All Blacks silver fern designer takes swipe at shortlisted flags

The All Blacks silver fern logo is a registered trademark. Photo / Getty Images

The designer who came up with the All Blacks' silver fern has offered to re-draw the iconic symbol seen on three of the four designs short-listed as options for our new national flag.

Dave Clark says the silver fern designs on the Kyle Lockwood and Alofi Kanter's flags needed to "look more like real silver ferns".

The offer came after the Herald revealed this morning that the All Blacks had blocked the use of the silver fern which featured on the team's uniforms. The design, which Mr Clark devised in 1986, is trademarked by the NZ Rugby Football Union.

It led to the Flag Consideration Project approaching those who had used the NZRFU fern to ask if they would change their design.

The NZRFU stance came in spite of All Black captain Richie McCaw saying he was keen to see the silver fern on a new national flag.

Four flags have been shortlisted for a public vote - two of those by flag change-advocate Kyle Lockwood feature a version of the silver fern.

Dave Clark: "If we are going to do it, we need to do it right."

While it is not the NZRFU-owned silver fern, Mr Clark - who runs Dave Clark Design Associates - said it could do with a better design.

"A lot of people including Richie McCaw seem to want the silver fern on our national flag. So if we are going to do it, we need to do it right. The three shortlisted flags in question certainly have merit but the ferns need to look more like real silver ferns."

He said he agreed with the idea of having a silver fern feature on New Zealand's flag. He had also seen it used "all over the world including as tattoos on many Kiwis".

Mr Clark said a professional design process would improve the look of the silver ferns put forward in the short-list. He said hundreds of hours went into the All Blacks' trademarked logo. "The reason the All Black fern works so well is because of the stringent design process I used."

McCaw said on Monday that he thought the silver fern represented "what it means to be a Kiwi". The symbol meant a lot to the All Blacks, so "something like that probably wouldn't hurt".

Silver Fern (Black, White and Blue) - by Kyle Lockwood

Silver Fern (Red, White and Blue) - by Kyle Lockwood

Silver Fern (Black & White) - by Alofi Kanter

However, a spokeswoman for the Flag Consideration Project said officials met with the NZ Rugby Union to discuss whether it would allow its trademarked fern to be used in designs for a new flag.

The discussion occurred because a number of people had used the fern in their design submissions.

Officials were told permission to use the fern on a new flag was unlikely to be granted. If NZ Rugby Union had allowed its fern to be used on a flag and it made the final four, it would have had to assign all rights in it to the Crown at no cost. Other fern symbols can still be used and feature in three of the final four designs.

After NZ Rugby made it clear it was unlikely to allow its fern to be used, those who used it in their designs were given the option of changing it to remain in contention. About 370 flag designs are still on the flag.govt.nz gallery using the All Blacks silver fern and crediting Clark. None made it to the longlist.

Nick Brown, NZ Rugby's general manager of public affairs, said after initial talks with the flag officials NZ Rugby was not asked to give permission for any flag to progress to the longlist. "We were comfortable with the guidelines they had in place requiring people to submit original work or obtain the permission of the owner of any designs."

Hamish Selby, an intellectual property lawyer at Buddle Findlay, said NZ Rugby's decision was understandable and that any public relations benefits in allowing the fern to be used would be short-term.

"It's almost like handing over the crown jewels, so to speak, of their business to someone for no commercial gain," Mr Selby said. "NZ Rugby has a very strong commercial alignment with its fern because the fern is so closely aligned with the All Blacks, and it leverages a lot of its income from the commercial arrangements it has."

It isn't the only problem the flag project has had with intellectual property issues - it also had to remove all designs which included Hundertwasser Koru after a copyright claim by the Hundertwasser Non-Profit Foundation.

Prime Minister John Key's desire for a new flag was sparked by the 2011 Rugby World Cup - his original preference was for a silver fern on black. Many were surprised it had not made the shortlist, although Kyle Lockwood's version was in the longlist.

The flag panel's chair, John Burrows, said it was considered but the panel decided the white fern on black was too closely associated with sports. "The silver fern has a long history which goes way beyond just sport. It's been around for hundreds of years, long before commercialisation existed. It has been used on military uniforms, the coat of arms, it's on our money."

Mr Lockwood referred questions about the intellectual property rights in his two shortlisted designs to the Flag Consideration Project.

A spokeswoman said under the conditions of submitting a flag design, designers who made the final four had to agree to hand over all copyright and intellectual property rights in the designs to the Crown at no cost.

Mr Lockwood sells his flags in a range of designs and colours on his silverfernflag.org website.

Key "always thought" the New Zealand Rugby Union would protect its silver fern copyright as he pushed for a change of the national flag.

"It wasn't new news to me," he told reporters in Christchurch today.

"People do protect their trademarked symbols, and the Rugby Union has done that for a very long period of time.

"I don't think it matters too much. I know there probably will be endless people who debate exactly what the fern looks like on potentially the new flag. To me the one that Kyle Lockwood's drawn on his and the other flag are perfectly acceptable. They don't all have to be exactly the same. If you showed the average person they would understand what it is and that's good enough."

One of the designs that made the shortlist of 40 flags was a silver fern on a black background.

But today Mr Key said it wasn't ruled out because of the copyright issue.

The only one ruled out on copyright was a one based on a design by Austrian artist Friedensreich Hundertwasser

Legal moves

• The New Zealand Rugby silver fern was designed by Dave Clark in 1986 and trademarked in 1991 along with the words 'All Blacks'.

• In 2001, NZ Rugby also tried to trademark any version of the silver fern on a black jersey but in 2005 the court rejected its bid.

• During the Rugby World Cup in 2011, NZ Rugby made Giltrap Audi take down a $10,000 'Go the All Blacks' sign, claiming it breached trademark. Instead the company used 'Go the ABs'.