[UPDATE 04/06/13] Since this blog post was written, the trademark for Koha in New Zealand has been granted to HLT. See Chris’s comment below.
Earlier in the year, I wrote a case study on Koha, the open source library management system released under the GPL, detailing the history of the project and how the sale of assets had created confusion and disagreements between the Horowhenua Library Trust (HLT) who originally commissioned the system, and PTFS who now holds the copyright for most of the project’s original assets, publishing their own fork under the name LibLime Koha.
At the time of writing, the major issue at hand was PTFS’s trademark application for the mark KOHA in New Zealand, which HLT and Catalyst IT who provide commercial support for Koha were opposing. This month, the case was settled, with the commissioner ruling against PTFS and rejecting the application.
HLT and Catalyst opposed the application on 6 grounds:
- The mark was likely to deceive or cause confusion.
- The application for the mark was contrary to New Zealand law (specifically, The Fair Trading Act 1986), on the basis of ground 1.
- Use of the mark would amount to passing off, also in breach of New Zealand law.
- The mark was identical to an existing trade mark in use in New Zealand.
- PTFS wasn’t the rightful owner of the mark, HLT was.
- The application was made in bad faith, on the basis that HLT owns the mark.
Interestingly, grounds 3, 4, and 5 were rejected by the commissioner, largely on the grounds that HLT’s use of the name Koha didn’t constitute a trade mark. When HLT originally open sourced Koha, the evidence presented showed that it intended Koha to be given away for free so other libraries could benefit from it. The commissioner didn’t consider this to constitute trading, and therefore Koha, while identical to the mark being registered, didn’t constitute a trade mark.
As ground 5 didn’t show HLT to be the rightful owner, ground 6 was also rejected as PTFS weren’t seen to be acting in bad faith by trying to register a mark which clearly belonged to someone else.
However, HLT and Catalyst’s success in this case hinges on the fact that when the trademark application was made in 2010, HLT’s Koha software had existed for 10 years and was well known in New Zealand’s library sector. Since the commissioner considered the mark being registered to be identical to the name Koha, and HLT’s software to be the same class of product as PTFS’s, it was found that the two could be confused by a substantial number of people, allowing ground 1 to succeed.
Furthermore, the cited sections of the Fair Trading Act had a similar but stricter requirement that there not be a real risk that such a confusion or deception might happen. The commissioner believed that due to Koha’s prominence in the industry there was a real risk in this case, allowing ground 2 to succeed.
The application for the trade mark has now been defeated, with HLT and Catalyst being awarded nearly 7,500 NZD in legal costs between them. What affect this will have on the use of the Koha name in New Zealand isn’t clear – since HLT have been shown not to own the mark themselves, they are unlikely to be able to stop PTFS from using the name in New Zealand should they choose to. However the Koha community in New Zealand can now rest easy knowing that they won’t be stopped from continuing to use the name as they always have.
I hope that other open source software projects use the case of Koha as a lesson to ensure that your branding and IP is well-managed, so that cases like this can be avoided.