4. Practice for examining trade marks containing the signs specified in reg 4.15

4.1  Indication of intellectual property rights etc - Subregs 4.15(a) and (b)

The signs prescribed in sub regulation 4.15(a) and (b) usually form a minor part of any trade mark in which they are used. It is thus unlikely that deleting any of them will affect its identity. In these cases the owner should be requested to consent to delete the particular item from their trade mark.

Where the prescribed term or symbol forms a reasonably large component of the trade mark and deleting it would substantially affect the identity of the trade mark then a ground for rejection exists and should be raised. Note that no ground for rejection exists where the words “trade mark” or the symbol ™ appears in the trade mark under examination. However, if the words “registered trade mark” appear in the representation, examiners should ask the applicant to delete the word “registered”.

Circuit layouts:  These are not something often encountered.  However, there are rights given to them via legislation, and examiners should keep this in mind.  

A “circuit layout” means, under Section 5 of the Circuit Layouts Act 1989, “a plan comprising a two-dimensional representation, fixed in any material form, of the three-dimensional location of the active and passive elements and interconnections making up an integrated circuit”. Section 5 defines “EL rights” as the exclusive rights specified in section 17 in relation to an eligible layout. Section 17 states:

The owner of the EL rights in an eligible layout has, during the protection period of the layout, the following exclusive rights:

    1. to copy the layout, directly or indirectly, in a material form;
    2. to make an integrated circuit in accordance with the layout or a copy of the layout;
    3. to exploit the layout commercially in Australia.

4.2  Australian flags and emblems

4.2.1  Commonwealth of Australia: Coat of Arms

The following information is taken from the web page "Commonwealth Coat of Arms" on the Department of the Prime Minister and Cabinet website.

The Commonwealth Coat of Arms is the formal symbol of the Commonwealth of Australia and signifies Commonwealth authority and ownership.

It is used by Australian Government departments and agencies, statutory and non-statutory authorities, the Parliament and Commonwealth courts and tribunals.

The Department of Prime Minister and Cabinet (PM&C) publishes Guidelines on the use of the Commonwealth Coat of Arms.

Individuals can apply to PM&C for permission in writing to use the Commonwealth Coat of Arms (refer to the Guidelines for contact details). PM&C has discretion to grant permission in limited circumstances, including: for education and for Australian teams competing in international competitions.

Use of the Commonwealth Coat of Arms without permission may breach the Competition and Consumer Act 2010, the Trade Marks Act 1995 and the Criminal Code Act 1995.

Importation of goods bearing the Commonwealth Coat of Arms is prohibited under the Customs (Prohibited Imports) Regulations.

The Commonwealth Coat of Arms must be reproduced accurately.

Note:  Use of the Commonwealth Coat of Arms without permission may breach the Competition and Consumer Act 2010, the Trade Marks Act 1995 and the Criminal Code Act 1995.

The coat of arms illustrated below is a conventional variation. For further information about the ten variations of the Australian Coat of Arms see the PM&C website.

Note: The Australian Coat of Arms is a notified sign under Article 6ter. The notified signs on the Trade Marks database are -9001117 through -9001122 and -9001754.

 

4.2.2  Commonwealth of Australia:  Australian Flags

Australian flags include the Australian National flag, Aboriginal flag and Torres Strait Island flag.  Representations of a flag of the Commonwealth including the Australian National flag, Aboriginal flag and Torres Strait Islander flag are prescribed under regulation 4.15(c) of the Trade Marks Regulations 1995. Section 39 of the Trade Marks Act 1995 therefore provides discretion to reject trade marks containing Australian flags or a sign so nearly resembling it.

Australian National Flag

A section 39 ground for rejection for an Australian National flag  is exercised in accordance with guidelines surrounding the Commercial use of the Australian National Flag published on the PM & C website:

The flag can be used for commercial purposes, including advertising, without formal permission, except when importing products, applying for trade marks and registering designs.

When using or reproducing an image of the national flag, you must consider the following guidelines:

For example, the following representations of the Australian flag would not meet the above guidelines:

Kangaroo with incomplete Australian flag design

Incomplete flag

Australian Flag with southern cross incorrect

Flag elements distorted with orientation of Southern Cross incorrect

Koala with the Australian Flag and words over the top

Flag defaced by overprinting with text

Australian Flag with incorrect stars

Incorrect stars

 

The following representations are examples that would be acceptable under the above guidelines:

Kangaroo with a complete Australian Flag

Complete flag

Kangaroo with the southern cross

Not the Australian flag

Waving Australian Flag

Complete flag (waving is okay)

Australian map with almost all of the Australian flag superimposed

Sufficiently complete flag

 

Further information about appropriate use or representation of Australian flags can be obtained from:

Commonwealth Flag Officer
Honours and Symbols Section
The Department of Prime Minister and Cabinet

Contact details can be found here.

 

While use of the Australian National flag within a trade mark may suggest the goods are of Australian origin, there is no requirement that the goods/services be restricted to those made in Australia.

Note: The Aboriginal and Torres Strait Islander flags are protected by the Copyright Act (contrary to law under section 42 of the Trade Marks Act 1995) – please see Part 30.3.4 - Signs that are Scandalous and Contrary to law for more information.

4.2.3  Commonwealth of Australia: floral and faunal emblems and official colours

Australia’s national floral emblem is the golden wattle (Acacia pycnantha Benth). When in flower, the golden wattle displays the national colours, green and gold. Further information can be found here.

Permission is not required to reproduce the national floral emblem. No objection arises under section 39 for the use of the floral or faunal emblem or the national colours (green and gold). Any trade marks incorporating these features will be subject to the normal examination required for any trade mark application.

4.3  Arms and emblems of Australian towns etc - Subreg 4.15(d)

The Trade Marks Office does not keep copies of the Arms and emblems of cities and towns or public authorities and public institutions in Australia, because of the difficulty of obtaining and maintaining this material. If an examiner becomes aware that a trade mark includes such matter the applicant should be requested to provide consent to its use from the competent authority in order to avoid a ground of rejection under subsection 39(2). Otherwise, if the use of such Arms or emblems would be considered deceptive or confusing, it is up to the body to which the Arms or emblems belong, or other interested parties, to notify the Registrar of the problem.

4.4  WIPO signs (Article 6ter) - Subreg 4.15(da) and (e)

Notified signs –International flags –Subreg 4.15 (e) and Subreg 4.15(da)

As stated at 2.5 these "signs" are notified by the International Union for the Protection of Industrial Property as not entitled to registration under international arrangements. Article 6ter of the Paris Convention details the types of signs able to be notified and these include armorial bearings, flags, state emblems, official signs and hallmarks, abbreviations and names of the countries party to the Paris Convention and names of international inter- governmental organisations by the Revision Conference of Lisbon in 1958.

4.4.1 (Subreg 4.15(e))

When a State party to the Paris convention or an international intergovernmental organisation wishes to obtain protection, the emblems or other official signs are communicated to WIPO and then communicated to the other States (that are party to the Paris convention), they are indexed, allocated numbers in the -900000 range and are put onto the trade mark search database.  An appropriate search strategy during the normal examination process will reveal these signs.

4.4.2  (Subreg 4.15(da))

Whilst many national flags are notified, paragraph (3)(a) 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.  When a trade mark consists of or contains a representation that shares the same visual features of an international flag protected under the Paris Convention, the manner in which the flag is represented should be taken into account.

An important factor to take into account is whether the representation of the flag is likely to mislead the public as to a connection between the applicant and the particular country The strength of the heraldic reference is a key determinate as to whether a section 39 ground for rejection is appropriate.

Examples which include a heraldic reference have been provided below to assist in determining whether a flag representation may be considered problematic under section 39.

Whilst the above representation provides a reference to the United States of America national flag, including the use of the stars and stripes design, the visual features are not presented in a normal and apt way that would present itself as a flag. Therefore, a section 39 ground for rejection is not appropriate.

The above representation includes a clear and accurate depiction of the United States of America national flag. The representation includes flag poles and a typical waving effect. As such a section 39 ground for rejection would be appropriate. The trade mark includes a representation of a flag of a country that is a member of the International Union for the Protection of Industrial Property.  

More information regarding Article 6ter can be found on the WIPO website.

4.4.3

If a notified sign is found which closely resembles the trade mark being searched, further research should be carried out to determine if the sign has only been notified for specific goods and/or services or whether the notification of that sign is a general prohibition on the use of the sign.  In the first instance examiners should check WIPO’s Article 6ter Express database to ensure the most up to date record in relation to a sign is being viewed. (See Part 64.2.2 Guidelines for searching WIPO’s Article 6ter database).

Flags, coats of arms and country emblems, for example, apply to all goods and services in any class.  However, intergovernmental and warranty signs have limited goods and/or services. For example, a hallmark which is limited to metal goods is unlikely to cause confusion if applied to textile goods.

Note: Article 6ter signs recorded after 1 January 2018 will not have a decision sheet on file. Older Article 6ters will have decision sheets in RIO, however these should only be treated as a guide. Examiners should still research the use of the sign to determine the scope of the goods and/or services for which it is used.

4.4.4

Information to assist examiners in determining the scope of the protection has been entered into RIO. This information will indicate nation, governmental organisation or intergovernmental organisation that the sign is being protected on behalf of, and the contact details of the relevant authority.For signs with limited protection, examiners should conduct research into the organisation’s activities (such as capturing information from the organisation’s website) to help determine if a section 39(2) ground for rejection should be raised.