Koha trademark battle settled

A Wellington IT company and a library trust has successfully opposed a United States software firm from trademarking the name "Koha" in this country.

Te Horowhenua Trust commissioned a company called Katipo the development of a new library management for use in Horowhenua public libraries in 1999. The trust decided to make this software, named Koha, free and open-source.

It has been picked up by libraries across the world, translated into at least 30 languages and won a number of awards.

In 2007, a US-based company called LibLime bought a division of Katipo and created another version of the library software in 2009 called "LibLime Koha".

In 2010, LibLime applied to register a trademark for the name "Koha" in New Zealand. This was opposed by Te Horowhenua Trust and Wellington company Catalyst IT.

Among other arguments, the opponents said the trademark would likely deceive or cause confusion in the market and would breach the Fair Trading Act.

Following a hearing in October, Assistant Commissioner of Trade Marks Jennie Walden this found the trademark, if used, would have likely deceived or confused the market and would amount to a Fair Trading Act breach.

"I consider there is a real risk that consumers who are confronted with the applicant's KOHA library system will be mislead into thinking that the software is the Trust's free and open source Koha software. Therefore I consider that the use of the opposed mark by the applicant would amount to a breach of the Fair Trading Act 1986,' she said in her decision this week.

While Walden found the opponents successful on these grounds, she said they were unsuccessful on four others.

As a result of this, Walden directed the trademark should not be registered.