The Trademark Trial and Appeal Board in the US (TTAB) recently refused the registration of a trade mark (shown below) because it includes the image of the American flag.

Section 2(b) of the Trademark Act, 15 U.S.C. Section 1052(b), prohibits registration of a trade mark that “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof”.

Compared to Australia

The corresponding section of the Australian Trade Marks Act 1995 (Cth) is Section 39(2) which provides as follows:

An application for the registration of a trade mark may be rejected if the trade mark contains or consists of:

(a) a sign that is prescribed for the purpose of this subsection;or

(b) a sign so nearly resembling:

(i) a sign referred to in paragraph (a); or

(ii) a sign referred to in subsections (1);

as to be likely to be taken to it.

According to Regulation 4.15(c) of the Trade Marks Regulations 1995 (Cth), “a representation of the Arms, or of a flag or seal, of the Commonwealth or of a State of Territory” is a prescribed sign for the purposes of Section 39(2)(a).

Key differences

The wording of the Australian and US acts differ slightly. The US Trademark Act prohibits the registration of a trade mark containing, consisting of, or comprising the US flag. The Australian Trade Marks Act however, states the registration of a trade mark may be rejected if it contains a ‘prescribed sign’; Australia’s flag constituting such a sign.

Consequently, there is not a blanket prohibition in Australia on the registration of trade marks containing a representation of the Australian flag. Instead, the Trade Marks Registrar has discretion to reject an application if it contains the Australian flag (or any other sign that is a prescribed sign for the purposes of Section 39).

What will fly 'down under'?

This begs the question; when can a trade mark in Australia include the Australian flag without falling afoul of Section 39(2)(a)? The Trade Marks Examiners Manual (Manual) says that a ground for rejection of a trade mark containing the Australian flag will not be raised “unless the Registrar is satisfied that use of a trade mark … would give rise to deception or confusion of the public as to:

    • The existence of a connection between the use of the sign and the person (body, organisation etc.) with whom the sign is associate; or
    • A status that the trade mark may have under intellectual property or other legislation."

The Manual then prescribes the following six factors for consideration, in determining whether the presence of the Australian flag in a trade mark would lead to the public being deceived or confused.

  1. With what person is the trade mark associated?
  2. With what activity is that person etc associate?
  3. Does that person etc produce the goods and services?
  4. Would that person etc be associated with particular goods or services because of the nature of the activity?
  5. Who constitutes the "public" who will purchase the goods or services to which the trade mark containing of the [flag] is to be applied?
  6. Would that "public" know of that and its activities or goods and services?

After considering these factors, should the Registrar deem that a trade mark containing or consisting of the Australian flag would not cause the public to be deceived or confused, a ground for rejection should not be raised based on Section 39(2).

'Flag Marks' on the Register

There are currently 341 pending and registered trade marks containing the Australian flag (across a range of classes of goods and services) on the Australian Trade Marks Register.

Examples of marks containing the Australian flag which do not fall foul of Section 39(2) include those shown below.

in Classes 30 and 43 for bakery products and services;

in Class 41 for musical entertainment services;

in Class 5 for pharmaceutical preparations, dietary and vitamin supplements

Overcoming objections

If a trade mark containing or consisting of the Australian flag is deemed by the Registrar as either deceiving or confusing to the public, it may be possible to successfully defeat the objection. To do so, applicants must establish:

  • they have permission of the relevant body to use the flag in relation to goods and/or services of the application and;
  • that this permission will be ongoing for the trade mark's full registration period.

Whilst in this commentary we have focused on the use of trade marks containing or consisting of the Australian flag, there are broader implications for prescribed signs in general. If a trade mark application is filed including the © or the ® symbols for example, these will need to be deleted from the trade mark representation to overcome the objection that will be raised based on Section 39(2).

Key thoughts to flag

The number of trade marks on the Register that contain or consist of the Australian flag is small compared to the number that have been filed but not registered (or that may have lapsed due to non-renewal for example). Though assessments will depend on the unique circumstances of each case, we recommend seeking advice before making an application to ensure the mark adheres to the provisions of Section 39(2).

Finally, trade marks containing or consisting of the Australian flag or that contains an image in general, will also have copyright ownership considerations. This is because the image contained in the trade mark will be considered an artistic work in which copyright ownership subsists.

Stay tuned for our next instalment which discusses how to ensure ownership of the copyright in your trade mark, before the trade mark application is filed.