Trade Marks You Cannot Have

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By Scott Coulthart, Special Counsel

As children, most of us were told there were certain words we just shouldn’t use — and some of us then weren’t told which words they were, just in case we hadn’t heard them before. This proved to be supremely unhelpful..

The good folks in Florida (USA) right now probably consider the most recent edict from their governor equally unhelpful.  It has been reported (article here) that the good governor has outright prohibited his employees from using certain phrases in public, including “climate change”, “global warming” and “sustainability”.  Apparently “The governor is an idiot” is still fair game.

I am occasionally asked whether there are certain words or other things that cannot lawfully form part of a trade mark to be registered.  Actually, there are, and happily, these prohibitions are eminently more sensible than those being meted out in Florida.

Section 39(2)(a) of the Trade Marks Act 1995 (Cth) provides that the Regulations may prescribe certain signs that must not be registered.  Regulation 4.15 of the Trade Marks Regulations 1995 (Cth) prescribe for that purpose:

  • the 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 ®);
  • the words “To counterfeit this is a forgery”, or words to the same effect;
  • a representation of the Arms, or of a flag or seal, of the Commonwealth or of a State or Territory;
  • a representation of the Arms or emblem of a city or town in Australia or of a public authority or public institution in Australia;
  • a representation of a mark notified by the International Union for the Protection of Industrial Property as not entitled to registration under international arrangements; and
  • a sign specified in Schedule 2 of the Regulations (which currently specifies “Austrade”, “C.E.S.”, “Olympic Champion”, “Repatriation”, “Returned Airman”, “Returned Sailor” and “Returned Soldier”.

Section 18 of the Act also provides that the Regulations may stipulate what marks simply cannot be used as trade marks, but at present the regulations do not specify any that cannot be used.

The Act also allows the Registrar to reject trade mark applications for a variety of other reasons, including for example that the mark applied for contains scandalous matter, its use would be contrary to law or cause deception or confusion.

There is also the Olympic Insignia Protection Act 1987 (Cth), which provides that the Olympic motto, the Olympic symbol and certain other Olympic images must not be registered as trade marks.  Chapter 3 of that Act also prohibits the commercial use of certain “Olympic expressions” unless the user holds a licence granted by the AOC.

Every time the Olympics come around again, traders often tell us that Chapter 3 of that Act seems a little unfair and restrictive.  But at least we don’t live in Florida …

For further information, please do not hesitate to contact us.

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