Rick Shera, a partner at Lowndes Jordan Barristers and Solicitors in Auckland, and the first lawyer to have qualified as a New Zealand Computer Society Information Technology Certified Professional, was commenting on the case of the Koha project, an integrated library system.
The project has been in the news since last week after the Trust appealed for donations to mount a defence against the trademark acquisition by Progressive Technology Federal Systems/Liblime.
Koha was set up by the Trust 12 years ago and the code for the project is under the GNU General Public Licence. The trademark was provisionally granted to PTFS on November 25 and the Trust has three months to lodge its objections.
Shera said there were numerous grounds for opposition, all of which stemmed from the fact that this name had been used in to describe the Koha community, project and the software for many years.
"The name therefore is not capable of distinguishing LibLime's services and software from the services and software provided by the community," he said.
"I would go so far as to say that Koha has such a presence within the library and open source communities that the name Koha would also be protected as a well-known mark, effectively owned by Horowhenua Library Trust on behalf of the community."
The Trust's appeal has resulted in a flood of donations coming in; lawyers have offered to act for the Trust on a pro bono basis. The word Koha has particular resonance in New Zealand as it is a Maori word meaning reciprocity in gift giving.
Shera, who is not involved in the case in any way, said: "Obviously, alienation of that ownership in favour of one company is highly likely to create confusion and is likely to damage the ability of HLT to maintain the name for the community's benefit.
"That confusion itself is also a ground for objection on the basis that registration would be contrary to our Fair Trading Act (very similar to your Trade Practices Act)."
He said other grounds for objection might be for offensiveness and bad faith, "recognising that LibLime is well aware of the background and of the objections of the community to its attempts to create a proprietary version of the software under the same name".
PTFS has indicated that it is willing to hand over the application to a non-profit representing the Koha community. However, given past instances of broken promises, the Trust has said it would begin the process of drafting its objections, all the while hoping for the trademark to be handed over, as it is the only non-profit that represents Koha.
"As a final point, I note that there is already a Koha software-related mark on the New Zealand register - Koha Aloha," Shera said. "It is very surprising that IPONZ (the Intellectual Property Office of New Zealand) has even allowed LibLime's application given that a Koha mark is already registered for software services.
"I don't buy the argument that because LibLime is registering in a different category, there is no overlap and therefore no confusion. That is a fundamental misunderstanding of how software is created and made available, particularly in the FOSS world. I expect that the proprietor of the Koha Aloha marks (he has three registrations) could also object."
PTFS was contacted last Thursday for its take on the issue. The company responded yesterday and as soon as we have its side of the story, it will feature in these columns.