31.4. 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 sign from their trade mark and provide a new representation with the sign removed.

Where the prescribed sign 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:

​​​​​​​a. to copy the layout, directly or indirectly, in a material form;

b. to make an integrated circuit in accordance with the layout or a copy of the layout;

c. 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.

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, and the Criminal Code Act 1995. See Part 30.3 Use Contrary to Law (Section 42(b)).

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.

A section 39 ground for rejection for a representation of the Coat of Arms applies to:

• a trade mark containing or consisting of one of these versions of the Coat of Arms;
• a sign so nearly resembling it as to be likely to be taken for it; or
• a sign which is not an accurate reproduction of the Coat of Arms.  

For example: a representation of the Coat of Arms with animals other than a kangaroo and emu, or with another device in the place of the shield, may be recognisable as a variation of the Coat of Arms but different enough that it would not be taken to be the Coat of Arms. Because the Guidelines require the Coat of Arms to be reproduced accurately however, a section 39 ground for rejection would still apply.

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.

Published guidance on commercial use of the Australian National flag informs the use of our discretion under section 39(2) in relation to the Australian National Flag. The Aboriginal and Torres Strait Islander flags are assessed under the ordinary test for section 39, namely whether the trade mark contains or consists of one of the flags or a sign so nearly resembling the flag that it is likely to be taken for it.

Australian National Flag

For the Australian National Flag, there are additional factors to consider.

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:

• The flag should be used in a dignified manner and reproduced completely and accurately
• The image of the flag should not be covered with other words, illustrations or objects
• All symbolic parts of the flag should be identifiable, such as the Union Jack, the Southern Cross and the Federation Star​​​​​​​

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

Incomplete flag

Flag defaced by overprinting with text

Flag elements distorted with orientation of Southern Cross incorrect

Incorrect stars

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

Complete flag

Complete flag (waving is okay)

Not the Australian flag

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. If a trade mark includes a device that appears to be a flag of some kind, research should be undertaken in addition to consideration of any relevant notified Article 6ters.

• Where a trade mark consists of or contains a representation of the colours of an international flag and is clearly represented as a flag, a section 39 ground for rejection would be appropriate.
• Where the trade mark consists of or contains a representation of the colours of an international flag, including those colours represented in an appropriate order, but does not present the colours as part of a normal or apt flag or is missing parts of the particular flag, a section 39 ground for rejection may not be appropriate.

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.

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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.  

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.

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.