Wednesday, November 23, 2011

Guest post: How the KOHA trade mark dispute could've been avoided

The gift of rust
Thanks to Lynell Tuffery Huria for this article.

Twelve years ago, a Horowhenua library developed its own cataloguing software, brand name KOHA, and released it as open source software, available for others to use and develop around the world.  The Horowhenua library did not protect the brand name KOHA as a trade mark.  A US company has now applied to register the word KOHA for computer software.  Now the library faces a battle to oppose this application.

Can the Horowhenua library stop the US company from registering the trade mark KOHA?  The short answer is yes.  The Horowhenua library has prior use of the trade mark KOHA in New Zealand, and there is a good chance the library could successfully oppose the application.  But this process is costly.  And now the library is raising funds to oppose the application.

How can a US company obtain a trade mark for a Māori word in New Zealand?  Our trade marks legislation does not have a blanket provision that prevents the registration of Māori words in New Zealand.  Instead, a trade mark that features Māori words can only be refused if the use of the trade mark is offensive.  The Māori trade marks advisory committee is responsible for deciding whether a trade mark is offensive or not.  In this case, the trade mark KOHA was obviously not considered offensive.

What could the library have done to avoid this situation?  The library could have registered its trade mark when the product was first released.  For a fee of $100 plus GST, this trade mark application would have stopped the US company’s application and avoided this situation altogether.

What can others learn from this issue?  Before you use a trade mark, make sure you can and do obtain registered trade mark protection.  This will place you in a strong position to stop others from adopting your trade mark.

Photo courtesy of author Tom Beard under Creative Commons licence.


  1. Hmm, good advice, except the name is Koha, not KOHA.

  2. This advice is not particularly useful to developers of Free & Open Source Software (FOSS).

    There are over 2 million code repositories on Github (say, 1m projects). Some are massive, important projects, others are small experiments. Sourceforge has more than 300,000 projects with more projects on Google Code, Codeplex and numerous other code repositories around the world.

    These projects are simultaneously available in all jurisdictions globally.

    It doesn't make sense for every one of these projects to pay $100 NZD (or similar fee) in each jurisdiction, on the chance that commercial use becomes significant (a nice earner for IPONZ and friends).

    Since the emergence and utilisation of most FOSS projects is organic, the need for a trademark would typically only become an issue in retrospect.


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