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Prohibited Signs Notified Signs and Article 6ter of the Paris Convention
Notified Signs and Article 6ter of the Paris Convention
The Paris Convention for the Protection of Industrial Property (the Paris Convention) is an international treaty which regulates the international treatment of intellectual property. Australia became a contracting party to the Paris Convention on 10 October 1925. The Paris Convention is administered by the World Intellectual Property Organisation (WIPO)..
Under Article 6ter the Paris Convention member states agree to protect various signs upon the request of any other member state or an international intergovernmental organisation consisting of member states. The types of marks able to be notified include:
- 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 which consists of, or contains a notified sign, as well as any trade mark which has a certain similarity to a notified sign;
- Invalidate any registrations for trade marks which 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; and
- Make a list of those signs which have been notified available to the public.
New notifications are now advertised to provide an opportunity for interested parties to object to the extension of protection.
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 -9,000,000 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.
It is important to note that although many national flags are notified and included on the trade marks database, paragraph (3)(a) of Article 6ter of the Paris Convention indicates that formal notification is not necessary for protection to be accorded to the national flags of the member states. Therefore the identity of any flag which may be included within a trade mark should be researched even if it does not appear on the data base.
Relevant Australian Legislation
The provisions of subsection 39(2) of the Trade Marks Act 1995 and regulation 4.15 of the Trade Marks Regulations 1995 work together to prohibit the inclusion of notified signs. These provisions provide the mechanism for Australia to meet its obligation to refuse to register trade marks which consist of, or contain notified signs, or marks closely resembling notified signs. Subsection 39(2)(a) and supporting regulation 4.15(e) provide that if an application for registration of a trade mark contains a sign that has been notified under Article 6ter, or a sign so nearly resembling it to be likely to be taken for it, the application may be rejected.
Overcoming a ground for rejection under subsection 39(2)
If you receive a report from a trade marks examiner raising grounds for rejection under section 39(2), the application cannot proceed to registration until the grounds for rejection are overcome. In an attempt to overcome these, you may:
- Respond in writing to the report submitting arguments in rebuttal;
- Provide documents and information as additional support for the application. (for example, they are the owners of the notified sign);
- Amend the goods/services specification in order to remove overlaps with the goods/services in the application and the scope of the notified signs; or
- Provide a letter of consent from the relevant authority/owner of the notified sign.
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