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Prohibited Signs Signs which are contrary to Australian law
Signs which are contrary to Australian law
Some signs are contrary to particular Australian laws which limit their use and therefore cannot normally be included in a registered trade mark. Subsection 42(b) of the Trade Marks Act 1995 provides a ground for rejection to prevent the registration of signs that are contrary to Australian Law.
To be caught by this section of the Act, use of a trade mark should breach some piece of legislation or a court decision made in relation to a particular trade mark. As the function of IP Australia is administrative, rather than judicial, this section is usually only applied where use of the mark would clearly constitute a breach of another Act.
Various types of legislation can protect words symbols and images including:
- Environmental Protection and Biodiversity Conservation Act 1999
- Olympic Insignia Protection Act 1987
- Geneva Convention Act 1957
- Defence Act 1903
- Banking Act 1959
Examples of further statutory legislation which prohibits the use of words
and signs as trade marks can be found in the Trade Marks Manual of Practice
and Procedure under Part 30, Annex
A1. This list is not exhaustive.
Locating Signs which are Contrary to Law
Signs which are contrary to Australian law are entered on the prohibited signs section of the Trade Marks database. When IP Australia is advised that a sign is contrary to law it is indexed and put onto the trade mark data base. 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.
Overcoming a ground for rejection under subsection 42(b)
If you receive a report from a trade marks examiner raising grounds for rejection under section 42(b), 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;
- If applicable, amend the goods/service specification in order to remove those goods and/or services for which use would be contrary to law; and
- Provide a letter of consent from the relevant authority/minister responsible for administering the legislation.
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