maori – the "right" way of doing things being more readily recognised and understood by New Zealand examiners and applicants. A prime reason for this is the readily available resources such as online Maori dictionaries and other materials that explain Maori cultural concepts.
Indigenous Knowledge Panel's tall mandate
One thing that can be learned from the IPONZ experience is that the creation of the Indigenous Knowledge Panel is only the first step to promoting awareness and understanding of Indigenous Knowledge in Australia.
Resources and time will also need to be allocated to developing practical tools and resources to enable examiners and the public to gain an understanding of Indigenous Knowledge. This will require collaboration with government departments, universities and First Nations people. Only then can there be an appropriate level of recognition, protection and culturally appropriate commercialisation of Indigenous Knowledge in Australia within the framework of the existing IP System.
Trans-Tasman IP regime and a uniform approach to Traditional Cultural Expressions in trade marks
Harmonisation of IP Australia and IPONZ's practice relating to Traditional Cultural Expressions in trade marks would be ideal for applicants and IP practitioners alike as Australia and New Zealand's national IP systems are effectively a trans-Tasman IP regime – but variations in approach will likely be needed to account for the differences in cultural considerations.
The recent shake-up in the recognition and protection of Traditional Knowledge from the Treaty, combined with IP Australia and IPONZ's commitment to integrating Traditional Knowledge and Traditional Cultural Expressions into their respective national IP systems, is a welcome opportunity for both the ongoing collaboration between the two countries and the creation of a model IP system that effectively integrates and recognises Traditional Knowledge and Traditional Cultural Expressions.
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Footnotes
1 IP Australia (September 2020)
"Protection of Indigenous Knowledge in the Intellectual
Property System – Work Plan 2020-2021".
2 IP Australia "Trade Marks Manual of Practice and
Procedure" at [10.4.1.1].
3 Ibid. at [29.10].
4 Ibid. at [30.3.4].
5 IP Australia (September 2020) "Protection of
Indigenous Knowledge in the Intellectual Property System –
Work Plan 2020-2021".
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.