Protection of TCEs with Intellectual Property Rights

Table of content

I. Intellectual Property

1. Copyright

2. Trademark

II. The protection of TCEs with IPRs

1. The protection of TCEs with Copyright

1.1. Legal protection with Copyright Act

1.2 Limitation on the use of Copyright to protect TCEs

1.3 Case study: George M*, Payunka, Marika & others V Indofurn

2. Use of Trade Marks to protect Traditional Cultural Expressions

2.1. The protection of TCEs with Trade Mark

2.2. Indigenous use of Trade marks

2.3. Plant, animals and medicinal knowledge trade marks

3. The protection of TCEs with Industrial Designs

3.1. What is design?

3.2. Relevance of Design law in protecting indegenous designs

                 Intellectual Property

Intellectual Property Law is Law of the mind, or in other said, the object of IP law is information products. This special object is protected under three areas of IP law: Patent, Copyright, and Trademark law.

While Patent law will provide an exclusive right for new and useful products (materials, machines, processes, designs), Trademark law will be applied for brands to protect their goods, and the consumers as well. Copyright law is the law of the expressions, meaning the “original works of authorship”[1]. Your productions must be embodied and fixation. For each right there will be a body of state-created law to provide relevant protection. In the scope of this thesis and subject matter, we will focus on the Copyright law and Trademark Law to clarify and enhance the important role and procedure in protecting Traditional Cultural Expressions (TCEs).

1.                Copyright

The term Copyright is a highly descritive term: the right to make copies. Copyright (or author’s right) is a legal term used to describe the rights that creators have over their literary and artistic works. Works covered by copyright range from books, music, paintings, sculpture, and films, to computer programs, databases, advertisements, maps, and technical drawings.[2] Copyright is the right admitted and protected by law, for the holders’ creation. Based on the provisions of the law on copyright, copyright is understood in two ways:

In an objective way: Copyright is a synthesis of legal norms on copyright to validate and protect the rights of authors, copyright holders, and to define the obligations of the subjects in the creation and use of copyright works. Defining the order of implementation and protection of those rights when infringement occurs.

In a subjective way: Copyright is the specific civil right (property rights and moral rights) of the subject as the author or owner of the copyright in literary, artistic, scientific and literary works and rights to sue or not to sue when their rights are infringed.

Copyright is also understood as civil legal relationship. It is the social relationship between the author and the owner of the copyright with other subjects in society through the works, under the influence of the law, the relationship between the authors, the right owners of author’s right with other identified subjects. Literary, artistic and scientific works are created and presented in an objective form, in which the relationship of authorship is established. The legal relationship of authorship is the absolute civil law relationship with the identified subjects and the remaining subjects in society are obliged to respect that right of the entitled subjects.

Today, copyright law goes further in protecting work from being copied in the strict sense of the world. The development of this idea is raised by many scholarists, what we use the copyright law to protect are more likely to rights to use a work rather than to copy it.[3] The ultimate goal is to enhance public welfare, an essentially economic value.

In order to create conditions for everyone to develop his talents in the creation of valuable literary, artistic and scientific works, the Civil Code and the Intellectual Property Law all contain provisions aimed to liberate the abilities of creative power of each individual. The personal rights and property rights of the author, of the right holder and of the owner of copyright shall be protected by law.

Intellectual property law on copyright and related rights is the legal basis for protecting the moral rights and property rights of authors, copyright holders and related rights holders. To create conditions for authors and related right holders to be conscious and responsible for creating literary, artistic and scientific works of high-quality contents and art for the cause of education and development of science and technology of the country in the renovation period. The provisions of intellectual property on copyright and related rights are the legal environment for individuals and organizations, who participate in the fields of literature, arts and sciences, warrent the equality right of each and exclude unhealthy cultural activities that harm the interests, culture and tradition of the nation. Legal provisions on copyright and related rights provide opportunities for every truly capable individual to develop his or her talents, to dedicate for the nation and the human race , with the boldly humanistic work serving the goal of equality, charity and cooperation.

2.                Trademark

Unlike copyright and patent law, which are exclusively creatures of statue, the origins of trademark law are in the common law. At its origins, trademark was a kind of consumer protection law, designed to prevent merchants from passing off inferior goods by using well established signs or labels.[4]

Branding is the concept in the consumer about the product with the sign of the manufacturer tied on the face, on the packaging to confirm the quality and origin of the product. Brands are often associated with the ownership of the manufacturer and are usually delegated to the official trade representative.

By the definition of the wikipedia.com website, trademarks are signs that individuals, companies, organizations or entities use to specialize, which make up the distinction for the product that they supply, allocate to customers, distinguish from those of other entities. Brands are a type of corporate asset, usually made up of a name, or words, phrases, logo, image or combination of elements. In practice, however, there are signs that make up the brand that is not among the ones listed above.[5]

Trademark – as defined by the World Intellectual Property Organization (WIPO): is a special (visible and invisible) sign that identifies a product or service produced or is provided by an individual or an organization.[6]

In Vietnam, we do not provide a definition of a brand but only defines a trademark, so only a trademark is the protected subject in Vietnam Intellectual Property Law. According to the American law, trademarks can be protected and the registered trademark owner will have the right to sue anyone infringing on his or her trademark. Brand is different from trademarks. A manufacturer is usually characterized by a brand, but he may have many different trademarks. For example, Toyota is a brand, but comes with many trademarks: Innova, Camry.

The term trademark is sometimes used to refer to any distinctive characteristic of a product that has been identified, in particular the characteristics of a well-known product, such as fashion Gucci, sunglasses Elton John’s. It should be noted that the protection of the trademark is only genuine when being used and registered for a certain line of products or services. Trademark ownership may be discarded or discontinued if it is not continued to be used, so the trademark owner has to use the trademark to maintain this right. In the UK, terms such as: mark, brand, or logo are sometimes used instead of trademark.

Modern trademark law also is driven by broader policies promoting competition and responsible business pratices. Trademarks have common law roots which have a basis in economic rights. As trademark law has been codified, the blending of policy has resulted in an amorphous body of fact-sensitive law.

2.              The protection of TCEs with IPRs

1.                The protection of TCEs with Copyright

The legal protection of TCEs with IPRs is first regulated with copyright perspective. In 1966, Tunisia was the first country to provide protection of TCEs within its copyright law in 1966. At the same period of time, in the 1967 Stockholm Diplomatic Conference for the Revision of the Berne Convention for the Protection of Literary and Artistic Works (‘the Berne Convention’), TCEs was brought up to the international agenda for the first time. This chapter will examine and analys the protection of TCEs through the copyright system in international agreement, for instance the Berne Convention. And then it will present the limitation on the use of copyright to protect TCEs. Finally, a case study based on the experience of Austria with the copyright protection of TCEs, to assist in preventing the unauthorised reproduction of TCEs.

1.            Legal protection with Copyright Act

Copyright protect literary and folk art works that are original and in material form. It is known widely in domestic law that copyright continues to subsist until 50 years after the end of the solor calender year in which the author dies. After that, artistic works are considered to be in the public domain. When it belongs to public domain, works can be free to be used by others without asking the permission from the copyright owner.

The copyright owner of an artistic work has the exclusive right to do all or any of the following act:

•                    To reproduce the work in a material form
•                    To publish the work
•                    To communicate the work to the public[7]

It is an infringement of copyright when someone use copies of artistic arkwork for commercial activities including import, sale and distribution or trade without the consent of the copyright owner for such purpose. The Copyright Act was made in 1968 and stated in Section 37 that if the importer knew, or ought reasonably to have known, that the making of the article would, if the article had been made by the importer, have constituted an infringement of the copyright.[8]

It is an infringement of copyright to authorise or to do any of the acts controlled by the copyright owner without permission of the copyright owner.[9] It is also an infringement of copyright to do any if those acts in relation to a substantial part of an artistic work. Under the Copyright Act, it is not necessary for literary and folk art works to be an exact copy. It is also an infringement to copy a substantial part of an aritistic work. A substantial part of an artistic work does not need to refer to a large part of the work or quantitively measure. It is all about the quality of the part taken. Generally, to consider whether it is infringement or not, the Court will look at the outstanding similarities between the original and the infringing. Quality in this case is more important than quantity. The nature of the parts that are taken from from the original artwork can also be counted as a striking factor.

A copyright owner of artistic work has the following remedies available against infringers:

•                    Injunction, An injunction is a court order prohibiting the other party from continuing to infringe the other parties rights.[10]
•                    Delivery Up, Delivery up is the power of the court in equity to order the defendant to deliver up articles which have been made in contravention of the plaintiff’s proprietary rights.[11] An infringing article is not regarded as the plaintiff’s property.[12] On delivery up, the infringing is unable to delivery up, conversion damages may be payable.[13]
•                    Account of Profits, Payment of profits the infringer made in exploiting the infringing articles.[14]
•                    Damages, Payment of compensation[15] for lost income from exploitation can be claimed as an alternative to account of profits. In some circumstances additional damages may be available if the infringment is flagrant.[16]

In some circumstances, there may be criminal liability for copyright infringement, as in the case of large-scale piracy, and orders for seizure and delivery up can be made.[17]

In the field of intellectual property, the international dimension has played an important role in standard setting for somestic legislation. The obvious impact of the TRIPs Agreement is the most conspicuous recent example of this. However, until today there has been a absence of international norm-setting for the protection of TCEs. This thesis later on will examine the various attempts at international scope and the likely impact of domestic legislative examples.

2.            Limitation on the use of Copyright to protect TCEs

Therefore, protection by copyright may seem to be possible because TCEs take the same form as protected works. However certain characteristics of copyright conflict with the TCEs and in particular the limitation in time and the identification if the creator originating the work. The following have been suggested as the limitations of copyright law.

a, The originality requirement

To be eligible for protection of copyright, a work must be original.[18] “Originality’ in copyright is not the same as “novelty” or “newness” as understood in patent law. According to Peterson J in University if London Press Ltd v University Tutorial Press Ltd,[19]an original work must not be copied from another work and it should originate from the author.[20] This requirment may present some problems for TCEs. Most TCEs are ancient and based largely upon custom and belief. For instance, an Indigenous art and designs are of spriritual and religious significance. Therefore, they must be reproduced faithfully and accurately in accordance with the traditional law and custom. Some of the TCES are important means of passing down the community’s history from generation to generation, and hence innovation is restricted. It has also been suggested that new cultural expressions made by current generations of society that are inspired by or based on pre-existing designs may qualify for copyright protection.

b, The Fixation Requirement

For copyright to subsist in a work, it must be embodied in writing, recorded or reduced to material form. But for some of TCEs, it is hard for them to meet this requirement. Verbal expressions such as folk tales, legend and indigenous poetry, folk music and dance were not traditionally presented in a particular form, but passed from generation to generation through memory and imitation. Body painting and face painting, too, may not meet the fixation requirement. Ironically, in most cases, the person who first fixes the TCEs in material form and who will be the first copyright owner of the relevant works (if such EoF/TCEs meet the requirements of copyright), is an outsider or a non-Indigenous person. For instance, oral Aboriginal legend, indigenous stories or poetry may be written down by a researcher; traditional songs may be written down by a musician; ritualistic performing arts are recorded by a documentary film maker. It follows that the researcher is the author of the literary work, the musician is the author of the musical work namely the music sheet, the film maker is the author of the documentary film and the photographer is the author of the artistic work namely the photographs. All these authors are also the first copyright owners of the relevant works. Assuming that the fixation in such cases is done without permission or authorization of the relevant community or performers, it would seem that only the performers are able to claim performers’ rights to control the first fixation of their performances and the reproduction of such fixation[21]but it will be difficult or impossible for the community in other cases to seek recourse under the copyright law due to lack of material fixation.

c, Authorship and Ownership

Copyright requires an identifiable author. However, for a TCE, it is much more difficult to identify an author. The definition of individual author right is inconsistent with indigenous traditions which implement and point out the important of collective authorship. TCEs are generally considered to be in the puclic domain because they go back much futher in time than the term of legal protection granted by the international conventions. Copyright is based on the identification of the creator, but on the contrary folklore is distinguished by the anonymity and by the fact that the tradition is the attribute of a community. Copyright confers the exclusive right of exploitation on the person who creates the work, which is difficult to reconcile with the different nature of folklore within a community.

d, Limited duration of Copyright

Copyright protection is only limited to a fixed period of time and after that the worl will be in the public domain. The duration of protection depends on the kind of work. Normally, it will be 50 years after the death of the author.[22] Practically, the Bern Convention and the TRIPS Agreement regulate 50 years as the minimum period and the signatory countries of the Berne Convention can adapt and flexible for grating a longer time of protection.[23]. Problem is that some of the TCEs may have been existed many years ago and the condition for protection is limited. Therfore, this concept of a desinated duration of Coptright can not meet all the requirement of the Indigenous communities. Because those people they do not want their work and art become a part of public which can be used and exploited freely, anf that is in contrast with the copyright spirit.

3.            Case study: George M*, Payunka, Marika & others V Indofurn

a, Summary of the facts

The action was brought against Indofurn, a company imported the carpets from Vietnam, a country without copyright law, and sold them in Australia for up to $4000 each.

The artists whose works were reproduced without consent were all Aboriginal artists including George Milpururru. His work named Goose Egg Hunt which was reproduced on the carpets. The other works reproduced are from other artist Banduk Marika, Tim Payunka, Ngaritj, Gamarang, Jangala, Tjapaltjarri and Wamut.

When a salesperson have bought the carpets, they contacted the National Indigenous Arts Advocacy Association (NIAAA) because he wanted to know whether the “Aboriginal carpets” for sale in the store were authentic. When staff at NIAAA saw the carpet, they identified them as copying the original work of well-known Aboriginal artists who are mentioned above.

Banduk Marika is herself an international artist also. Her works were reproduced from an education portfolio of Aboriginal artwork produced by the Gallery in 1988. According to the evidence given to the Court, the portfolio was at the carpet factory in Vietnam when a director of Indofurn first visited it.

In June 1992, after production and importation of the carpets, Indofurn sought advice on copyright permission from the Aboriginal legal service of Western Australia. A letter was written to NIAAA informing them of the reproduction of their paitings and the importation of the carpets. The letter enclosed photograph of the carpets and details of the artists together with a cheque for Australia $750 (represent 8% of the landed cost of A$180 per carpet). This letter was addressed incorectly and was never received by NIAAA.

In November, Indofurn send a copy of the letter to NIAAA. Staff at NIAAA contacted the artist to let her know about the carpets. The artist expressed outrage and refused permission and aought assistance from NIAAA to take action against the illegal importations. NIAAA returned the cheque and commenced action

b, Traditional knowledge

Banduk’s work is central to the cultural heritage of her people, the Rirratingu clan. She created the work in 1986. By drawing original art onto plated, she made a small number of prints and one of them was purchased by Jennifer Isaacs who reproduced the print with the artist’s permission in her book.

Banduk’s copyright of her artwork: the image is about a folk story if the Rirratingu clan. Her rights to use this image arise by virtue of her membership of the land owning group. Her father is the leader of the Rirratingu clan until his death. Her father had givin permission onto Banduk to depict the image. Although Banduk has the right to depict the image, she must be cautious of its reproduction, and inparticular, any commercial exploitation. Therefore, the case opposed to the cultural use of the central imagery and underlying knowledge in her work.

c, Customary laws and regimes

Under Aboriginal law, the traditional owners have the collective authority to determine whether these images may be used in an artwork, by whom the artwork may be created, by whom it may be published, and the terms, if any, on which the artwork may be reproduced. The extent to which an artwork bearing a pre-existing design can be reproduced will depend upon the subject matter of the work. For instance, an artwork that is associated with a public story or ceremony might have fewer restrictions than an artwork that embodies a dreaming or cration story.[24]

d, Decision-making and consent

If a story or design is reproduced without the permission of the traditional custodians, it is the responsibility of the traditional custodians (or owners) to take steps to preserve the dreaming and to punish those responsible for the breach. The court noted:

“If permission has been given by the traditional owners to a particular artist to create a picture of the dreaming, and that artwork is inappropriately used or reproduced by a third party, the artist is held responsible for the breach which has occurred, even if the artist had no control over or no knowledge of what occurred.”25

There are severe consequences for misuse of artwork without permission. According to Banduk Marika, in the past the offender could be put to death. However now there are other forms of punishment including taking away the rights to participate in ceremonies, the removal of the right to reproduce designs of that or any other story of the clan, being outcast from the community, or being required to pay money. Other evidence in the case noted being speared as another possible consequence.[25]

2.                Use of Trade Marks to protect Traditional Cultural Expressions
   1.          The protection of TCEs with Trade Mark

Trademark Law is used to protect TCEs in designs, icons and symbols. Trademark can also be considered as a form of possesion, gives the right owner the power to prevent others from using TCEs in a bad way. Law system gives so many chances for the protection of TCEs in indigenous perspective and traditional marks. Only some drawbacks are the request of a specific form when registering and renewing the trademark protection, opposition and invalidation as well.[26]

The regulations on industrial designs offer the protection for TCEs such as graphical marks. The modernity and originality criteria are hard to adjust with the natures of TCEs, because they can go back for many years. The duration is also limited and we also need to consider the problem raised from the owner and their rights.

The regulations on geographical indications are suitable for protection of TCEs because they can be designated for a territory than an individual person. This kind of protection can be applied only to specific vivid form of folklore products.

The concept of unfair competition provides the protection against wrongful commercial use in general and against industries in particular because the profit from TCEs may not regard to their original use.

The protection of TCEs by the sui generis system led to the adoption of the UNESCO/WIPO Model Provisions (1983) which intent to work together with the national law. The provisions build up the principle of the protection of TCEs[27], the definitions of TCEs[28], and make their use subject to authorization with certain exceptions[29]. They make compulsory to mention the source of the TCEs[30] establishing the procedure for the grant of authorization by the competent authority[31]. They also contain a reciprocity cluase for the protection of TCEs[32].

On the fundamental of the Model Provision and the suggestion of UNESCO for the protection of traditional culture and folklore (1989), several States, particularly developing countries, introduced some measures for the preservation and protetion of TCEs.

The requirement of a new international instrument has been newly acknowledge by the UNESCO/WIPO world forum on the protection of folklore (Thailand 1998). The WIPO Intergovernmental Committee in Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore was adopted in 2000[33] and has made an important progess in this field. The Secretariat of WIPO has raised up a questionare on national knowledge and some research on this problem as well, therefore subsequently to conduct several activities for the legal protection of TCEs. The TRIPS Council[34] was also instructed to handle this issue.

The WIPO Intergovernmental Committee at its sixth session decided to develop an overview of policy and core principles for the protection of TCEs. The draft prepared by the WIPO Secretariat is now extended for more comments and suggestions and contains the provisions for the protection of TCEs, either the objectives or general principles. According to this draft, the benefit from the protection of TVEs should goes to the indigenous people and traditonal cultural communities.[35] The provision containing the acts of misappropriation reflects a combination of exclusive and equitable remuneration rights in respect of different forms of cultural expressions.[36] The rights are exercised by the communities or by an agency acting at the request and on behalf of the community.[37] Exceptions and limitations for specific purposes (teaching, research, private use, criticism, archives etc) are suggested.[38] Protection of expressions of folklore is not subject to any formality but a registration system is possible for expressions of folklore of particular cultural or spiritual value.[39] In cases of breach of protection civil and criminal remedies should be available.[40] The protection does not replace and is complementary to protection applicable to expressions of folklore and derivates thereof under other intellectual property laws or any other legislation.[41]

1.      The protection of TCEs with certification marks and collective marks

A certification mark is a symbol or a sign which are used to distinguish goods and services which contains a specific quality or characteristic. The certain nature may involve the geographic origin, quality or material used, or the type of production and manufacture.[42] Use of the mark is certified by the registered owner of the certificationmark, or by representative organizations who are approved by the registered owner in accordance with the rules for use.

Certification marks convey the message that the requivalant goods or services have been tested or certified by the registered proprietor of the mark as to characteristics such as the origin, material, mode of manufacture of the goods or performance of the services, quality or precision.[43] They will not sufficiently present the original trade. Certification marks can transmit knowledge on natural conditions that support the production of the protected goods. Such considerations are giving a developing importance in consumer decisions. For example, in many countries the public will take into account the ethical considerations as the absence of child labour and good pratices in animal care, together with environmental concerns including the sustainable use of resources.

Collective marks are a recent addition to the Trade marks regime.[44] A collective trade mark is a sign used in relation to goods and services provided in the course of trade by members of an organization, to distinguish their goods and services from the non-members.[45] Like normal trade marks, collective marks are being used to indicate the trade origins of the goods and services rather than indicating that the goods and services have a specific standard. However, the main source presented in the case of a collective mark is not a single trade source but one comprising te members if the association which has registered the collective mak. The registration is not for trade marks which are used only to point out the membership of an organization or any others. The trade marks must be applied to goods and/or services.

Unlike with collective marks, there are no requirements for improving regulations to rule the use of a collective marks. Only members of the organization in whose name a collective mark is applied for can use the collective mark. A member of an organization in whose name a collective mark is registered will not have the right to prevent the others from using the same trade mark, unless the use does not comply with any regulations of the organization owning that trade mark.[46]

Collective marks are often given to an organization of traders to show that a member belongs to the organization[47] and to distinguish the goods or services if members of that organization from those of others. They also help to indicate trade origin although the definitions are diferrent and various from country to country. They can be registered in the name of a collective, for instance an association of producers, manufacturers, traders or service providers. Moreover, a collective mark can be made to be used by all members of the so-called association. In this case, there can be common use of the mark. The organization may set their own standards that require the members must meet when using the mark.

2.1.2. The protection of TCEs with geographical indication

Geographical indication present another form of IP to protect TCEs. Article 22 of the TRIPS Agreement shows that a geographical indications as ‘indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin’.[48] Under Article 23 of the TRIPS Agreement, additional protection is for spirits and wines in order to help the EU, for example, can have a strong export market.

One form of GIs is the ‘appellation of origin’. Under the Lisbon Agreement, ‘appellation of origin’ means ‘the geographical name of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors’.[49] Some examples of appellations of origin are ‘Bordeaux’ for wine and ‘Lentilles Vertes Du Puy’ for lentils.[50]

A trade mark including false geographical indications may be opposed.[51] Geographical indication for goods originating in a particular country, region, or location of that country indicates that the sign is recognizable in that country as a sign which indicates that the goods:

•                    originated in that country, region or locality; and
•                    have a quality, reputation or other characteristic attributable to their geographic origin.[52]

Given that Indigenous peoples cultural expression reflects their belonging to land and territories, this may allow some scope for Indigenous people to use geographic indications for their clan names, and language words for regions.[53]

2.1.3. The protection of TCEs with passing off and misleading and deceptive conduct

The law of passing off is similar to the trade practices laws of misleading and deceptive conduct.[54] These laws are designed to protect the fame of a business from misrepresentation. The classic passing off situation is where one trader represents to the public that his/her goods and services are that of another. However, a range of representations are now actionable, including:

•                    misrepresentation as to the source of the goods and services;[55]
•                    misrepresentation that there is some sort of connection or association with another person’s business, whether by way of partnership, sponsorship or licensing;[56]
•                    misrepresentation that there is a connection or association with another person’s images, characters, and personalities;[57]
•                    deceptive or confusing use of names, descriptive terms and other indications to persuade purchasers to believe that goods and services have an association, quality or endorsement that belongs or is associated to the goods and services of another.[58]

Passing off may be an avenue for Indigenous holders of unregistered trade marks if the following principles of passing off are met:

•                    the business or its goods have acquired a certain goodwill and reputation; [59]
•                    the actions of the defendant have caused, or will cause, the consumers of the plaintiff’s business to believe that the defendant’s goods are those of the plaintiff; [60]
•                    as a consequence of the misrepresentation, the plaintiff has suffered or is likely to suffer injury in his/her trade or business.[61]

An owner of a trade mark can take actions of passing off, and misleading and deceptive conduct, against parties who use similar marks. Usually these actions are brought to court together. Indigenous traders, including arts organisations, are gaining reputations as producers from specific regional areas and may therefore be able to show that they have established goodwill or reputation as Indigenous art and cultural material producers. Consumers are purchasing Indigenous arts and cultural products on the strength of this reputation.

2.            Indigenous use of Trade marks

Indigenous peoples use Trade marks to identify various goods and services, including arts, cultural services, food preparation, medicines, tourism services, Indigenous run-business, and Indidenous government agencies.[62] The below types of marks are included in the Register of Trade marks:

•                    Indigenous words and designs;
•                    English words that have a special meaning for Indigenous people. For example: the word “dreaming” is an Engish word used to describe Indigenous traditional concepts. This word has been incorporated into Australia culture. For instance, around 90 applications have been registered for trade marks including the word “Dreamtime”.
•                 List of English words from indigenous languages of the Americas[63]

Dreamtime 90 applications received including both word and combination image marks. 15 registered have been registered and 9 are pending. Goods and services include bedding, Aboriginal arts and craft products, milk products and jewellery.

Aboriginal 31 applications lodged – both word and combination image marks. 6 registered and 9 pending. Good and services include photo frames, cultural festivals, notepads, bookmarks and stationary.

Indigenous 9 applications lodged – 2 registered and 3 pending. Goods and services include sport programs; clothing, footwear, headgear; food prepared from native food and vegetables.

Piccaninny 7 applications lodged. Some very old – five removed and two never registered.

Boomerang 91 applications received. 24 registered and 9 pending. First trade mark was lodged in 1931 word and image for musical instruments. Also used for pillows, Manchester, tool boxes and sporting articles.

Coolamon 1 received and only one registered trade mark for luggage.

Aboriginal person images 65 trade marks applications which include images of Aboriginal people were listed on the register. Many old ones have been removed. 24 current trade marks incorporate images of Aboriginal people. 21 registered and 3 pending.

Indigenous Words and Designs

The Indigenous words ans designs are a consecutive expression of the cultures of the Indigenous peoples’ culture and representative for the connection between the Indigenous people and their land. For example, language words and clan names such as Eora, Arrente (Aranda), Monaro, Uluru and Wik are important indentifies of Indigenous peoples.[64]

Indigenous Cultural Festival

Some Indigenous organizations have been using trade marks for Indigenous festivals and concerts. For example, the National Indigenous Arts Advocacy Association (NIAAA) hosts an annual concert on Australia Day sbout Indigenous talent in music, dance and visual arts. NIAAA has registered “Survival Concert” as a trade mark in class 41 for “Entertainment services, being an annual national Indigenous concert and fair”.[65]

3.  Plant, animals and medicinal knowledge trade marks

There have been some efforts by Indigenous communities to trade mark Indigenous words related to plants or animals to protect them against the commercial exploitation by non-Indigenous bussiness.

Some cases will be cited here as to clarify how this system works to protect Indigenous knowledge in the field of plants, animals or medicinal. The Bandjaland Aboriginal Coporation applied for the registration of trade marks for the words “Gung-guyar” and “Bulam” which are the name of soap brands, perfume, oil and body lotions.[66] All these words are translated as “tea-trea” in the Bandjalng Aboriginal language. After register, IP Australia required the clarification on the mark’s ability to distinguish mainly because if the products were made from tea-trea, the use of those words would be used only for discription. This kind of problem can be handle by showing that the use of marks are unique. For this case, there was no reply to the report. Therefore, the trademark registration was missed.

Another example is the application by Coen Regional Aboriginal Corporation to register “Lemon Wardanee” for edible oil and spices. The word “Wardanee” is an Aboriginal word for Eucalypt.[67] The trade mark hence could not proceed.

Art Centre Trade Marks

For the purpose of promotion, creation, distribution and sale of Indigenous arts and craft, many countries has built up the Art Centre for Indigenous Arts. These centre use trade marks in the course of their trade. Many arts centres use the common law trade marks. For example, Munupi Arts has a logo that they put on letterhead, invoice and promotion material. The marks is not registered but has been in use by the organization for over ten years. Munupi incorporate the logo into the promotion and labelling of artistic works.[68]

In recent time, some of the Centres have registered their mark with national IP system. For instance, Desart is a regional arts organization based in Alice Spring in Australia. They have a trade mark which is used by their members to promote the material for original artistic works and for licensed manufactured products. Desart has applied in many kinds of products (classes) relating to the sale of Indigenous arts.

One another Indigenous arts centre have registered their own trade marks. They are Keringke Arts Aboriginal Corporation, a fabric company. “Keringke” is an Arrente word meaning “Kangaroo Tracks”.[69]

Indigenous peoples have an important role envolving in international law and policy. But many of their rights are still not secured and protected. Many Indigenous peoples claim global and domestic legal systems are invalid since they don’t have to be granted rights they have always possessed. Regardless, they are participating in defining their rights in international law and national law as well. There would be a development in the protection process as they pressure the governments to recognize their basis rights of self-determination and sovereignty.

3. The protection of TCEs with Industrial Designs

3.1. What is design?

A design is the “feature of shape, configuration, pattern or ornamentation applicable to an article, being feature that, in the finished article, can be judged by the eye, but does not include a method or principle of construction.”[70] In a legal sense, an industrial design constitutes the ornamental or aesthetic aspect of an article.[71] An industrial design may consist of three dimensional features, such as the shape of an article, or two dimensional features, such as patterns, lines or color.[72]

A design must be registered then ca be protected. In many countries, there is a system of registration for designs. For example, IP Australia receives around 4.500 applications each year to register design.[73]

If the application meets all the requirements, it will be accepted for registration. If not, the Designs Office will send out a report to the applicant notifying it of any objections that need to be resolved. The Act allows an initial twelve months from the Design Examiner’s first report for the applicant to meet any requirements that have been identified. A further three months is available.

A registered design gives the registered owner a legally enforceable exclusive right to use the design and to prevent others from using the design without the permission of the registered owner.[74] The registered owner can take action in court for infringement by a third party if the latter uses his or her registered design without permission.[75]

The rights to a design are a form of personal property that can be assigned and licensed to others.[76] There are two arguments for the protection of designs. Firstly, creators of designs should have the right to benefit from their own work and it would be unfair for others to take advantage of that creativity without the creator’s permission, and secondly, the protection of designs is said to directly encourage creativity and innovation.[77]

Requirements of Registration

To be registrable, a design must be:

• “new” or “original” at the priority date;[78] and,
• applied to an article.

A design must be “new” in that it is not known or has not been previously used. A design would be considered “original” if it has never been applied to a particular product, although it may have been applied to another type of product.[79] A design is not registrable if, before the date of the application for registration, it was made known to the public, or articles bearing the design were being offered for sale. Additionally a design can only be registered in relation to an article, therefore it is not possible to register the design itself unless it is applied to an article.

A registered design is infringed:

• where an exact copy of the design is used on an article in respect of which the design is registered;
•  where an obvious imitation of the design is used on an article in respect of which the design is registered; and,
• where a fraudulent imitation of the design is used on an article in respect of which the design is registered.[80]
  2.  Relevance of Design law in protecting indegenous designs

What is protected here are the design elements in articles mass produced by an industrial process. An industrial design is capable of registration if it is new and not contrary to public order or morality. The procedure for application for registration of a design is basically the same as that for the grant of a patent. The duration of the registration of a design is five years, but may on the payment of a renewal fee be renewed for two further consecutive periods of five years.

It would appear that indigenous knowledge in this category would not meet criteria for registration as industrial designs.

Indigenous Designs and Designs Law

The Working Party on the Protection of Aboriginal Folklore, published in 1975, required the adequacy of existing Copyright and designs law and “the need and nature of legislation required for adequate protection of Aboriginal artists”.[81] The Copyright Act protects an author’s work but this is an individual right which is likely to conflict with the traditional rights held by communities under Aboriginal customary law.[82]

Design law protects registered designs, either aesthetic or functional, based on the shape, form, appearance, pattern, ornamentation and configuration of a product or article. Protection is afforded to aesthetic designs for a period of 15 years, and to functional designs for 10 years.

Indigenous designs could be protected using industrial design law. However, there are certain factors that should be taken into account if this protection and commercialisation has to take place in a fair manner, as outlined in recommendations below.

It is recommended that design legislation be adapted to protect TK, with the following in mind:

• Traditional literary and artistic productions must be protected against unauthorised reproduction, adaptation, distribution and performance, including insulting derogating and/or culturally and spiritually offensive use.

• Handicrafts and other cultural goods should be protected using, for example, their “style” (GI, certification and collective marks can also be used). The recent UNESCO convention on the protection of cultural goods is illustrative of this point.

• Prevention of false and misleading claims as to the authenticity or originality and failure to acknowledge source (unfair competition and GI).

• Defensive protection of traditional signs and symbols. A community’s secret or sacred place may be protected defensively. The community may also register a symbol or name as a trade mark or design so as to prevent use by third parties. This is called defensive registration.

• An Advisory Board or authority should be established to advise the Registrar regarding traditional names or symbols in order to prevent unauthorised registration. Traditional communities could seek representation in the Advisory Board, based on their area of expertise.

What types of Indigenous designs are registered?

There are still many kinds of hand-crafted items from Indigenous peoples that can be registered as designs. All the items have to meet the requirement for registration.

The Designs Act provides limited protection for Indigenous traditional designs. As discussed above, Indigenous design is all about cultural process and belonging. Therefore, the art of making carvings, sculptures, baskets is part of an overall process. It is impossible to register the rights to produce a particular design and have exclusive rights against third parties making any other type of that design. Protection will only be limited to the features of that solely article and any person could make another shape or style, apply it to the article and have a registrable design.

[1] Leaffer, M. A. (2010). Understanding copyright law. LexisNexis.

[2] http://www.wipo.int/copyright/en/.

[3] John M.Kernochan, Imperatives for Enforcing Author’s Rights, 131 Revue Internationale du Droit D’Anteur [R.I.D.A] 181 (1987).

[4] Leaffer, M. A. (2010). Understanding copyright law. LexisNexis.

[5] https://en.wikipedia.org/wiki/Trademark

[6] http://www.wipo.int/trademarks/en/

[7] Minding culture – prepared by Ms. Terri Janke for WIPO.

[8] Section 37, Copyright Act, WIPO, 1968.

[9] Section 36, Copyright Act, WIPO, 1968.

[10] Section 115(2), Copyright Act, WIPO 1968

[11] Prince Albert v Strange (1849) 2 DeG & Sm 652.

[12] Section 116, Copyright Act, WIPO 1968

[13] See 12 above

[14] See 10 above

[15] See 10 above

[16] Section 115(4), Copyright Act, WIPO 1968.

[17] Section 132,133, Copyright Act, WIPO 1968

[18] Although the Berne Convention does not explicitly say so, Art 2(1) read together with Art 2(5) appear to suggest that protected works must be intellectual creations. See also, Ricketson S,The Berne Convention for the Protection of Literary and Artistic Works: 1886 1986 (London: Centre for Commercial Law Studies, 1987)

[19] Chapter 2, Page 601 [1946]

[20] Ibid, Page 609.

[21] See Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), art 14(1); WIPO Performances and Phonograms Treaty of 1996 (WPPT), Arts 6-10.

[22] Berne Convention (Paris Act), Art 7(1)

[23] Berne Convention (Paris Act), Arts 7(2), (3) and (6)

[24] Carpenter, M. M. (2004). Intellectual property law and indigenous peoples: Adapting copyright law to the needs of a global community. Yale Hum. Rts. & Dev. LJ, 7, 51.

[25] M* and Others v Indofurn Pty Ltd and Others (1993) 130 ALR 659 at 663.

[26] http://network.icom.museum/fileadmin/user_upload/minisites/icme/pdf/Conference_papers/2004-2005/ICME_2005_kallinikou.pdf

[27] Article 1 UNESCO/WIPO Model Provisions (1983)

[28] Ibid, Article 2

[29] Ibid, Aritcle 3 and Article 4

[30] Ibid, Article 5

[31] Ibid, Article 10

[32] Ibid, Article 14

[33] http://www.wipo.int/tk/en/igc/

[34] https://www.wto.org/english/tratop_e/trips_e/intel6_e.htm

[35] Article 2, Intergovernmental Committee on IP and Genetic resources, Traditional Knowledge and Folklore Sixth Session.

[36] Ibid, Article 3

[37] Ibid, Article 4

[38] Ibid, Article 5

[39] Ibid, Article 7

[40] Ibid, Article 8

[41] Ibid, Article 10

[42]  Section 169(b),Trade Marks Act 1995 (Cth).

[43] See discussion in the Chalk & Dunlop, 2009, page 473.

[44] Part 15 of the Trade Marks Act 1995 (Cth) introduces collective trade marks as a new category of trade mark.

[45] Section 162, Trade Marks Act 1995 (Cth).

[46] Section 165, Trade Marks Act 1995.

[47] Cornish & Llewelyn 2003, p. 864

[48] The protection of GIs is not mandatory under the TRIPS Agreement, and can be addressed through trademarks or collective marks.

[49] Article 2.1, Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration (Lisbon, 31 October 1958), as revised at Stockholm, 14 July 1967, and amended 28 September 1979, 923 U.N.T.S. 205 (entered into force with current regulations 1 April 2002), available at: http://www.wipo.int/export/sites/www/lisbon/en/docs/lisbonagreement.pdf (accessed 3 February 2010)

[50] See WIPO, ‘Search Appellations of Origin (Lisbon Express)’ database, available at http://www.wipo.int/ipdl/en/lisbon/search-struct.jsp (accessed 24 March 2010).

[51]  Section 61, Trade Marks Act 1995 (Cth

[52]  Section 6, Trade Marks Act 1995 (Cth).

[53] Ibid

[54] Section 52 and 53 Trade Practices Act 1974 (Cth).

[55]  Bollinger v Costa Brava Wines Co Ltd (1960) RPC 16.

[56]  Hogan v Koala Dundee Pty Ltd (1988) 12 IPR 508.

[57]  Ibid per Pincus J.

[58]  Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414 at 445; at 214; at 516 as cited in  Jill McKeough, Intellectual Property: Commentary and Materials, (2nd ed) Law Book Company, Sydney 1992, p 470.

[59] Ibid, see 7

[60] ibid

[61]  Section 53(d), Trade Practices Act 1974 (Cth).

[62] Ibid, see 7

[63] https://en.wikipedia.org/wiki/List_of_English_words_from_indigenous_languages_of_the_Americas#References

[64] Ibid, see 7

[65] Registered Trade Mark #656243

[66] Bandjalang Aboriginal Corporation, March 2001.

[67] Trade Mark #732493

[68] Correspondence with Munupi, February 2001.

[69] http://keringkearts.com.au/artworks/

[70] Section 4(1) Designs Act 1906 (Cth).

[71] http://www.wipo.int/designs/en/

[72] Ibid

[73] Interview with Hugh Ness, Deputy Registrar, Designs, IP Australia.

[74] Section 25, Designs Act 1906 (Cth).

[75] Ibid, see 7

[76] Section 25C, Designs Act 1906 (Cth).

[77]  Dr. John Phillips, Protecting Designs: Law and Litigation, The Law Book Company Limited, 1994, pp. 6 – 7.

[78] “Priority Date” refers to the date of application.

[79] Section 17(1) Designs Act 1906 (Cth).

[80] Malleys Ltd v J W Tomlin Pty Ltd (1961) 35 ALJR 352.

[81] Report of the Working Party on the Protection of Aboriginal Folklore, Australian Government Printing Service, Canberra 1981, at p. 3.

[82] Ibid, Page 13