Recognising and protecting Indigenous Knowledge in Australia’s IP system

IP Australia is currently looking at how the intellectual property (IP) system can better support Aboriginal and/or Torres Strait Islander (TSI) people to benefit from and protect their Indigenous Knowledge (IK). 

In its current consultation paper, IP Australia outlines the four key areas on which it is seeking feedback:

1. The establishment of an Indigenous Advisory Panel.
   
   
2. Proposed changes to trade marks legislation.
   
   
3. The introduction of a disclosure requirement for patents and plant breeder’s rights (PBR).
   
   
4. Interest in a labelling scheme to clearly distinguish authentic Indigenous products.

We provide a brief overview of each proposal below, noting that submissions close on 31 May 2021. 

Indigenous Advisory Panel

It is proposed that there would be an Indigenous Advisory Panel whose role would predominately be to assist IP Australia in its decision-making. Specific functions would include advising IP Australia on potential avenues to promote IK recognition in IP policy and assisting IP Australia to identify IK issues in IP applications.

In IP Australia’s examination of an application concerning IK, the Panel would assist with the preliminary assessment and might, for example, provide the opinion that a particular Indigenous group or individual should be consulted on the application.

Changes to the Trade Marks Act 1995 (Cth) 

IP Australia recognises that the current trade mark system does not provide adequate protection for IK. There are gaps in the legislation which allow for marks or designs to be registered that might misappropriate IK or use IK in an offensive manner / without proper consent.

IP Australia has therefore proposed three new options for grounds of rejection of a trade mark application where a party seeks to use IK in a trade mark:

1. No evidence of consent. This would allow IP Australia to request a trade mark applicant to provide evidence of authority or consent from the traditional owner to use the IK. However, obtaining informed consent from a traditional owner (particularly in traditional remote communities) may be difficult. It is unclear from IP Australia’s paper what level of resourcing (if any) it is prepared to offer to support traditional owners to understand the nature of the request for consent.

We expect that as a starting point, the role of the Panel would be particularly useful to connect parties in this regard. The Panel linking IP Australia with the appropriate community is an important first step although it does not solve who would actually communicate the consent request to the traditional owner, or (if required) who would discuss with the owner their legal options. Access to legal services in traditional remote communities is a live issue.

IP Australia indicates it would be prepared to accept evidence of ‘reasonable steps’ being taken to obtain consent. The Panel would again play an important role in assessing any evidence received.

2. Cultural offence. If IK is being used by someone other than a traditional owner, under this ground of rejection IP Australia would consider:

• if the IK was used without the free and prior informed consent of the traditional owner; or
  
  
• if the IK was used in a way that breaches cultural protocols.

As with the first proposed ground mentioned above, consent is an important factor, and is a key theme running through IP Australia’s paper. A challenge with this ground may be the definition of cultural offense which can differ between (and within) communities. IP Australia is willing to hear feedback on this point.

3. Misleading or deceptive use of IK. This proposed addition is similar to the existing examination practice of IP Australia but it is specific to a false suggestion to consumers of a connection with Aboriginal and/or TSI people.

If this issue arises in a trade mark examination, IP Australia could request the applicant to provide evidence of a connection to the source of the IK (such as being part of a community, or a partnership arrangement).

Disclosures for patents and PBRs

The current patent system does not require an applicant to disclose if genetic resources or traditional knowledge was used in the development of the invention.

Aside from increasing recognition of the IK, IP Australia also considers that this requirement will assist with traceability issues and demonstrate the importance of working respectfully with Aboriginal and/or TSI people.

At the international level, the World Intellectual Property Organisation Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore is also considering a disclosure of source requirement. 

Authentic labelling scheme 

Products in the style of First Nations design are being sold by non-Indigenous people. This conduct may amount to misleading or deceptive conduct under the Australian Consumer Law. Traditional owners of IK may benefit from further legal protections. A dedicated labelling scheme could therefore support authentic Aboriginal and/or TSI products including in the arts and crafts space, as well as products in other sectors such as traditional or bush foods and medicines.

One way to progress this scheme using the IP system might be by way of a Certification Trade Mark (CTM). A CTM identifies a particular standard or quality of the good or service – in this case it might be that that good is authentically verified as an Indigenous product. Rules governing the application of the CTM, approved by the ACCC, would need to be followed.

However, there are a number of complexities with such a scheme including the concern that adding extra requirements or regulations to the First Nations design process will become too onerous. Another issue is that if Aboriginal and/or TSI people decide not to apply the authentic mark to their products those goods might be automatically perceived as inauthentic.

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IP Australia is continuing to receive submissions on the proposals until 31 May 2021.

Corrs is committed to providing assistance to First Nations people and organisations in the provision of legal services. We support meaningful reconciliation with the Indigenous peoples of Australia, and have formalised this commitment through our 2018-2020 Innovate Reconciliation Action Plan (RAP). We will launch our third RAP in 2021.