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Who Owns New Zealand's Imagery?

Icons such as the fern appear prominently on many New Zealand businesses promotional material – Qualmark, TIANZ, and the Ministry of Tourism itself all make use of this well known New Zealand icon. So who, if anyone, should own the intellectual property of our 'New Zealandness'?

In December 2005 the New Zealand Rugby Union (NZRFU) failed in its attempt to obtain trade mark registration for a black rugby jersey bearing a fern. The application filed by the NZRFU in June 2001 included "…a three dimensional shape being a black rugby jersey or casual shirt made in the style of a rugby jersey bearing a fern and with a white collar…". The application was opposed by a group of New Zealand based clothing manufactures, who argued that the fern should remain available to be used by all New Zealand traders and not just the All Blacks or the NZRFU.

The NZRFU says it was trying to avoid situations where a consumer purchases a rugby jersey from a seller who does not have any intellectual property rights to the 'All Black' brand and who will never return the money made back into the game, unlike the NZRFU and the funds it receives from merchandise sales. The clothing manufacturers argued that the NZRFU should take action against those traders for breach of the Fair Trading Act 1986 but not seek to prevent other New Zealand traders from manufacturing goods bearing a fern or in the colour black, both of which identify and represent New Zealand.

The Intellectual Property Office of New Zealand agreed. It held that the trade mark was not registrable because the silver fern was "…very broad in scope and had a low level of inherent distinctiveness". The NZRFU application was worded to obtain registration of any fern and black jersey for the sole purpose of the All Blacks and this would grant the NZRFU a monopoly over the use of such images and prevent other traders from using the image of a fern or a black rugby jersey.

If you wish to design and register your own trade mark you should make sure that you are not attempting to prevent others from using words or imagery which are well known in New Zealand, such as a fern. This does not prevent you from using such items in the trade mark itself, especially if you want to use it as an indication of your New Zealand goods or services, but you must do so in a way where it is clear that those words or images are not intended as a distinctive feature of the mark or form the entire mark.

For more information, please contact:

John Ferner
Partner
t: +64 9 979 2153
m: +64 21 901 498
e: John Ferner

Last updated: May 2006

This article is intended to be brief in nature and should be used for information only. It should not be relied on as legal advice.