(uniquement en anglais)
par Dana Surtees
Abstract:
There is a longstanding debate over the propriety of using Western Intellectual Property Regimes, particularly trademarks, to protect Indigenous cultural symbols. While the Canadian trademarks framework offers both offensive and defensives protection, it fails to provide baseline protection against Indigenous cultural appropriation. Common law and statutory avenues for challenging marks are limited in application, and function conversely to shield Western traders. Although non-traditional marks may offer limited avenues for protection, they too perpetuate colonial ideologies, failing to provide meaningful protection or uphold Indigenous autonomy. By analyzing the shortcomings of the current Trademarks Act, this paper argues for an expansion of defensive protections within the exiting scheme. Drawing on comparative insights from New Zealand’s Trademark Act 2002, and the World Intellectual Property Organization’s recommendations for a parallel sui generis regime, this paper proposes a dual-framework approach to reconcile trademark law with Indigenous perspectives to promote cultural integrity, over commodification.
1. Introduction
Washington Redskins, Cleveland Indians, Edmonton Eskimos – these names represent more than just sports teams; they embody a longstanding history of Indigenous cultural appropriation, caricature and subjugation.1 Ongoing controversy in the sports world over the treatment of Indigenous culture has spurred international discussions regarding the adequacy of protections against commodification of Indigenous identity, language, and symbols.2 These criticisms often center around harm and loss of control over the sanctity of Indigenous tradition, exacerbated by the failure to acknowledge historical oppression of these communities.3 Indigenous Peoples seeking remedy may turn to intellectual property regimes (IPR), particularly trademarks, only to be disappointed. While recent amendments to the Canadian Trademarks Act, RSC 1985, c T-13 (TMA) have broadened the scope of protection to include sounds, smells, and holograms, this expansive definition has failed to address the long-standing concerns that Indigenous likeness, culture, and knowledge are too often commodified.4
Defining Indigenous intellectual property (IP) is difficult, however, scholars often focus on two concepts: traditional knowledge (TK) and traditional cultural expression (TCE). TK includes cultural heritage, practices, and knowledge systems cultivated by Indigenous people, including their skills and innovations.5 TCE consists of the manifestation of TK, including both the tangible and intangible constructs that are passed down between generations, and which help form their spiritual identity including dances, traditions, songs, and artwork.6 Both can be represented by signs and symbols, and together underscore the Indigenous identity.7 This unique property construct stands in contrast to Western conceptions of property which emphasize individual ownership and commodification.8 Consequentially, there is a longstanding debate over whether IPRs are appropriate to protect Indigenous culture, symbols, stories, and traditions.9 Within the trademark framework, scholars often highlight the difficulties of conforming to Eurocentric definitions under this scheme as a reason for its lack of protection.10 However, the goal of the trademark system is both to provide benefit, and to provide protection over reputation and against third-party use.11 Thus, instead of forcing Indigenous Peoples to conform their cultural identities to fit the Western scheme, we must explore how this framework can be leveraged to protect their identity in an inherently colonized society.12 In its current state, the TMA fails to reflect this principle, offering inadequate protections against commodification, regardless of reciprocal use or registration. These shortcomings must be addressed to bring the scheme in line with principles of reconciliation. Therefore, this paper seeks to display the gaps in the TMA concerning protection and remedy against Indigenous cultural appropriation, suggesting reform to provide baseline protection while embracing the unique nature of Indigenous IP, rather than using the existing framework as a justification for exclusion.
This paper begins by exploring the issue of appropriation within the existing trademark scheme, suggesting the suitability of reform in this space. It then moves through the current remedies available in the TMA, focusing on both challenging existing marks, and adopting marks on their own merits. It then concludes with a proposal of reform to bring the scheme in line with the goals of reconciliation, drawing from the New Zealand Trademark Act (NZ Act)13 alongside a parallel sui generis legislation to supplement the inherent gaps in Western IPRs. Together, these proposals demonstrate the need to shift the focus from positive rights, to baseline protections against cultural commodification to protect the Indigenous identity.
2. Cultural Appropriation and Trademarks: A misfit or a misuse?
While numerous definitions of cultural appropriation, or misappropriation exist, the common theme is “the taking–from a culture that is not one’s own–of intellectual property, cultural expression, artifacts, history and ways of knowledge”.14 The World Intellectual Property Organization (WIPO) has refined this definition in the context of Indigenous appropriation to include the unfair or illicit acquisition of TK/TCE, and derivation of commercial benefit therefrom.15 This is often associated with a power imbalance as the more dominant, Western culture takes, profits, and harms the artistic, musical, and innovative productions of Indigenous people with no concurrent benefit, exacerbating historic subordination of this population.16
Failure to acknowledge this oppression in the marketplace, where traders capitalize on Indigenous cultural persona, perpetuates the disparaging treatment towards Indigenous people, subsequently prolonging harm. Where the use of Indigenous TK and TCE is in the commercial sphere, this appropriation deprives Indigenous communities of potential economic benefit, instead putting money into their colonizer’s pockets.17 In many cases, however, this is not the primary concern of Indigenous Peoples’ who seek protection or remedy.18 Rather, they often seek control over the dissemination of their culture to preserve its intrinsic identity considering many sacred traditions and rituals often commercialized, are not meant to be disseminated.19 Permitting this appropriation leads to devaluation of the traditions and symbols sought to be protected by bringing them into the public sphere for mass consumption. The resultant misrepresentation of culture or identity is met with fear of eventual cultural extinction.20 A stark example lies with the Navajo people of the United States who have largely abandoned efforts to protect their TK and TCE because relentless appropriation has led them to believe it is now connected with evil.21 Reflecting a unique harm to Indigenous people, this propagates commodification which has been existent since colonization, perpetuating harm associated with the failure to recognize sovereign claims.22 Outside of cultural harm, continual appropriation in the media contributes to the generational physical and mental harm experienced across these communities.23 As a result, Indigenous Peoples do not merely seek to avoid third party economic gain, but basic control over use of their Indigenous persona and culture as a preservative measure to uphold the basic tenants of their identity.
In many ways, the trademark scheme seeks to protect against similar harms.24 Functioning as trade source identifiers, trademarks protect distinctive indica which differentiate one’s goods and services from another.25 Not only does this help consumers identify goods, but it prevents the diversion of economic opportunity resulting from potential confusion, simultaneously providing control over the reputation there associated.26 As a result, there are both positive rights, associated with economic benefit, and defensive rights, which are centred in the prevention of third-party use and diminution.27 The similar emphasis in control over one’s reputation echoes the Indigenous perspective seeking protection under this scheme, notwithstanding the differences in underlying definitions of IP. However, the scheme is fraught with gaps which permit the most egregious form of cultural appropriation, where an outsider uses TK and TCE against its rightful owners.28 Indigenous people are thus forced to watch as their culture is continuously appropriated, with minimal remedy, highlighting the need for protection despite disparities in property ideals.
3. The Trademark Act as a Defense Mechanism
While registration of a traditional trademark protects against cultural appropriation by preventing the use of confusingly similar marks for comparable goods or services, the inherent difficulties in registering Indigenous TK and TCE often preclude this sort of protection.29 Although the propriety of registration falls outside the scope of this paper, instead focusing on the protective mechanisms available notwithstanding registration status, the underlying difficulties underpin the obstacles faced when challenging a culturally offensive mark. Despite these barriers, there remains both defensive and offensive protections in the TMA which may prove useful. Defensive protections involve challenging a mark used by another trader, however, this approach has not yielded significant utility for Indigenous claimants. Alternatively, offensive protections have demonstrated some success, permitting Indigenous applicants to obtain non-traditional trademarks, such as certification marks and official marks, which subsequently prevent other traders from registration.30 Nevertheless, serious gaps and deficiencies in the principles underlying these marks raise questions about their utility. Analyzing the success and shortcomings of these avenues reveals their limitations which, not only permit cultural appropriation, but propagate sovereign ideals, questioning their adequacy in protecting against commodification.
3.1 Challenging a Trader’s Mark
Defensively, Indigenous parties may challenge a trader’s culturally offensive mark with the hopes of preventing subsequent use or invalidating registration. In particular, an action in passing off can be used to challenge both unregistered and registered marks.31 However, Indigenous claimants face difficulty succeeding under this cause of action as it requires use of a trademark by the claimant. Therefore, challenging marks through reliance on statutory bars to registration, such as descriptiveness32 or offensiveness,33 which do not necessitate reciprocal trademark use, may prove more successful for this group of claimants. Since these statutory bars only permit challenging registered marks, however, traders’ unregistered marks are left largely outside of reach, limiting utility of these remedies.
3.1.a Passing Off
Passing off is both a tort and a statutory cause of action under s. 7(b) of the TMA, based in the prohibition of utilizing the goodwill of another, leading to potential misrepresentation and subsequent damage.34 While it requires reciprocal use of a trademark which imposes inherent burdens for Indigenous peoples, there is no need for registration, removing some administrative burdens for communities to seek remedy.35 An action at common law requires the use of distinctive indicia indicative of trade source and associated goodwill. A greater threshold is required to succeed under s. 7(b) of the TMA, where the plaintiff must demonstrate use of a trademark as defined under the TMA. This requires that a sign, or combination thereof, be linked to goods/services in the normal course of trade.36 Consequently, many Indigenous claimants fail to satisfy these requirements as their symbols are not easily tied to particular goods or services that are openly traded, but are often representations of culture, disseminated for expressive purposes.37
Where sufficient use of TK and TCE as a distinctive source identifier is established, an Indigenous claimant may bring an action for passing off which involves meeting a three-element test.38 The first requirement is goodwill in the mark or indicia sought to be protected, distinctive of the source in the minds of the consumer, prior to purchasing the associated goods and services.39 Due to the communal nature of TK and TCE, distinctiveness poses an additional hurdle as the indicia may not indicate a single source, but rather a source community.40 It is possible this barrier is overcome through the doctrine of extended passing off, which differs from the traditional cause of action as it is established by group of traders with goodwill in a general class of good/services, as opposed to a single trader in their respective good/service.41 Intertwined with the second requirement for passing off–misrepresentation–the resultant likelihood of confusion is not related to source, but to intrinsic character and quality of the goods representative of this class.42 In the indigenous context, this may include representations as to its “genuine” Indigenous origin. While this doctrine supports the often-communal nature of Indigenous marks, protection under both classic and extended passing off is limited by the scope of goodwill.43 At minimum, consumers must believe the Indigenous group endorsed or authorized use of the mark.44 Otherwise, if consumers are not led to believe both products came from an Indigenous source, or are of similar character or quality, the claim will fail.45 Therefore, success is likely limited to where the trader is using a mark for the same goods or services as the Indigenous claimants. In the likely case Indigenous Peoples are bringing a claim based on interference with their unregistered mark, this too is limited to the geographic location where their mark has developed goodwill.46 With the dwindling of Indigenous culture across Canada, protection may be limited to a particular area or province, risking appropriation across borders as a result.47
The final requirement is damage which, in common law, can be presumed from the establishment of misrepresentation, owing to the economic harm and loss of control over reputation or opportunity.48 While Indigenous groups may demonstrate loss of profit, quantifying cultural harm poses a challenge, although it is by no means minimal. The inadequacy of this action was highlighted in Queneesh Studios Inc v Queneesh Developments Inc, a passing off case brought by a member of an Indian Band against the Comox Band over the use of the traditional name, “Queneesh”.49 The Supreme Court of BC declined to analyze the claim, stating that if there was any such enforceable proprietary interest, it did not arise out of the English common law.50 While between band members, this case demonstrates the court’s hesitancy in recognizing the existence of proprietary rights to ground this cause of action. While an action may be carefully crafted, the number of plaintiffs unable to capitalize exceeds the potential benefits that may arise from pursuing a claim which, where successful, prevents the use or registration of the confusing mark.
3.1.b 12(1)(b): Cleary descriptive or deceptively misdescriptive
A secondary ground for attack exists under s. 12(1)(b) of the TMA, which prevents registration of a mark that is “clearly descriptive or deceptively misdescriptive (…) of the character or quality of the goods or services in association with which it is used (…) or of the conditions or the persons employed in their production or of their place of origin”.51 Utilizing this provision, an interested party may oppose an application, or invalidate a registered trademark without need for a reciprocal mark.52
In the Indigenous context, a challenge can be brought claiming that a culturally appropriated mark is deceptively misdescriptive of the character or quality of goods as it falsely implicates Indigenous association. However, this is only available to the extent that the trader utilizes the Indigenous name to make a representation as to the intrinsic quality of the good, which deceives the general public.53 It would not be sufficient to use an Indigenous word or caricature, but instead something like “Tribal Vanilla”, which suggests the composition is linked to Indigenous heritage, thereby demonstrating a significantly limited scope.54 Alternatively, a challenge may be brought where there is false implication of Indigenous Peoples in the production of a good or service, often by use of a deceptive noun.55 For example, the use of FIRST NATIONS associated with clothing was held to be deceptively misdescriptive, suggesting that the wares were produced by “aboriginal peoples”.56 This too delineates a narrow scope for success, and is met with inconsistent results as an identical mark has since been registered.57
Concerningly, any potential success under this provision is quickly minimized by the concurrent operation of s. 12(3) of the TMA. Under this provision, the trademark holder can overcome a successful s. 12(1)(b) challenge if the mark has achieved secondary meaning.58 While the result allows registration only within the geographic confines where it has developed distinctiveness,59 this provision advances the notions of colonization where settlers overtook Indigenous peoples, and their knowledge and symbols, wrongly turning it into something of their own. Success of this provision is, therefore, restricted to where a culturally offensive trademark has not gained a reputation, leaving highly publicized trademarks out of reach. Utility of this provision in protecting Indigenous culture is significantly questioned, capturing only those marks not familiar to the public, and subsequently allowing those which have gained popularity to continue overshadowing its rightful owners.
3.1.c 12(1)(e): Prohibited Marks – Scandalous, obscene or immoral
The final challenge against culturally inappropriate marks is through the prohibited marks section of the TMA. Under s. 12(1)(e), a mark cannot be registered where it violates s. 9 or s. 10 of the TMA. In turn, s. 9(1) states that “no person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely mistaken for” a list of prohibited marks. Indigenous claimants may find utility in the prohibition of a “scandalous, obscene or immoral word or device” under subsection (j) of the provision above.60 Using Indigenous language, imagery or symbols, could be considered offensive, and thus, one would assume at the very least immoral. However, the threshold for reaching this test, along with the Westernized and pragmatic societal views which transcend through the TMA, leaves little room for recourse.
The threshold for scandal, obscenity and immorality is ultimately subjective and dependent on the decision-maker. While the Trademarks Examination Manual provides a standard to be applied under this provision, these guidelines are not legally binding.61 In addition, the case law surrounding this issue is relatively limited. However, it has, been established that there must be evidence that a significant, or not insignificant, portion of the population finds offense with the mark or symbol used.62 Application of these standards often produces unpredictable results where profane marks including, BIG ASS, Full Titty, and FAT BASTARD BURRITO have all been successfully registered.63 The mark RUDE NATIVE stood unchallenged for its 20-year life course, demonstrating the rather permissive nature of the provision in the context of Indigenous protection.64 Moreover, the Westernized views that permeate through the act raises concern for inherent bias against Indigenous peoples. For instance, registration of VALLEY MOTHER OF GOD was twice denied because of its religious significance.65 In contrast, a snake logo associated with a well-known book which followers considered “of even greater importance than the bible”, was registered because outrage amongst this group was not sufficient to meet the threshold of the general public.66 This presents a risk for propagating a traditionalist view, protecting sovereign idealities while neglecting minority groups, such as Indigenous peoples, whose religious beliefs may fall outside of the Eurocentric norm, and where offense may not reach the general public.
The populous series of American cases under the US equivalent “disparagement clause” provides further insight into the application of these rules in the Indigenous context. This clause previously denied registration of marks which may disparage or bring into contempt or disrepute persons, institutions, beliefs or national symbols.67 It was subsequently deemed unconstitutional for violation of the Free Speech Clause of the First Amendment.68 This argument had previously been rejected by the district court upon challenge to the “Redskins” trademark, where the court held the mark may disparage Native Americans, notwithstanding the lack of use of the term in normal conversation for decades.69 Similar to the Canadian context where Indigenous people have been historically ostracized, even though words such as Eskimo are no longer in common use, their historic connotation may be sufficient to render its use objectionable. Although there have been no direct challenges to similar trademarks in Canada, there have been actions in the human rights context. At the Ontario Human Rights Tribunal, a member of an Indigenous tribe sought an injunction preventing the Cleveland Indians Baseball team from displaying their team name and “Chief Wahoo” logo while playing in Toronto because it was discriminatory.70 Ultimately the Court did not discuss the validity of the trademark, but acknowledged there was a serious issue to be tried whether this practice runs contrary to the Ontario Human Rights Code.71 Therefore, considering standards of morality must adapt to societal views, there is hope when looking at the threshold of the general public considering these are live issues in Canada.72 While complimented by increasing reconciliation efforts, these changes must be sufficient to overcome the often Eurocentric, traditional views of the ultimate decision maker.
Succeeding under this ground is, however, a double-edged sword. Once a mark is deemed offensive and prohibited, this may prevent subsequent adoption by the challenging party.73 While the limited Canadian case law does not consider the identity of the applicant when evaluating the mark’s validity, this analysis may be more nuanced in the Indigenous context when a later application is brought by an Indigenous group, as there is reduced concern for cultural appropriation. Borrowing from American jurisprudence, there is a suggestion that identity of the claimant may become relevant, especially when the party seeking recourse is a historically marginalized group. For example, the highly-debated case of Matal v Tam, upheld registration of THE SLANTS trademark, a term historically used to refer to people of Asian descent.74 The music group sought registration as a manner of reclaiming the derogatory term, and this reasoning was subsequently adopted in a similar case, granting registration of the DYKES ON BIKES mark as a term reclaimed by the LGBTQ+ community.75 These cases relied heavily on the First Amendment right to free speech such that their applicability in Canada may be limited. Nonetheless, to the extent they demonstrate that the party seeking registration of a prima facie offensive mark may inform the offense analysis, or render a once prohibited mark valid, they provide some hope of success in this area. While promising, the success of challenging a trademark based on scandal, immorality or obscenity remains influenced by subjectivity and the social landscape with concern for upholding Eurocentric views at the expense of Indigenous perspectives.
3.1.d Conclusion
Challenging a culturally inappropriate mark through passing off, or objections based on distinctiveness or scandal, demonstrates a framework which fails to deliver. Even if a challenge is successful against a registered mark, the outcome only prevents, or invalidates registration with no impact on subsequent use as an unregistered mark (absent accompanying infringement litigation).76 Therefore, these challenges offer minimal protection against ongoing appropriation, permitting relentless commodification of the culture sought to be protected, albeit without the protection of registration.77 Thus, notwithstanding the registrability of an Indigenous mark, the standard grounds to challenge an offensive mark are insufficient to defend against Indigenous cultural exploitation.
3.2 Adopting a Non-Traditional Mark
Aside from challenging another trader’s mark, Indigenous groups may seek protection against cultural appropriation through the advertisement of their own, non-traditional marks including certification marks or official marks. Both have been successfully used by Canadian Indigenous groups, creating a licencing scheme for third party use to control dissemination.78 Differing from traditional trademarks, certification marks permit use of a trademark if associated goods meet the prescribed standards, whereas official marks are a form of prohibited mark with perpetual protection.79 However promising, there are serious flaws in both systems which fail to protect adequately against appropriation, instead functioning contrary to the principles of reconciliation.
3.2.a Certification Marks
Certification marks are signs or combinations of signs used to distinguish goods or services of a defined standard, extending to the character and quality, working conditions, class of persons, or area within which the goods are produced or services are performed.80 Under s. 23 of the TMA, they may not be registered by a person who is engaged in the manufacture, sale, leasing, or hiring of the goods or services with which it is proposed to be used. Instead, a licence can be granted for others to use the mark in association with goods or services that meet the associated standards.81
This system provides both benefits and downfalls for the Indigenous population. It acknowledges communal ownership, allowing for collaborative oversight and establishment of defined standards for products associated with their culture.82 Furthermore, it permits control over who can use this mark and in what capacity, supervising the dissemination and potential dilution of TK and TCE.83 A notable Canadian Indigenous certification mark is the “Genuine Cowichan” mark, owned by the Cowichan Band Council, used in association with traditional Cowichan sweaters.84 To use this mark and market sweaters as “Genuine Cowichan”, traders must obtain a licence, and their products must meet the prescribed standards, set by the Cowichan Band. While this oversight is beneficial to protect integrity of the Cowichan name, there is limited recourse against traders who sell a similar product, replicating the design and material, without using the mark or acknowledging its existence and origin. This issue stirred controversy during the 2010 Vancouver Olympics after the Hudson’s Bay Company hired a third-party manufacturer to produce and sell sweaters identical to the unique Cowichan design, notwithstanding the existence of the certification mark.85 Although a licencing scheme was eventually entered into, other companies such as Aritiza or Bluenotes, have profited off of Cowichan-inspired sweaters, demonstrating a widespread practice of appropriation, regardless of the mark’s existence.86 While some consumers would be deterred with the lack of certification mark, many are unaware of its existence.87 Thus, where traders do not use the “Genuine Cowichan” certification mark, it fails to protect against knock-off’s of the underlying products meant to be protected. The effectiveness of the mark is ultimately influenced by the extent traders choose to adopt them. Simultaneously, the scope of protection extends only to the goods and services with which it is registered, providing no protection against the use of the “Genuine Cowichan” mark in relation to dissimilar goods, like Indigenous artifacts.88
A secondary issue is the requirement that the registering body, which consequently licences and profits from the mark, cannot be engaged in the sale or manufacture of said product.89 This too, can have benefits and setbacks for Indigenous groups. In the case of the Cowichan sweater mark, registered in the Band’s name, this restriction prevents the Band from producing and selling sweaters. Instead, they grant licences to members who build their own businesses selling genuine sweaters, reaping the benefits of the reputation that comes with authenticity.90 However, complications may arise where the certification mark is sought over something that cannot be easily individually produced and sold, or where the band is the sole producer, defeating the economic benefits of seeking registration.91 There have been instances where the government has sought certification on behalf of an Indigenous group to circumvent this issue such as the “Igloo Tag”. After registering the mark in 1958 as an internationally recognized symbol of authenticity for Inuit Art, the government transferred ownership to the Inuit Art Foundation in 2017, putting the mark worth over $3.5 million in the hands of Inuit peoples.92 Not only does this demonstrate an immense loss of control over both profit and standards associated with the mark, but also reinforces colonial legacies and questions of sovereignty, requiring the government to establish a certification mark, control its standards, and reap its financial benefits, ostensibly to protect Indigenous culture through the marks operation.
Therefore, certification marks may protect Indigenous heritage by allowing communities to establish standards for their discrete goods or services. However, their effectiveness depends on whether traders choose to use the mark, failing to catch those who market the underlying product with no reference to the source community. Concurrently, the underlying registration scheme supports historically oppressive ideals by limiting the scope of who may register and benefit from such marks, questioning its effectiveness in encouraging Indigenous oversight.
3.2.b Official Marks
Numerous Indigenous groups have successfully sought protection through the official mark scheme, extending from the Nisga a nation flag and the Cree Nation of Chisasibi crest to Snuneymuxw First Nation petroglyph designs.93 As a result, many scholars commend this framework as a viable option to protect Indigenous TK and TCE.94 These marks fall under the prohibited mark scheme such that once adopted, no person shall adopt any mark consisting of, or so nearly resembling it.95 Of importance for Indigenous groups is the prohibition over the adoption of “any badge, crest, emblem or mark (…) adopted and used by any public authority (…) as an official mark”.96 Once applied for, the scope of protection is wide as there is no process of examination. This negates the need for direct association with goods and services, distinctiveness, or evaluations into confusion, and offers indefinite protection with no need for renewal.97 Consequently, this scheme shows promise for Indigenous TK and TCE, removing many of the barriers which prevent remedy through the traditional registration process. However promising, the structure of the scheme currently works to proliferate ideas of sovereignty and governmental oversight owing to the concurrent requirement of being defined as a public authority, exacerbating the underlying issues it seeks to condemn.
To successfully advertise an official mark under s. 9(1)(n)(iii) of the TMA, applicants must meet a two-part test, demonstrating they fit the definition of a public authority.98 The first stage requires the entity to be subject to a significant degree of governmental control.99 It is not sufficient that the government merely overlook, but must exercise a continuous degree of influence over the group and their decision-making process.100 The second step requires the entity to provide a public benefit, which is defined broadly and can include some benefit that is shared with the public body.101 Evidenced by the success of multiple Indigenous official marks and relationship with constructs such as the Indian Act, many Indigenous groups meet this definition.102
Some may consider this a success for Indigenous people, providing a wide scope of protection over marks which may not be registerable otherwise.103 However, requiring the identification as a public authority under which the government exerts a significant degree of continual control, perpetuates the underlying theme of sovereignty. This forces recognition and prolongation of a colonial system, rooted in the appropriation of Indigenous peoples, culture, land, and communities.104 Instead of seeking to protect Indigenous culture, it reinforces their subordinate nature, implying that to achieve any sort of protection, it must be under the guise of governmental control. This contradicts the goals of reconciliation which advocate for the adaptation of systems of Indigenous self-governance.105 In fact, the Government of Canada has committed to working with Indigenous peoples to undo “federally imposed systems of governance (…) to facilitate the transition away from the Indian Act and toward self-government”.106 While a commendable goal, within the scheme of trademarks, this push towards self-government provides a paradox for Indigenous peoples: sacrificing this “public authority” status by reclaiming their individual identities may, in fact, undermine their ability to protect their culture using the most effective tool available, perpetuating the risk for cultural appropriation.
Building off the concerns of sovereignty, an additional complication arises from the prospective application of official marks. While they prevent users from registering a mark that so nearly resembles the official mark that it may be mistaken for it, across different goods and services, they do not prohibit prior users or registrants from continuing their use which precedes granting of an official mark.107 This significantly limits the official mark’s effectiveness in dissuading cultural appropriation, especially that which has been longstanding, and which has already caused significant harm due to their garnered reputation. To target appropriation, Indigenous groups are thus forced to proactively apply for official marks to keep them out of the hands of traders, abrogating their ability to be used in a reactionary way. This is further complicated by potential claims of infringement, where a trader who used a culturally appropriated mark, prior to the rightful Indigenous owners adopting it as an official mark, may succeed in opposing the Indigenous group’s application where used in relation to similar goods or services.108 As a result, there is a concern for continual propagation of culturally offensive marks, advancing the idea of gnaritas nullius, ornobody’s knowledge.109 Similar to the idea of terra nullius, this concept is prefaced on the idea that settlers came to occupy land where no knowledge existed, thus historic Indigenous traditions, TK and TCE were in the public domain such that they could be freely used.110 While this concept speaks to the root of cultural appropriation, it is a demonstration that the current regime does not recognize that people, traditions, objects, and symbols worthy of protection existed prior to colonization.
Outside of issues with the application of an official mark, Indigenous people may also encounter issues with existing official marks. One of the sought-after benefits of these marks is ease of application, as well as eventual perpetuity with no need for renewal. Moreover, the grounds of invalidity are scarce as, aside from potential claims of trademark infringement, the only successful challenges thus far have involved the applicant’s public authority status, or the lack of adoption and use.111 While beneficial for Indigenous groups who register their mark to keep it out of the hands of traders in perpetuity, there is a converse harm where an official mark has been registered by another trader that, itself is appropriating. While public authorities are less likely to adopt an offensive mark, Universities, also fall under s. 9(1)(n) of the TMA as entities who may obtain official marks.112 Given the saga with pro-football teams in the United States, it is no surprise this culturally offensive language extends into university sports. For example, Florida State University has advertised the mark SEMINOLE, a culturally offensive term to Native-Americans, and 8/10 of their active official design marks in Canada contain Indigenous caricatures. Because these groups are prescribed under the TMA, the only remaining ground of opposition without a reciprocal mark, lies in challenging adoption and use prior to application, significantly limiting any remedy.
Therefore, while the official mark system has provided some benefit to Indigenous peoples, this protection is based on erroneous themes of sovereignty and continues to propagate colonization and governmental control. This is complimented by an ironic system that may provide perpetual security for Indigenous people, while doing the same for their appropriators.
3.2.c Conclusion
While both certification marks and official marks have provided some positive protections for Indigenous people, their TK and TCE, there are significant gaps in both systems which fail to account for the unique subject matter. Both fail to address long-standing cultural appropriation, and instead perpetuate ideas of sovereignty and governmental control, contrary to the efforts of reconciliation, questioning the efficacy of the scheme so often commended for its protection.113
4. Advocating for Reform
Analyzing the current avenues for protection against cultural appropriation through the TMA highlights a significant failure to defend against Indigenous commodification. While the concepts of TK and TCE may be difficult to integrate into trademark registration, the underlying purpose of trademark law is both offensive and defensive, and should not be treated as mutually exclusive.114 Instead of using these differences as justifications for prolonging appropriation, it essential to expand defensive mechanisms of the scheme to protect Indigenous TK and TCE in instances where the proper owners are unable to do so themselves. This avoids the need to challenge under the existing grounds which fail to adequately protect their culture. The necessity of reform has been recognized internationally, suggesting the need for a patchwork approach including legislative reform, such as in New Zealand, alongside a sui generis regime, which reflects the inherent complexity of Indigenous culture. Both approaches are necessary to bring the TMA in line with principles of reconciliation and the broader goal of dissuading cultural commodification.
4.1 Lessons from New Zealand’s Trade Mark Act 2002
The Māori peoples have been long been pioneers in advocating for cultural protection and have been successful in amending the NZ Act to protect against cultural appropriation, spurring intentional discussion and reform.115 These amendments introduced a new offence provision, that “the Commissioner must not register as a trade mark or part of a trade mark any matter - the use of registration of which would, in the opinion of the Commissioner, be likely to offend a significant section of the community, including Māori”.116 Operating as an absolute bar, this provision incorporates an analysis of cultural appropriateness into the registration process, curbing appropriation before further commercialization occurs.117 It has been suggested that Canada modify its current “offense” provision to prohibit any mark that is “scandalous, obscene, immoral or offensive to any person including First Nation, Inuit, or Métis Peoples”.118 This language shifts the threshold of what is deemed offensive from “not an insignificant segment of the public”, to being satisfied if even one of the Indigenous groups in Canada takes offense, directly countering appropriation.119 While not applicable to unregistered marks, this rewording forces the analysis of culturally-specific issues at the time of registration, providing baseline protection when applying a Eurocentric scheme in this pluralist society.
This amendment, however, is merely the starting point. The true value lies in the underlying spirit of consultation and acknowledgement of the need to integrate diverse Indigenous experiences into the trademark framework.120 It is this spirit of consultation which supports the second recommendation from the NZ Act which established a Māori advisory committee to be consulted when the Commissioner is presented with a mark that is, or appears to be, derivate of a Māori sign, or is likely to be offensive to Māori.121 As a separate body to the Commissioner, this incorporates the perspective of the very people whose culture is at stake, allowing Māori peoples to assist in policing of their sacred identity without the need for any reciprocal registration or trademark of their own. While a similar push towards consultation underpins many of the reconciliation efforts with Indigenous peoples in Canada, this spirit has yet to infiltrate the TMA in a similar way.122 As a result, it is recommended a similar advisory committee be adopted in Canada, composed exclusively of Indigenous people with representatives from all First Nations, Inuit, and Métis communities. This underscores the importance of direct consultation, while simultaneously recognizing the diverse voices that exist in Canada’s multicultural Indigenous landscape.123 The government has been called to enact legislation which incorporates “the preservation, revitalization and strengthening of Aboriginal languages and cultures which are best managed by Aboriginal people and communities”.124 This goal cannot be accomplished without consultation of the people at stake, and there is no reason this spirit should not be reflected in the trademark scheme to provide baseline protections.
These reforms provide a foundation for incorporation Indigenous perspectives into the Western scheme to prevent appropriation as a preliminary matter. While revising the offense provision and establishing an advisory committee akin to the New Zealand legislation is a step towards protection, it is the underlying principles of consultation which must embraced to provide protection, regardless of the ability of Indigenous peoples to profit as a result.
4.2 Sui generis legislation
It must, however, be acknowledged this protection is based on a Eurocentric conception of property that has inherent limitations when addressing the complexity of Indigenous TK and TCE. As a result, scholars and international bodies have recommended a patchwork approach, complimenting traditional IP schemes with a sui generis legislation that reflects customary law and participatory dimensions of collective systems that distinguish Indigenous IP.125 Embracing these differences provides for a greater protection, and furthers principles of reconciliation.
In additional to scholarly support, this approach has been proposed through model legislation by WIPO, advocating for a system of both positive and negative rights.126 In its sui generis legislation, it recommends the creation of universal TK/TCE databases and associated schemes of registration and licencing, complimented by models of informed consent.127 Importantly, it embraces of traditional forms of ownership and characteristics of the populations to which it applies, to allow protection and prevention simultaneously.128 This approach acknowledges that Indigenous ideas, customs, designs, traditions were longstanding before colonization, thereby providing protection without the administrative burden of registration or application of a particular mark.129 As a result, this approach improves legibility, removing the need for Indigenous people to identify a particular regime or remedy, providing a language that incorporates the fluid boundaries of TK and TCE in a system designed for this purpose.130 Recognizing the importance of TK and TCE as a whole, instead of separating it into components to fit a particular definition, is particularly beneficial considering the spiritual importance of culture which is often indivisible form its outwards manifestations.131 Importantly, this approach permits collaborative ownership at the root of Indigenous IP in stark contrast to the Western IP scheme.132 The underlying recognition of Indigenous IP as something worthy of protection through sui generis legislation satisfies goals of reconciliation which emphasize the right of Indigenous people to maintain, control, protect, and develop their heritage, TK and TCE, underscoring the need for input throughout the process.133
4.3 Conclusion
Adopting a patchwork approach, incorporating Indigenous voices into the Western scheme, similar to the NZ Act, while concurrently recognizing their unique nature by adopting a parallel sui generis scheme provides baseline protections against cultural appropriation, without the need to use existing lacklustre remedies. This is necessary to prevent cultural commodification, dissuading unfair profiting off culture, while concurrently providing a unique system for positive protection.
5. Conclusion
Washington Commanders, Cleveland Guardians, Edmonton Elks. These teams have all changed their names, not because of a scheme which protects against Indigenous appropriation, but because of public outcry concerning the harms of such use.134 This movement highlights the shortcomings in our ability to protect against the propagation of disparaging identifiers, beginning with the trademark scheme so often sought for protection. Offering reputational protection for Western traders, this system fails to provide similar protection to the cultural reputation of Indigenous people, ultimately accentuating the colonial foundations upon which it was built. While the differences between TK and TCE, and traditional IP makes registration of Indigenous trademarks difficult, the system fails even where no such registration or trademark use is required. Opposing a mark based on its misdescriptive or offensive nature, fails to provide effective remedy due to the Western ideals that influence their operation.135 Alongside the supposed positive protections granted by certification marks and official marks, these avenues similarly propagate historical conceptions of oppression and sovereignty that function against the reconciliation efforts these marks seek to advance.136 The consequential harm of prolonged cultural appropriation will continue to dilute a culture longstanding before the times of colonization, putting Indigenous health and cultural sustainability at risk.137 Therefore, reform at the most basic level is required, shifting away from discussions of whether the IP scheme is suitable for positive protection of IP rights, and towards how this system can be used to uphold the integrity of such culture. Borrowing from the successful adaptation of the NZ Act, reconciliation efforts must be integrated into the trademark scheme. Modifying the offense provisions to include absolute bars which includes Indigenous interests, and establishing an advisory committee to represent the Indigenous voices are preliminary mechanisms to uphold consultation efforts. However, it is important to acknowledge the complexity of Indigenous IP. Thus, adopting WIPO’s proposed recommendations of a parallel sui generis legislation, provides two avenues of protection, upholding the importance of Indigenous culture beside the dominant Western societal paradigm.138 This approach reflects a necessary shift away from cultural commodification, and towards cultural appreciation.