A trademark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (section 17 Trade Marks Act 1995 (Cth). More often than not, a trademark application will be rejected on the basis that the mark does not adequately distinguish the trader’s goods and/or services, or because the trader’s mark is identical or deceptively similar to a mark which has claims an earlier priority date. While these are the two major grounds upon which an application to register a trademark may be rejected, they are by no means the only grounds. Per section 42 of the Trade Marks Act 1995 (Cth), an application to register a trademark will be refused if the use of the mark would be contrary to law.

Contrary to law

Use of a trade mark will be contrary to law if:

  1. the mark contains a sign the use of which is prohibited under legislation; or
  2. there is a binding legal precedent that establishes the illegality of the mark’s use.

The Geneva Convention

The Geneva Convention Act 1957 is an international piece of legislation, which specifically prohibits the use of images that depict a:

  • red cross;
  • red crescent;
  • red lion and sun; and/or
  • red crystal.

An application to register a trademark that contains the above emblems will be rejected irrespective of the goods and/or services that the mark claims.

It is possible for a trademark containing the above symbols to proceed to registration, however, use of the symbols is conditional upon the trader obtaining the written consent of the Minister for Defence or a person authorised in writing by the Minister to give their consent.

Banking and Insurance Terms

Under the Banking Act 1959 and the Life Insurance Act 1995, as a matter of public policy, a trade mark cannot contain certain words and/or phrases unless the trader is a recognised financial institution. These include (but are not limited to):

  • Authorised deposit-taking institution;
  • Bank;
  • Banker;
  • Credit society; and
  • Friendly society.

Limiting the use of the above terms ensures that organisations that hold themselves out as banks, credit societies, friendly societies and alike, are in fact genuine financial institutions.

Defence terms

Per section 2(1) of the War Precautions Repeal Act 1920, no trade mark is allowed to proceed to registration if it contains the word ANZAC.

Similarly, under the Defence Act 1903 and the Defence (Prohibited Words and Letters) Regulations 1957: a trade mark application will be rejected if it contains a defence emblem or words which suggest a connection with the Australian Defence Forces.

Protected emblems include:

  • The official badge of the Royal Australian Navy;
  • The Australian Army Emblem;
  • The general Badge of the Royal Australian Air Force; and
  • The Combined Services Badge.

Protected terms include:

  • Australia Army;
  • Australian Navy;
  • Air Force;
  • Defence Force;
  • Army Reserve;
  • HMA Ships;
  • Naval;
  • Navy;
  • Regular Army; and
  • Special Reserve, just to name a few.

Conclusion

This article addresses only some of the circumstances under which a trademark application may be rejected on the basis that the mark’s use is contrary to law. If you would like to know more about the same or how to go about effectively registering your trade mark, why not contact LegalVision’s friendly team of trademark lawyers by calling us on 1300 544 755. We would be happy to assist and answer any queries that you may have.

Vanja Simic

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