AVIS DE DROIT PROTECTION DES SIGNES NATIONAUX

d) Protection des signes nationaux
(i) National Insignia Used as Trademarks
AUSTRALIE
Certain national insignia are protected against registration in Australia as trade marks. The
range of such insignia that are expressly recognised by the current Trade Marks Act 1995 is
much smaller than under the previous Trade Marks Act 1955. At present, express protection is
given to the flags of States Parties to the Paris Convention and to state emblems notified
under Art. 6ter, to the flags, arms and seals of the Commonwealth of Australia and of
Australian States, Territories, municipalities, public authorities and public institutions and
specifically to the word “Austrade”, being the trade name of the Australian federal export
promotion authority; Trade Marks Regulations 1995, reg. 4.15 and schedule 2. It should be
noted that the protection afforded is not absolute. Sec. 18 of the Trade Marks Act 1995
permits the executive to make regulations prohibiting any and all use of specified insignia as
trade marks, but no such regulations have been proclaimed. Reg. 4.15 and schedule 2 were
instead expressly proclaimed under subpara. 39(2)(a) of the Act, which permits the executive
to prescribe insignia that may be rejected as or as part of a proposed trade mark. No criteria
are provided for the trade marks registry to decide whether or not to register a mark
containing any of the specified insignia, but it may be supposed that registration would only
be approved in cases where the appropriate permission had been obtained by the applicant.
On the other hand, the trade marks registry is under a general duty to refuse to register trade
marks which, in relation to the particular goods or services in respect of which they are
proposed to be used, “would be likely to deceive or cause confusion”; Trade Marks Act 1995,
sec. 43. The registry takes the view 405 that this will be the case where the mark as a whole or
some element of it misrepresents the geographical origin of the relevant goods or services.
Furthermore, it is possible for any interested party to oppose registration of a mark on the
ground that it is intended to be used in respect of particular goods and that it contains a
“geographical indication” referring to a country, region or locality other than the country,
region or locality from which those goods really originate; Trade Marks Act 1995, sec. 61. A
“geographical indication” is defined in sec. 6 as some kind of insignia recognised in the
relevant country, region or locality as designating goods which originate from that country,
region or locality, either on a purely geographical basis or by reference to the quality or other
special characteristics of the relevant class of goods when produced or manufactured in that
country, region or locality. Once an opposition is lodged, the applicant for registration has the
onus of showing that he is using the geographical indication accurately, or that the
geographical indication is no longer used in the relevant country, region or locality, or that he
will not use the trade mark in such a manner as to deceive or confuse consumers as to the
origins of the goods. Special provisions reflecting Australia’s obligations under the TRIPS
Agreement govern marks for wines and spirits and a grandfather clause is available to
applicants who can show that they were using the relevant geographical indications before the
Act came into force or before they were recognised in the country from which the relevant
goods originate.
405 Refer to the Trade Marks Manual of Practice and Procedure, Part 29, para. 1.4.
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