Former All Black Justin Marshall has backed down on using a silver fern in the logo of his new business venture after "discussions" with the New Zealand Rugby Union.
The Weekend Herald has learned that Marshall is removing all traces of the fern from his company vehicles and other property after being told it was far too similar to the NZRU's trademarked silver fern.
Marshall, 40, played 81 games for the All Blacks between 1995 and 2005. He is still closely affiliated to the team and union through his work as a Sky Sports rugby commentator.
Earlier this week he launched his new business, the New Zealand franchise of Aussie-founded Coast to Coast the Golden Roast, which had a silver fern in its logo.
Days later he was in talks with the NZRU over the similarity between his logo and the silver fern that is synonymous with their team and brand. Marshall told the Weekend Herald that he approached the NZRU, suspecting they would be unhappy with his logo.
After reading about the New Zealand Trade and Enterprise (NZTE) ordering an ex-pat Kiwi to stop using its silver fern logo on his Twitter profile - citing copyright infringement - he decided to front foot his own issue.
"I sent (NZRU chief executive) Steve Tew an email and said we had used this image and we just wanted to check that it wasn't a problem. I said I'd totally understand if it was and he came back to me and said yes, it was too close to the NZRU logo and they wanted me to remove it," Marshall said yesterday.
"I've been an All Black and I know the NZRU has strict criteria around using the fern. I totally understand where they are coming from, and I wasn't surprised."
The use of the fern in Marshall's logo was intended to show that it was a Kiwi-run franchise.
"Chucking the fern there shows we are a New Zealand business. But it was done without thinking of the ramifications."
The NZRU said they were "in discussions" with Marshall around the use of intellectual property "associated with the All Blacks".
"The All Blacks fern was specifically designed for New Zealand Rugby's national teams, and New Zealand Rugby owns the copyright in it," spokesman Nick Brown said.
"New Zealand Rugby has also obtained trademark registration to protect it being used commercially by businesses not associated with our teams. There are of course many other fern designs available, but New Zealand Rugby's particular fern design cannot be copied without our consent."
Legal experts said unless Marshall had used the exact fern design owned by the NZRU, it would be hard to take action against him.
"There are literally hundreds of trademark registrations on the New Zealand Register of Trade Marks, which indicates that in New Zealand the image of a silver fern is generic and it is difficult to claim trademark rights over it," said Ceri Wells, from James & Wells Intellectual Property.
The NZRU only had exclusive rights "to the particular depiction of the fern" they had registered as a trademark.
Mr Wells said as far as he could tell Marshall's fern was different to the NZRU design.
"There is definitely a similarity but the leaflets of the fern blade in Marshall's fern device do not taper in the same way as the leaflets in the NZRU's fern," he said.
"Also Marshall's fern device on his promotional advertising is disposed with the base of the frond at the right-hand side rather than the left-hand side. In short, it is not the NZRU's fern. As a consequence it appears that Marshall is not guilty of an infringement of copyright because he has not copied the NZRU's fern."