Preventing indigenous elements from being registered as trademarks: a comparison of approaches across countries

Preventing indigenous elements from being registered as trademarks: a comparison of approaches across countries

Journal article

1 online resource (pp. 54–79)

2045-9807 (Print)
2045-9815 (Online)

Three representative countries (Canada, the United States and New Zealand) have adopted different models to provide defensive trademark protection for indigenous cultural elements. Under the trademark defensive protection system, provisions such as the ‘offence clause’ or ‘misleading public clause’ can be utilized to prevent others from incorporating indigenous elements into their trademarks. In New Zealand, the offence clause primarily serves to prevent trademarks from offending the Māori culture. After the US Supreme Court ruled that offensive clause (disparagement clause) was unconstitutional, the USPTO can use ‘misleading public clauses’ to prevent others from registering indigenous official insignia. Taiwan uses both of these clauses. Based on Taiwan’s experience, it has been observed that the misleading public clause can offer more extensive protection compared to the offence clause. It has become an important tool in preventing the registration of indigenous cultural elements as trademarks. However, defensive protection does have its limitations. In particular, invalidating a trademark that has been registered for many years can be controversial. The invocation of the ‘misleading public clause’ may allow a broader range of parties to initiate cancellation proceedings compared to the ‘offence clause’ and is less susceptible to the issue of laches (delay in exercising rights). Even the ‘misleading public clause’ can be used as grounds for revocation, subject to fewer restrictions.

Queen Mary Journal of Intellectual Property ; Volume 15, Issue 1

[Northampton, England] : Edward Elgar Publishing Ltd., 2025.

eng

https://www.elgaronline.com/page/Conditions%20of%20use/terms-and-conditions

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