The word ‘Bula’ translates to ‘life’. When used as a greeting by the people of Fiji, bula signifies wishes for longevity and good health. ‘Bula’ is commonly heard in Fiji, and is usually coupled with the beaming smiles of friendly Fijian people. However, there were less smiles in September last year when news spread that Ross Kashtan, CEO of the Bula Kava bars and cafes in Florida, USA, had registered the word ‘Bula’ as a trade mark in the USA.
The registration drew a vast amount of criticism, largely from the people of Fiji. In response, a Fijian anthropologist and academic, Tarisi Vunidilo, started a petition that received more than 5,000 signatures – 2,000 of which were received in a single day. A number of individuals also posted criticism on Bula Kava’s Facebook page.
The furore captured the attention of the Fijian Government. Attorney-General Aiyaz Sayed-Khaiyum announced the Government’s intention to lodge documents contesting the trade mark registration with the United States Patents and Trademark Office (USPTO) and to raise the matter with the World Intellectual Property Organisation.
However, Ross Kashtan is not the first person to register the term ‘Bula’ as a trade mark. A quick search of USPTO shows that the word ‘Bula’, either alone or as part of a combination of words, has been registered as a trade mark more than 16 times. A search of the Australian trade mark register shows that ‘Bula’, in conjunction with other words, is the subject of three trade mark registrations in Australia.
Aloha from Washington
The ‘Bula Kava’ palaver isn’t the first time a US business has found itself in hot water as a result of a trade mark registration of a culturally significant greeting. In January last year, a petition against the poke[1] chain Aloha Poke Co. (Aloha Poke) received around 170,000 signatures requesting they remove the words ‘aloha’ and ‘poke’ from their name.
The petition came shortly after attorneys from Aloha Poke issued a number of cease and desist letters to other poke restaurants, including some restaurants run by native Hawaiians. The letters requested various establishments remove the word ‘aloha’ from their name. The word ‘aloha’ refers to concepts such as love, affection, peace and compassion and has deep cultural significance in Hawaii.
David Jacobson, the owner of (the newly renamed) Fairhaven Poke, posted on Facebook after receiving a cease and desist notice from Aloha Poke. He accused founder Zach Friedlander of “trying to exploit and capitalize on the recent popularity” of the Hawaiian dish. This prompted a storm of criticism on social media directed towards Aloha Poke.
While Aloha Poke issued an apologetic Facebook post of their own in response to the backlash faced, the trade mark registration remains valid and enforceable.
Closer to home – the not so cute side to Borobi the Koala
Anyone who watched the recent Gold Coast Commonwealth Games (Commonwealth Games) will remember the presence of a board short-wearing, blue Koala called Borobi.[2] While fond memories of our smiling marsupial mascot high-fiving lifeguards and officials might spring to mind, Borobi almost attended the Commonwealth Games without a name.
Prior to the Commonwealth Games, the Gold Coast 2018 Commonwealth Games Corporation (CGC) sought to trade mark the word ‘Borobi’. ‘Borobi’ means ‘Koala’ in the traditional language of the Indigenous Yugambeh people.
Jabree Ltd (Jabree), a registered cultural heritage body for the Gold Coast region, opposed the application under the Australian Trade Marks Act 1995 (Cth) (Act).[3]
Among other arguments, Jabreeclaimed that the trade mark amounted to a misappropriation of intangible cultural heritage. They claimed that the trade mark should be denied because:
- the trade mark contains or consists of scandalous matter (s42(a) of the Act);
- use of the trade mark would be contrary to law (s42(b) of the Act) and
- the trade mark is misleading as it suggests an association with and approval by the Yugambeh community (s43 of the Act).
Section 42(a) of the Act
Section 42(a) of the Act provides grounds to reject a trade mark if it contains or consists of scandalous matter or its use would be contrary to law.
To be considered scandalous a trade mark must cause a degree of disgrace, shock or outrage to an ordinary person[4] or go beyond offence[5].
Jabree’s evidence included letters showing disgrace and outrage by some members of the Yugambeh community. However, CGC’s evidence showed the opposite – that members of the indigenous community did not think that the trade mark was scandalous, but rather were proud that their indigenous language was used to promote the Commonwealth Games.
CGC held two consultations with the Yugambeh people prior to applying for registration of the trade mark. The hearing officer concluded that such consultations were conducted in a respectful and inclusive manner, despite there being no legal requirement to consult with the Yugambeh people.
The hearing officer cited the fact that there are approximately 170 trade marks on the register that contain or consist of Aboriginal words. For example, Allambie Grove is a registered trade mark for soap, yet Allambie is an Aboriginal word that means “peaceful place”. This, coupled with the fact that the word simply meant Koala in English led the hearing officer to conclude that the trade mark did not contain or consist of scandalous matter.
Section 42(b) of the Act
To establish grounds to reject a trade mark under section 42(b), Jabree must establish that use of the trade mark would be contrary to law. Jabree argued that use of the trade mark would breach section 29(I)(h) of the Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (Cth)) because use of the trade mark would mislead or deceive people into thinking that the Yugambeh community had approved the supply of CGC’s goods and services or that CGC was associated with the Yugambeh people. Jabree also argued that the use of the Yugambeh language was contrary to section 18C of the Racial Discrimination Act 1975 (Cth) as use of the word would be reasonably likely to offend, insult, humiliate or intimidate the Yugambeh community.
The hearing officer rejected both these arguments, citing the fact that the word ‘Borobi’ was already a protected word under the Commonwealth Games Arrangements Act 2011 (Qld) and thus it could not be contrary to law and the word did not offend, insult, humiliate or intimidate for the reasons provided under the hearing officer’s discussion of section 42(a) of the Act.
Section 43 of the Act
Section 43 of the Act provides that an application must be rejected if the use of the trade mark would be likely to deceive or cause confusion. Trade marks that suggest a connection with a person or organisation (which is not the person or organisation that filed the application) in the mind of the public would typically fall under this section.
Jabree argued that the trade mark application should be denied on the basis that use of the trade mark would create a connotation between the Commonwealth Games and the Yugambeh people, including that the Yugambeh people had licensed their language in promotion of the Commonwealth Games. The hearing officer rejected this argument citing the fact that Jabree had not provided sufficient evidence to establish that registration of the trade mark would be likely to deceive or confuse the relevant consumers.
Decision
As the hearing officer found Jabree had not established any of the grounds of opposition it nominated in its statement of grounds and particulars, the hearing officer allowed the trade mark to proceed to registration. The application for the word ‘Borobi’ was not considered scandalous or contrary to law under section 42 of the Act or confusing or deceptive under section 43 of the Act. Thus, the name of the mascot for the 2018 Commonwealth Games was confirmed!
Other important marks
Australia does protect someculturally significant signs. Under sections 18 and 39 of the Act, certain prescribed signs are prohibited from use as a trade mark.[6] Words such as Austrade, Returned Soldier and Olympic Champion are protected under these sections.[7]
While the Act protects prescribed signs from being used as trade marks, there is no section under the Act that explicitly protects Indigenous words and images from being registered as trade marks. Consultation with the Indigenous community is not legally required to trade mark a culturally significant word or phrase in Australia.
Across the seas
While Australian trade mark legislation does not provide a basis for rejecting the trade mark registration of culturally significant words, the position is different across the Tasman Sea. In New Zealand, trade marks that are flagged as containing or being derived from any Māori words or imagery must pass through an advisory committee. The committee then counsels whether the registration of the trade mark is likely to cause offensive to the Māori community.
Just because you can doesn’t mean you should
It is clear that many people find the use and registration of culturally significant words or phrases as trade marks offensive. Despite this, culturally significant words continue to lack explicit legal protection in Australia. Subject to a limited list of exclusions, companies can trade mark culturally important words and phrases without legal ramification. But should they?
There is a risk that if companies register culturally significant words as trade marks they could face severe public backlash. Just a quick browse of the Bula Kava and Aloha Poke Facebook pages is enough to show that businesses don’t fare well when they upset their customer base (or entire countries). At the end of the day, companies must consider whether it is worth testing the waters or if they should steer clear of using culturally significant words or phrases as trade marks entirely.
This article was prepared by Kate Barrett and Lucia Belchamber
[1] Poke is a Hawaiian dish of diced raw fish.
[2] For a memory refresher, check out the images at https://gc2018.com/borobi-fan-trail
[3] Jabree Ltd v Gold Coast Commonwealth Games Corporation [2017] ATMO 156.
[4] Trade mark application no. 106321 by Eric Granville Mery (1955) AOJP 938.
[5] Cosmetic, Toiletry and Fragrance Association Foundation v Fanni Barns Ltd (2003) 57 IPR 590.
[6] Regulation 4.15 of Incorporating Amendments up to the Intellectual Property Legislation Amendment (Single Economic Market and Other Measures) Regulation 2016.
[7] Schedule 2 of the Trade Marks Regulations 1995.
