30.3. Use contrary to law

Date Published 20 Apr 2022

Under section 42(b), an application for registration of a trade mark must be rejected if use of the trade mark would be contrary to law.

3.1

At the examination stage the question of whether a trade mark is contrary to law is usually limited to circumstances where:

the trade mark contains or consists of a sign the use of which is precluded under a particular piece of legislation e.g. Telstra Corporation Act 1991, Olympic Insignia Protection Act 1987, Wine Australia Act 2013; or
a court decision has been issued on the particular trade mark which establishes the illegality of its use.

3.2

To be caught by this section of the Act, use of the trade mark should breach some piece of legislation, as opposed to being in breach of common law rights. As the function of this office is administrative, rather than judicial, this section is only applied in what is clearly a breach of another Act. In Re Kelly (1987) AIPC 90-374, the trade mark offended the provisions of the Advance Australia Logo Protection Act 1984, and was precluded from registration by section 28 of the Trade Marks Act 1955.

3.3

Examples of statutory legislation which prohibits the use of words and signs as trade marks are given in Annex A1 to this Part of the Manual. This list is not exhaustive. Those words and signs, the use of which is contrary to law by virtue of these Acts, are entered as -9000000 signs on the Trade Marks database and will therefore be found when carrying out the usual search for conflicting trade marks.

3.4

Following the decision in Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 (‘Advantage Rent-a-Car’) it became clear that the Registrar was obliged in certain circumstances to give consideration to legislation such as the Copyright Act 1968 (the Copyright Act) and the Trade Practices Act 1974 (now the Competition and Consumer Act 2010). Consideration of these types of issues is unlikely to occur in the examination stages, but may become relevant during opposition proceedings. However, if an examiner is provided with definite information indicating that a particular trade mark would be contrary to any relevant legislation, a ground for rejection must be raised. For example, the Prime Minister and Cabinet website of the Honours, Symbols and Legal Policy Branch states that the Australian Aboriginal Flag and Torres Strait Islander Flag are protected by copyright and lists the relevant copyright holders for permission to reproduce the flags. The Aboriginal flag was the subject of an Official Journal Notice in 1999. Refer to Annex A2 for the wording of the notice.

(Note: The first sentence of the notice as it relates to opposition has been overtaken by Advantage Rent-a-Car).

3.5 Legislation with particular implications for examination of trade marks

3.5.1 Plant Breeders Rights Act 1994 and Wine Australia Act 2013

Two of the Acts referred to in Annex A1 that have particular implications for the examination of trade mark applications are the Plant Breeder’s Rights Act 1994 and the Wine Australia Act 2013. These are discussed briefly in Part 29 of this Manual and in detail in Part 32.

3.5.2 Geneva Conventions Act 1957

Section 15(1) of the Geneva Conventions Act 1957 specifically prohibits the use for any purpose whatsoever, of the following signs, without the consent in writing of the Minister for Defence or a person authorised in writing by the Minister to give consent:

"(a) the emblem of a red cross with vertical and horizontal arms of the same length on, and completely surrounded by, a white ground, or the designation "Red Cross" or "Geneva Cross";

(b) the emblem of a red crescent moon on, and completely surrounded by, a white ground, or the designation "Red Crescent".

(c) the following emblem in red on, and completely surrounded by, a white ground, that is to say, a lion passing from right to left of, and with its face turned towards, the observer, holding erect in its raised right forepaw a scimitar, with, appearing above the lion's back, the upper half of the sun shooting forth rays, or the designation "Red Lion and Sun";

(ca) the emblem of a red frame in the shape of a square on edge on a white ground, or the designation “Red Crystal”;

(d) the emblem of a white or silver cross with vertical and horizontal arms of the same length on, and completely surrounded by, a red ground, being the heraldic emblem of the Swiss Confederation".

(e) a design or wording so nearly resembling any of the emblems or designations specified in paragraph (a), (b), (c), (ca) or (d) as to be capable of being mistaken for, or as the case may be, understood as referring to, one of those emblems

The above representations are the emblems (images) and designations (words) that are prohibited without Ministerial consent under the Geneva Conventions Act 1957.

The emblems and designations of the red cross, red crystal, red lion and sun (use discontinued in 1980) and red crescent (used instead of red lion and sun) are protected under international and domestic law. Under the law, the emblems and designations can only be used for two purposes – protective and indicative. The protective use relates to the emblem or designation being used to denote that persons (specifically victims of armed conflict and medical, religious and relief agency personnel) and items (namely vehicles and facilities) are to be afforded protected status during armed conflict. The indicative use refers to the emblem as the indicative symbol of the National Red Cross Societies, as long as they are in conformity with the fundamental principles of the Red Cross.

Examiners must also bear in mind, and consider during examination, section 15(1)(e) of the Geneva Conventions Act 1957 which refers to a design or wording “so nearly resembling” any of the emblems or designations specified “as to be capable of being mistaken for” or “understood as referring to, one of those designations or emblems”.

Use of these emblems, their written word equivalents, or designs or wording “so nearly resembling any of the emblems or designations” within Australia is prohibited and requires the written permission of the Minister for Defence or of a person authorised in writing by the Minister. As such, should a trade mark contain or comprise one or more of them, the applicant must demonstrate that consent has been provided or that the Minister (or delegate) has otherwise determined that the designation or emblem is outside the scope of the Geneva Conventions Act 1957. For example, the Australian Red Cross Society has the Minister’s written consent to use “the emblem of a red cross with vertical and horizontal arms of the same length on, and completely surrounded by a white ground”; and the designation “Red Cross”.

In examination, when one of these emblems or designations appears within a trade mark (or a word(s) or image so nearly resembling them), a contrary to law ground for rejection should be raised under section 42(b) of the Trade Marks Act 1995 on the basis of section 15 of the Geneva Conventions Act 1957. Note – Geneva Conventions Act 1957 does not refer to use of the emblems or designations in relation to particular goods and services. Therefore, if such an emblem/designation is contained within a trade mark, no matter which goods and services have been applied for, the ground for rejection should be considered.

In many circumstances (where appropriate) to overcome the section 42(b) ground for rejection, the applicant can agree to one of the following endorsements as a condition of registration, and would therefore not require consent from the Minister:

For the cross device:

It is a condition of registration that, in use, the cross device contained within the trade mark will be rendered in colours other than red on a white or silver background, or white or silver on a red background.

For the crescent, crystal or lion+sun device:

It is a condition of registration that, in use, the <crescent/crystal/lion> device contained within the trade mark will be rendered in colours other than red on a white background, or white on a red background.

In some cases where the trade mark has been filed in colour (for example, where the cross within the trade mark is represented in red but where the application does not include a colour restriction/limitation/endorsement), the applicant may consider (under the provisions of section 65 of the Trade Marks Act 1995):

amending the representation of their trade mark (with the exception of International Registrations Designating Australia – see Part 60, 4.7.10 of the Manual) AND
agreeing to the condition of registration.

Examiners should use their discretion in offering this option if the emblem is clearly being used to endorse a Swiss connection, the applicant is unlikely to amend the representation and add the condition of registration.

Note: When a trade mark contains only a portion of an emblem or designation, an endorsement may not be required. Similarly, if the trade mark application is restricted to colour (by way of colour restriction/ limitation/endorsement) other than those outlined in the Geneva Conventions Act 1957 the trade mark may not be subject to a section 42 ground for rejection.

Although section 15(1)(d) of the Geneva Conventions Act 1957 refers specifically to the Swiss flag (heraldic emblem of Swiss confederation), in some cases, a ground for rejection under section 39(2) of the Trade Marks Act 1995 may also have to be considered. As the National flag of Switzerland is a flag that is protected under Article 6ter. Paragraph 3a) of Article 6ter of the Paris Convention indicates that formal notification is not necessary for protection to be accorded to the flags of countries of the Union (see Part 31.4.4 of the Manual). Therefore a section 39(2) ground for rejection may also be raised against a trade mark that contains a Swiss flag.

In addition, when examining a trade mark that contains a Greek cross, a ground for rejection may also have to be considered under section 39(2) on the basis of the State Emblem of Switzerland which is also a prescribed sign under Article 6ter of the Paris Convention.

3.5.3 Banking Act 1959 and Life Insurance Act 1995

The Banking Act 1959 (Banking Act) and the Life Insurance Act 1995 (Life Insurance Act) restrict the use of certain words, letters or expressions in an attempt to assure the public that a financial business that describes itself as a bank, building society, credit union, friendly society or authorised deposit-taking institution is in fact authorised to do so.

Sections 66, 66A and 66AA of the Banking Act and section 16E of the Life Insurance Act restrict the use of the following words, letter or expressions in relation to financial services:

ADI
AUTHORISED DEPOSIT-TAKING INSTITUTION
BANK
BANKER
BANKING
BUILDING SOCIETY
CREDIT SOCIETY
CREDIT UNION
CREDIT CO-OPERATIVE
FRIENDLY SOCIETY
Any other word or expression (whether or not in English) that is of like import to a word or expression covered above.

Financial services in class 36 include insurance, financial affairs, monetary affairs and real estate affairs.

With the exception of an ADI, the restriction extends to where the word or expression is used as part of another word or expression. For example, trade marks which include the words BANKSIA, REDBANK or NONBANK when used in relation to financial services would be contrary to law as they include the restricted term BANK. The Banking Act 1959 doesn’t generally allow for context to be considered in the triggering of the restricted words provision. Applicants who wish to use a restricted word as part of a word where the meaning changes (for instance BANKSIA) or in combination with other words can make an application to APRA for consent in response to a section 42(b) ground for rejection being raised. Use of the letter combination ADI however, where the letters clearly form part of another word, does not contravene the Banking Act. For example, a trade mark consisting of the word TRADITIONAL would not be contrary to the Banking Act because the restricted term ADI is clearly being used as part of the word TRADITIONAL.

Banking Act 1959

A ground for rejection should be raised under section 42(b) of the Trade Marks Act 1995 on the basis of section 66, 66A or 66AA of the Banking Act 1959 where a trade mark claiming financial services in class 36 contains a restricted word or expression and the trade mark owner is not appropriately recorded in relation to that restricted word or expression on the List of Authorised Deposit-Taking Institutions (ADIs) available on the Australian Prudential Regulatory Authority (APRA) website.

Authorisation Guidelines for ADIs can be found on the APRA website. This includes guidance on what sort of consents and exemptions to use of restricted words and expressions are afforded to entities listed as banks, credit unions, building societies etc. on the APRA List of ADIs.

Examples of entities not being appropriately recorded include (but are not limited to):

An entity not being listed on the APRA List of ADIs.
An ADI or class of ADIs that APRA has determined is not permitted to use the word BANK, BANKER and BANKING. This determination is made under section 66AA and may include ADIs that do not have the ordinary characteristics of banks (for example purchased payment facilities). If APRA make a section 66AA determination, this will be made clear on the ADI register on the website.

Please note that unless specifically excluded on the APRA website ADIs that are credit unions or building societies may continue to use those terms, as well as the restricted words BANK, BANKER and BANKING.

Life Insurance Act 1995

A ground for rejection should be raised under section 42(b) of the Trade Marks Act 1995 on the basis of section 16E of the Life Insurance Act 1995 where a trade mark claiming financial services in class 36 contains the expression ‘friendly society’ and the trade mark owner is not appropriately recorded on the List of Friendly Societies available on the APRA website.

In both cases where a trade mark has multiple owners, all the owners need to be appropriately recorded on the applicable APRA list. If one or more of the owners is not appropriately recorded on the list a ground for rejection will apply.

An applicant may overcome a ground for rejection by providing written information demonstrating that it has the consent of APRA to use the offending term or that APRA considers that their consent to the applicant's use of the prohibited term is not required.

Ways to overcome a section 42 ground for rejection (Banking Act 1959 / Life Insurance Act 1995)

An applicant may overcome a ground for rejection by:

Agreeing to remove the class 36 claim. This action removes the problematic financial services. Please note the above comments about financial services in class 36 including insurance, financial affairs, monetary affairs and real estate affairs.
OR
Providing written information demonstrating that it has the consent of APRA to use the restricted word or expression as part of the registered trade mark.
OR
Providing written information demonstrating that APRA considers that their consent to the applicant's use of the restricted word or expression is not required.

APRA letters of consent (Banking Act 1959 / Life Insurance Act 1995)

Consent on the basis that the restricted word or expression will not be used in connection with financial services

APRA may provide an applicant with written consent to use the restricted word or expression (that forms part of the trade mark) on the basis that the applicant has advised that they do not / will not use the restricted word or expression in connection with financial services. Upon receiving this information the examiner should request that the applicant amend their trade mark application by deleting the class 36 claim. If the applicant agrees to delete the class 36 claim, the section 42 ground for rejection can be withdrawn once the amendment has been actioned.

The consent that APRA has provided is on the basis that the restricted word or expression will not be used in connection with financial services. The trade mark application which includes the restricted word or expression should reflect this.

Conditions of consent

APRA should not provide an applicant with consent that includes conditions and / or limitations. Information supplied from APRA should simply indicate that they consent to the use of the restricted word or expression within the trade mark. Consent provided with conditions such as consent on the basis that the applicant does not use the trade mark in a commercial context, or consent on the understanding that consent under the relevant Act (Banking / Life Insurance Act) is still to be achieved, presents uncertainty as to what APRA has consented to.

An exception to this is where APRA supplies a letter of consent on the basis that the applicant has demonstrated a business relationship with an entity that has already achieved consent under the relevant Act. For example, the applicant is a subsidiary of an organisation or company that has already achieved consent.

Where an examiner is not satisfied with the information supplied by APRA, the section 42 ground for rejection should be maintained. The applicant has the option of getting further information from APRA to satisfy the examiner that consent to the registration of the trade mark has been provided.

3.5.4 Major Sporting Events (Indicia and Images) Protection Act 2014

The Major Sporting Events (Indicia and Images) Protection Act 2014 (Major Sporting Events Act) protects the use of certain words and images connected with the following major sporting event:

ICC Men's T20 World Cup 2022
FIFA Women's World Cup Australia New Zealand 2023

The words protected in relation to the sporting event are set out in Schedule 1 of the Major Sporting Events Act. Annex A4 of this Part of the Manual contains a list of the protected words. The protection extends to words that so closely resemble the protected words that a reasonable person is likely to mistake them for the protected words (Major Sporting Events Act section 16(6)).

The images protected in relation to each sporting event are any visual or aural representation that in the circumstances would suggest to a reasonable person a connection with the event (Major Sporting Events Act section 9).

Use of the protected words or images will not be contrary to law if the trade mark applicant is an event body for the relevant major sporting event or the trade mark applicant has written authorisation from the event body (or a person authorised on behalf of the event body) to use the protected word or image. Annex A4 contains a list of event bodies (Major Sporting Events Act section 16).

3.5.5 Protection of word 'ANZAC' Regulations

The Protection of Word 'Anzac' Act 1920 and Protection of Word ‘Anzac’ Regulation relate to use of the word ANZAC. They are quite specific in banning the use of the word ANZAC in trade marks of any kind, unless the applicant can demonstrate Ministerial consent to use of the word. The Regulations, defines prohibition of use in trade of the word ANZAC as follows:

(2) Prohibition of use in the trade etc of word ‘Anzac’

(1) No person shall, without the authority of the Minister, proof whereof shall lie upon the person accused, assume or use the word ‘Anzac’ or any word resembling the word ‘Anzac’ in connexion with any trade, business, calling or profession or in connexion with any entertainment or any lottery or art union or as the name or part of the name of any private residence, boat, vehicle or charitable or other institution, or any building in connexion therewith.

The Regulations, at subregulation 2(3), specify particular actions of the Registrar of Trade marks as follows:

(3) The Registrar of Trade Marks shall:

(a) refuse to register as a trade mark any word the assumption or use of which in connexion with any trade, business, calling or profession is prohibited under subregulation (1) of this regulation; and

(b) unless otherwise directed by the Minister, cancel any existing registration of any such word as a trade mark, and refuse to take any step or further step in connexion with any application for the use of any such word as a trade mark.

It is clear from this that use of the word ANZAC in any form in a trade mark is contrary to law, and grounds for rejection must be raised under section 42(b).

3.5.6 Defence Act 1903

Section 83 of the Defence Act 1903 refers to unauthorised use, possession or supply of emblems or flags. Under section 83(1) "a person who is not a member of the Defence Force is guilty of an offence if:

a. the person uses or wears a defence emblem or an emblem so nearly resembling a defence emblem as to be capable of being mistaken for such an emblem; and

b. the person does not have the written authority of the Minister, or of a person authorised in writing by the Minister to do so."

Section 83(7) defines 'defence emblem' as an emblem of the Defence Force or an arm of the Defence Force and 'emblem" includes a badge, a regimental or other similar distinctive trade mark, an armlet or accoutrements.

A number of emblems of the Australian Army, Royal Australian Air Force and Royal Australian Navy have been included on the Trade Marks database, and will be found as -9000000 signs during normal searching.

Grounds for rejection should be raised under section 42(b) if one of these emblems, or something which could be taken as the emblem is included within the trade mark, and the applicant is not obviously entitled to use it. Written consent from the Minister will be required for the application to proceed.

3.5.6 Defence Regulation 2016, part 14

Similarly, a trade mark containing or consisting of a term prohibited by the Defence Regulation, where the impression of the trade mark clearly indicates a connection with the Australian Defence Force (ADF) will attract grounds for rejection under section 42(b). Again, evidence of the Minister's consent to the applicant's use of the term will be required before the trade mark can be accepted for registration.

Annex A3 contains a list of prohibited terms relevant to the Defence Regulations, as well as some of the emblems.

Note: Some terms such as RAN and AMF have other meanings and therefore do not always fall within the description in Regulation 2. Where a trade mark contains or consists of words or letters with meanings other than that prescribed in the Defence Regulations and in the context the trade mark creates no impression of a reference to the ADF, no ground for rejection under section 42(b) applies.

3.5.8 Environment Protection and Biodiversity Conservation Act 1999

Regulation 12.38 of the regulations (Environment Protection and Biodiversity Conservation Regulations 2000) supporting the above Act reads as follows:

A person must not use a captured image of a Commonwealth reserve to derive commercial gain.
For subregulation (1):

captured image includes an image that was not captured for a commercial purpose or in contravention of the Act or these Regulations.

‘Capture’ is defined in the regulations as recording the image by artistic representation, or on film, videotape or electronic medium. A ground for rejection will therefore need to be raised in relation to any application that contains photographic images of well-known Commonwealth reserves or features within those reserves e.g. Uluru, or Kata Tjuta.

Grounds for rejection will also need to be considered in relation to drawings or paintings of these images.

Where a ground for rejection is raised on the basis of prohibited use under reg 12.38, the applicant may be able to overcome the ground for rejection if it satisfies one of the circumstances listed under reg 12.2. These circumstances include appropriate authorisation through a permit or specific use in accordance with a management plan.

Information regarding prohibited activities, permit fees and conditions is available in the Australian Government, Director of National Parks for Uluru-Kata Tjuta National Park Guidelines for commercial image capture, use and commercial sound recording, including contact details for further information.

3.5.9 Tobacco Plain Packaging Act 2011 (TPP Act)

The Tobacco Plain Packaging Act 2011 restricts the way trade marks are used in relation to tobacco products. However, section 28(2) of the TPP Act states that use of a trade mark in relation to tobacco products is NOT contrary to law for the purposes of section 42(b) of the Trade Marks Act 1995.

3.5.10 Country of Origin Food Labelling Information Standard 2016

The Country of Origin Food Labelling Information Standard 2016 protects the use of the Australian Made Australian Grown (AMAG) logo and bar chart from 1 July 2016, applied as labelling on food and/or drink sold in Australia.

Under the Information Standard, the AMAG logo represents food and/or drink which is of Australian origin (i.e. meets the definition to claim grown, produced or made in Australia). The bar chart indicates the proportion (by ingoing weight) of Australian ingredients within a food and/or drink product, regardless of the country of origin of the food product. Under the Information Standard, these graphics are embedded within standard marks which are required to be applied to the labels of ‘priority foods’. These marks can also be voluntarily applied to the labels of ‘non-priority foods’, but if used, the AMAG logo and/or bar chart must be applied in accordance with marks outlined in the Information Standard.

Section 29(1) of the Information Standard indicates that a person must not use the AMAG logo or bar chart in relation to food sold in Australia unless it is permitted. Section 10 provides a representation of the AMAG logo and the appropriate bar chart. See below examples:

Bar chart examples:

Trade marks that contain the AMAG logo and/or bar chart, or contain material that closely resembles the AMAG logo and/or bar chart may attract grounds for rejection under sections 42, 43 and/or 44. Whilst the Information Standard references food that includes this labelling, the AMAG logo is also a registered certification trade mark, claiming all goods in classes 1 – 34 and a ground for rejection under section 44 should be considered. Section 43 should be considered if use of the AMAG image(s) would lead the consumer to be deceived or confused as to the origin of the products they are purchasing.

A contrary to law ground for rejection should be considered where a trade mark consists of this labelling (or material that closely resembles this labelling), and the application claims goods in classes 29, 30, 31, 32 and/or 33, and/or specific food and drink related services in classes 35 and/or 43.

If a ground for rejection has been raised under section 42, the applicant has the option to seek permission to use the AMAG logo and/or bar chart. This permission is supplied by the Department of Industry, Innovation and Science. Their contact details should be supplied to the applicant as part of the 1st report.

3.5.11 Australian Currency

A trade mark resembling or containing imagery of Australian currency may trigger a section 42(b) ground for rejection under the Copyright Act 1968 (Cth) and/or the Crimes (Currency) Act 1981 (Cth).

The website of the Royal Australian Mint under the Treasury portfolio states that the Commonwealth owns copyright in the designs and images used on Australian currency coins created after 1 May 1969. Permission to use and reproduce its coin designs can be sought through their website. However, approval generally will not be granted on articles to be commercially reproduced.

Similarly, the Reserve Bank of Australia holds copyright in relation to Australian banknotes and has issued guidance on acceptable use of its imagery. Included in the conditions are requirements that the reproductions must not be capable of misleading people to believe they are genuine banknotes and must not be changed or distorted in an inappropriate or derogatory manner or used in an inappropriate or offensive context. The Reserve Bank of Australia does not grant approval for specific reproductions or images and reserves the right to object to any use considered in contravention of its guidelines on acceptable use.

It is an offence under the Crimes (Currency) Act 1981 (Cth) s 6 to make any article that resembles Australian currency including both coins and paper money. Under section 19, it is an offence to design, make, print or distribute material that so resembles current paper money as to be capable of misleading a person to believe that it is current paper money. However, consent may be sought under s 19(2) for the use of such material.