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Our culture is not for sale!!! – the thin line between cultural appropriation and trade mark protection

July 1, 2021, By

Cultural appropriation through trademarking is nothing new. According to the World Intellectual Property Organisation (WIPO), cultural expression “may include music, dance, art, designs, names, signs and symbols, performances, ceremonies, architectural forms, handicrafts and narratives, or any other artistic or cultural expressions.” Over the years, we have seen examples of companies or individuals from outside particular cultures seeking to register traditional cultural expressions and deprive people within the culture from using their cultural art, designs, ethnic names, signs and symbols.

For example, Walt Disney faced backlash in parts of the African continent for trademarking “Hakuna Matata”, a Swahili phrase meaning “no worries”. Walt Disney had owned the trademark since 1994.

There was uproar when Air New Zealand tried to trademark an image containing the Maori words for hello, “kia ora” (the name of their in-flight magazine).

A few years ago, Kim Kardashian was accused by the masses of cultural appropriation and forced to recant on her plans to name her new fashion line, “Kimono, ” a Japanese garment and the national dress for Japan has been worn for generations.

Oh! We can’t forget the long-running trade mark dispute involving the NFL’s “Washington Redskins”. We have seen over the years Native Americans have tried to challenge and cancel various US trade mark registrations for the name on the basis that the word “Redskin” is a racial slur.

Well, despite the above examples, a UK fashion brand called Timbuktu has come under fire for trademarking the name “YORUBA”, the name of an ethnic group in West African, Nigeria, to be precise. As such, we once again consider whether cultural expressions should be added to the long list of things that are incapable of being registered as trade marks as they should be free for everyone to use.

What is cultural (mis)appropriation?

The world a very different place now than it was some 10 -15 years ago.  Thanks to social media, we have seen minority cultures actively call out dominant cultures that appropriate their culture. According to the Oxford Dictionary, “appropriation” is “the act of taking something that belongs to somebody else, especially without permission”. “Misappropriation” is then defined as “the act of taking somebody else’s money or property for yourself, especially when they have trusted you to take care of it”. Finally, “cultural appropriation” is defined as “the act of copying or using the customs and traditions of a particular group or culture, by somebody from a more dominant (powerful) group in society”.

When you look at the definitions, it is glaringly apparent why trademarking cultural expressions would be viewed by those in the community it affects as unsavory and unfair. Trade marks, by nature, grant the owner a monopoly right to use a particular word, logo, slogan, phrase or image (“marks”) in relation to specific categories of goods and services. This monopoly right affords the owner of the marks the right to prevent others from using similar or identical marks in relation to similar and identical goods and services.

In this case of the UK company called Timbuktu, had registered a number of trade marks for YORUBA in relation to clothing and jewellery amongst other goods. Timbuktu was attempting to block another company CultureTree from registering the word YORUBA STARS. For many, the outrage is based on the fact that Timbuktu is unfairly exploiting Nigerian cultural heritage in the name YORUBA for commercial gain whilst preventing Culture Tree (whose director is of Nigerian descent)  from sharing in the exploitation of the name YORUBA.

For some, the broader issue here is that the protection of cultural expressions through trade mark protection carries the risk of transforming cultural expression into mere commodities. In addition, protection through trademarking also introduces the idea of ownership, which is often unsuited to the particularities of cultural expressions whose ownership belongs to the community.

The question then arises, are there legal provisions that safeguard against registering cultural expressions?

As you may be aware, trade marks are geographical rights, and thus the trade mark laws governing each territory may vary slightly. Whilst this article focuses on trade marks, in some territories, some elements of cultural expression may be protectable by other IP rights such as copyright. For example, in the UK, the Copyright, Designs and Patents Act 1988 provides specific rules regarding the copyright protection of folklore and folk songs. In other territories, such as New Zealand, national laws protect against exploitation and trademarking cultural expressions that are likely to offend “a significant section of the community”.

From a UK perspective, under UK trade mark laws, a trade mark application may be refused by the examiner if the mark applied for is contrary to public policy or principles of morality. Whilst there is no explicit protection for cultural expression, critics will argue that a trade mark application would need to be offensive and against the norms of society for cultural expression to be considered to have met these criteria. Thus, there is no fixed standard for judging whether a cultural expression is registrable as a trade mark or not.

Briffa Comments

Some IP lawyers may view the controversy surrounding trademarks and cultural appropriation as unwarranted. For the majority, this view is purely based on the fact that currently, there are mechanisms in place whereby third parties can oppose or challenge trade mark applications and/or existing registrations.

Other IP lawyers may argue that honouring, respecting and preserving cultural expression/heritage is essential and will require a legal change at the international level.   Irrespective of where your personal opinion lies, the takeaway here is that businesses need to tread carefully on this issue around culturally sensitive marks. Consumers are becoming more interested in the ethics and morality of the businesses they buy from.

At the point of writing this article, Timbuktu Limited has surrendered all its trade marks for YORUBA. Therefore, any previous opposition to Culture Tree’s application for YORUBA STARS will fall away. Culture Tree has started a petition for the review and reform of registration rules regarding trade mark registration, and it will be interesting to see how this progresses.

If you are considering registering your brand name, logo as a trade mark or if your trade mark application has been opposed, please get in touch with us as here at Briffa, we can assist with all trademarking queries.

Written by Clara Bakosi, Solicitor

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