FOR IP PROFESSIONALS

Prohibited signs

The Paris Convention for the Protection of Industrial Property is an international treaty that regulates the international treatment of intellectual property. Australia became a member state to the Paris Convention on 10 October 1925. The Paris Convention is administered by the World Intellectual Property Organization (WIPO).

Under Article 6ter, the Paris Convention member states agree to protect various signs, including:

  • armorial bearings
  • flags
  • emblems
  • official signs
  • hallmarks
  • abbreviations and names of international intergovernmental organisations

To meet the obligations under Article 6ter of the Paris Convention, a member state must:

  • refuse to register a trade mark that consists of or contains a notified sign, as well as any trade mark that has a certain similarity to a notified sign
  • invalidate any registrations for trade marks that consist of or contain notified signs
  • provide effective means to stop unauthorised use of notified signs
  • extend protection to the flags of the member states regardless of whether they have been notified
  • if they intend not to extend protection to a notified sign, communicate such an intention within 12 months of notification
  • make a list of those signs that have been notified available to the public

New notifications and additions

Signs newly notified under Article 6ter of the Paris Convention are published in our official notices or available under Article 6ter of the Paris Convention on the WIPO website.

Australia has a period of 12 months from the notification date to advise whether protection will be provided for the signs. The notification date is the day on which the sign is published by WIPO.

Newly notified signs are published online by WIPO every six months.

Locating notified signs on the Trade Marks Database

When received, notified signs are indexed and put onto the Trade Marks Database. They are allocated numbers in the -9000000 range and are currently classified in Class 42 for searching purposes. These marks can be located in a standard search of the database using the ATMOSS search tool.

Objections

If you believe that the extension of protection to a newly notified sign may have a significant adverse effect on your prior trade mark rights, you can lodge an objection. You can also lodge an objection based on an established practice for the use of a sign or a legitimate need or right to use the trade mark in Australia. Alternatively you may wish to provide the Registrar with additional information in relation to the extension of protection to a notified sign.

Objections must be received by the Registrar of Trade Marks within 11 months of the notification date.

All objections and any additional information will be considered by the Registrar on their merits and any appropriate objections will be conveyed to the International Bureau at the World Intellectual Property Organization.

More information

Last Updated: 27/3/2014

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Doctor of Philosophy in Chemistry

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