31.2. Prescribed signs - subsection 39(2)

Paragraph 39(2)(a) states that a trade mark may be rejected if it contains or consists of a sign that is prescribed in the regulations for the purposes of subsection 39(2), OR is a sign so nearly resembling the prescribed sign as to be likely to be taken for it (subparagraph 39(2)(b)(i)). There are six types of signs prescribed in the regulations which are detailed below.

2.1  Signs containing the word "Patent" etc.

Reg 4.15(a) prescribes the following words:

• Patent,
• Patented,
• By Royal Letters Patent,
• Protected International Trade Mark
• Registered,
• Registered Design,
• Copyright,
• Plant Breeder’s Rights,
• EL rights,
• or words or symbols to the same effect (including the symbols "© " and "® ").

(For the meaning of “EL rights” see section 5 of the Circuit Layouts Act 1989.)

2.2  To counterfeit this is forgery

Reg 4.15(b) prescribes the words “To counterfeit this is a forgery”, or words to the same effect.

2.3  Arms etc. of Commonwealth or Territories

Reg 4.15(c) prescribes use of a representation of the Arms, or a flag or seal, of the Commonwealth or of a State or Territory.

2.4  Arms etc. of city, town etc.

Reg 4.15(d) prescribes the use of a representation of the Arms or emblem of a city or town in Australia or of a public authority or public institution in Australia.

2.5  WIPO signs (Article 6ter)

Regs 4.15(da) and (e) prescribe the use of a representation of a “sign”, applicable to countries of the International Union for the Protection of Industrial Property as not entitled to registration under international arrangements. Articles 6bis and 6ter of the Paris Convention list generally the kinds of signs which are to be refused registration, and states the obligations that apply to members of the Convention. 

WIPO signs include the following:

• Flags and coats of arms of Member States/countries
• Emblems, badges etc of intergovernmental organisations
• Badges of warranty and control, including hallmarks.

Under the terms of the Paris Convention, of which Australia became a member in 1907, a member state may refuse or cancel the registration of trade marks if they are the same as signs protected under Article 6ter.

The provisions also apply where part of a trade mark is a WIPO sign and where a trade mark contains or consists of a sign so nearly resembling a WIPO sign that it is likely to be taken for it.

2.6  Schedule 2 signs

Reg 4.15(f) prescribes the use of a representation included in Schedule 2 of the regulations.

These currently are:

• Austrade
• C.E.S.
• Olympic Champion
• Repatriation
• Returned Airman
• Returned Sailor
• Returned Soldier