31.1. Prohibited signs - subsection 39(1)

Date Published

Under the terms of subsection 39(1) the Registrar must reject an application if the trade mark sought to be registered contains or consists of a sign that appears in regulations made for the purposes of section 18. Such signs are not to be used as trade marks.

1.1 As there are no signs to be specified as prohibited no regulations have yet been made for the purposes of section 18 of the Act.

1.2 To be rejected, the trade mark application must contain or consist of the same sign as that prohibited by the regulations to section 18 (subsection 39(1)) or a sign so nearly resembling a prohibited sign as to be likely to be taken for it (subparagraph 39(2)(b)(ii)).

1.3 Regulations made under section 18 are registered under the Legislative Instruments Act 2003 (section 12). There are no retrospective provisions under section 12 so these regulations will have no effect on any existing registered trade mark. This does not mean, however, that a further application for that same trade mark will be allowed after the Regulations come into effect. In such circumstances, if the trade mark contains or consists of a sign that is the subject of regulations for the purposes of section 12, the application will be rejected under the provisions of subsection 39(1)

1.4 Regulations under section 18 would have no effect on a trade mark that was not registered but was being used “in good faith” immediately before the regulations were registered under the Legislative Instruments Act 2003 (section 12). If such a trade mark was sought to be registered, the applicant would need to establish their use in good faith by filing a declaration that sets out the history of the use of the trade mark. This declaration should be made out by the individual applicant or a responsible member of the applicant company. Some examples of how the trade mark has been used would also be valuable. Intention to use will not suffice for the purposes of this provision.

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