General Motors LLC

[2015] ATMO 114

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 1565109(12) - CORVETTE EMBLEM C7 Device - in the name of General Motors LLC.

Delegate:	Robert Wilson
Representation:	Applicant: Ian Tannahill and Dan Fox of Ahearn Fox Patent & Trade Mark Attorneys
Decision:	2015 ATMO 114 Ex parte proceeding – Ground for rejection under s 42(b) of the Trade Marks Act 1995 considered – if rendered in certain colours use of trade mark would be contrary to s 15 of the Geneva Conventions Act 1957 – trade mark application rejected

Background

1. On 27 June 2013, General Motors LLC (‘the Applicant’) applied to register a trade mark the details of which are shown below:

Application No.:

1565109

Priority Date:

27 June 2013

Goods:

Class 12: Motor vehicles, and parts thereof

(‘the Applicant’s Goods’)

Trade Mark:

(‘the Applicant’s Trade Mark’)

1. The Applicant’s Trade Mark was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’). The examiner was satisfied that a ground for rejection existed under section 42 of the Act. On 17 December 2013, the examiner wrote in the his first adverse report (‘the first report’):

   A trade mark is used to distinguish the goods or services sold by one trader from those sold by other traders.

   A trade mark will be difficult to register if its use would offend ordinary people or would conflict with relevant legislation.

   (For more details, see Section 42 of the Trade Marks Act 1995)

   Your trade mark contains the emblem of a cross with vertical and horizontal arms of equal length.

   This emblem is protected under section 15 of the Geneva Conventions Act 1957. The Act prohibits the use of this emblem, in certain colours, for any purpose.

2. The examiner provided the Applicant with the option of adding the following endorsement to the application to overcome the issue:

   It is a condition of registration that, in use, the cross device contained within the trade mark will be rendered in colours other than red on a white or silver background, or white or silver on a red background.

3. Although not explicitly stated, it can be deduced from the first report that the ground for rejecting the application is based on s 42(b) of the Act. Insofar as it is relevant to this matter s 42 is reproduced below:

   Trade Marks Act 1995 – Section 42

   Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:
   …

   (b) its use would be contrary to law.

4. Again, although not explicitly stated, it can be deduced from the first report that the examiner considered the use of the Applicant’s Trade Mark would be contrary to ss 15(1)(a), (d) or (e) of the Geneva Conventions Act 1957 (‘the GC Act’). The relevant provisions of the GC Act are reproduced below:

   Geneva Conventions Act 1957 – Section 15

   Use of Red Cross and other emblems, signs, signals, identity cards, insignia and uniforms

   (1)Subject to this section, a person shall not, without the consent in writing of the Minister or of a person authorized in writing by the Minister to give consents under this section, use for any purpose whatsoever any of the following:

   (a)the emblem of a red cross with vertical and horizontal arms of the same length on, and completely surrounded by, a white ground, or the designation "Red Cross" or "Geneva Cross";

   …

   (d)the emblem of a white or silver cross with vertical and horizontal arms of the same length on, and completely surrounded by, a red ground, being the heraldic emblem of the Swiss Confederation;

   (e)a design or wording so nearly resembling any of the emblems or designations specified in paragraph (a), (b), (c), (ca) or (d) as to be capable of being mistaken for, or, as the case may be, understood as referring to, one of those emblems;

5. The examiner considered that use of the Applicant’s Trade Mark would be contrary to law if the cross device contained within the trade mark (‘the Applicant’s Cross Device’) were to be rendered in any of the particular combinations of colours described in ss 15(1)(a) and (d) of the GC Act. The purpose of the proposed endorsement was to prevent the cross device being rendered in those combinations of colours thereby avoiding its use being contrary to the GC Act.

6. On 18 December 2013 the Applicant responded to the first report with submissions which included the following:

   The applicant’s cross device consists of both vertical and horizontal arms. The vertical arms have square ends. The horizontal arms have oblique ends.

   The horizontal arms are approximately 3.6 times longer than the vertical arms.

   In our opinion the applicant’s cross device does not so nearly resemble a cross having horizontal arms of equal length and squared ends as to be likely to be mistaken for same.

   In view of the above, we do not believe that the applicant should give consent to the endorsement proposed by the Examiner and that the objection relating to same ought to be withdrawn.

7. The examiner was not persuaded by the attorney’s submissions and responded with a second adverse report (‘the second report’). The examiner indicated in the second report that, in addition to the endorsement offered in the first report, the Applicant had the option of seeking Ministerial consent to overcome the ground for rejection: as is provided for by s 15(1) of the GC Act.

8. A further two adverse reports were issued by the examiner following responses by the Applicant’s attorneys which also failed to satisfy the examiner that the ground for rejection should be withdrawn. The Applicant chose not to request the offered endorsement, nor, I am led to understand (from discussion at the Hearing), to seek Ministerial consent. The examiner considered that the application was at an impasse, and on 2 June 2015 a Notice of Intention to Reject (‘NIR’) was issued. In response to the NIR the Applicant requested to be heard as provided for by s 33(4) of the Act.

An effective and efficient approach

1. As indicated above, there have been four adverse reports where the examiner initially raised and then maintained the ground for rejecting the Applicant’s Trade Mark. In each report the examiner gave the Applicant the options for addressing the ground so the ground could be withdrawn. Despite this, for whatever reason/s, the Applicant has decided to request to be heard on the matter.

2. As the Applicant is represented it can be assumed the Applicant is aware that the outcome of my decision could be to reject the Application. To challenge a decision to reject the application would require an appeal to an appropriate Court.[1]

   [1] Trade Marks Act 1995 s 35.

3. The opportunity for the Applicant to take an effective and efficient approach, in either (a) agreeing to the offered endorsement or (b) seeking consent from the Minister for Defence has not occurred. Put simply, the Applicant may have resolved this matter directly by approaching the Department of Defence to consider:

   (i)Whether the arms are of equal length and therefore may fall under s 15(1)(a) or (b) of the GC Act;

   (ii)If not, whether the Applicant’s cross device falls under s 15(1)(e) of the GC Act; and

   (iii)The determination to be put before the Minister.

4. I heard the matter as a delegate of the Registrar in Brisbane on 8 September 2015. The Applicant was represented by Ian Tannahill and Dan Fox of Ahearn Fox Patent and Trade Mark Attorneys (‘Ahern Fox’). The attorney’s oral submissions were supplemented by written submissions provided prior to the hearing in accordance with my directions.

About the Applicant

1. The Applicant’s attorney provided some background information about the Applicant in its response to the first report:

   The Applicant is an American multinational corporation that designs, manufactures, markets and distributes motor vehicles in 37 countries around the world, including Australia.

   The Applicant led global motor vehicle sales for 77 consecutive years from 1931 through to 2007, and is currently among the world’s largest motor vehicle manufacturers.

   The Applicant has been using a stylised cross device that is known around the world as the Chevrolet ‘bowtie’, continuously since 1913 in respect of motor vehicles sold under the CHEVROLET brand. …

   The Chevrolet ‘bowtie’ consists of both vertical and horizontal arms. The vertical arms have square ends. The horizontal arms have oblique ends. Further, the horizontal arms are approximately 3.6 times longer than the vertical arms.

   The Applicant has been manufacturing and selling a motor vehicle known by the trade mark CORVETTE under their brand CHEVROLET continuously since 1953. The seventh generation CORVETTE and its new emblem, which is the subject of the present application, were unveiled on 13 January 2013. The seventh generation emblem, like its six predecessors includes the Chevrolet ‘bowtie’.

   [W]e note that both the second generation and the third generation emblems, which were applied to vehicles manufactured between 1963 and 1982, included a red coloured Chevrolet ‘bowtie’ having a white or silver coloured border. We also note that the fifth generation emblem, which was in use from 1997 to 2004, included a white coloured Chevrolet ‘bowtie’ displayed on a red coloured background.

   We understand that CORVETTE motor vehicles have been sold in many countries around the world and to the best of our knowledge the Red Cross Society has never objected to the Applicant’s use of the aforementioned second, third and fifth generation emblems.

1. The Applicant has a number of trade marks registered in Australia which are, or include, the Chevrolet Bowtie described above. Four are depicted below which I will refer to as ‘the Applicant’s Earlier Trade Marks’:

Trade Mark Number	Trade Mark
60470
327794
502443
803956

1. Of the Applicant’s Earlier Trade Marks only 60470 has an endorsement which relates to the colour of the representation of the trade mark. The endorsement reads:

   The Proprietor Company undertakes that the cross device will not be used in red. The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

Discussion

1. At the hearing the Applicant’s submissions addressed some issues for which I sought further clarification. I allowed the Applicant some time following the hearing to provide me with further written submissions which they provided in due course. In summary, the Applicant’s oral and written submissions centred around the following:

   a.The Applicant’s Cross Device does not fall under ss 15(1)(a) or (d) of the GC Act; and/or

   b.The Applicant’s Cross Device does not fall under s 51(1)(e) of the GC Act; and/or

   c.The wording of s 42(b) contains the word ‘would’ not ‘could’. The suggested implication being that where a cross device does not fall under ss 15(1)(a) or (d) of the GC Act the Registrar does not have the power to say that use of the trade mark ‘would’ be contrary to law, merely that it ‘could’ be contrary to law; and/or

   d.Because of the word ‘design’ in s 15(1)(e) of the GC Act it is necessary to consider the Applicant’s Trade Mark as a whole and not dissect the ‘emblem’ of the Red Cross out of that design; and/or

   e.Requiring an endorsement is inconsistent with the examination of other trade marks on the Register; and/or

   f.That the Office is out of step with foreign trade mark authorities who have accepted the trade mark.

I will consider each of these below.

Sections 15(1)(a) and (d) of the Geneva Conventions Act 1957

1. The Applicant has submitted that the Applicant’s Trade Mark does not fall under ss 15(1)(a) or (d) of the GC Act because the Applicant’s Cross Device does not comprise arms of equal length. It is also submitted that the Applicant’s Cross Device is the Chevrolet bowtie (‘the bowtie device’) discussed above. I am satisfied that on an objective assessment the Applicant’s Cross Device does not fall under ss 15(1)(a) or (d) as the vertical and horizontal arms of the cross are not of equal length. It is necessary therefore to consider whether the Applicant’s Cross Device may fall under s 15(1)(e).

Section 15(1)(e) of the Geneva Conventions Act 1957

Does the Registrar have the power to make a determination under s 15(1)(e)?

1. The Applicant averred that it would be ultra vires for the Registrar to consider whether use of the Applicant’s Trade Mark would be contrary to s 15(1)(e) of the GC Act. The Applicant made a number of submissions in this regard including:

   Where a trade mark comprises a cross device which does not objectively fall under subsections 15(1)(a) or (d) then the Registrar cannot say that use of the mark would be contrary to law. All the Registrar can say is that it ‘might’ fall within the scope of subsection 15(1)(e), and that is not enough for the Registrar to refuse to register the mark.

   The prohibitions contained in subsections 15(1)(a) and (d) arise from features which can be objectively determined. The Registrar simply looks at the colours, measures the arms of the cross, checks whether the white or red ground extends fully around the cross and whether on those objective determinations the Registrar can say ‘yes’ or ‘no’.

and

[O]nly a court can determine whether use of a trade mark would be ‘contrary’ to law, otherwise the Registrar would be required to make a ‘judicial’ determination rather than an ‘administrative’ determination which is not within the Registrar’s powers. This is supported by cases which say that the Registrar cannot reject a trade mark because it ‘could’ be contrary to law. … [T]he Registrar must be certain that use of the trade mark would be contrary to law.

If an applicant uses his trade mark without the consent of the Minister, then it is for a court to decide whether the applicant has used a design so nearly resembling the Red Cross emblem as to be capable of being mistaken for, or, as the case may be, understood as referring to the Red Cross Emblem. Further, if the court finds that the applicant has used a design that is capable of being mistaken for, or, understood as referring to the Red Cross, then the application has breached section 15 of the Geneva Conventions Act 1957.

1. The role of the Registrar in determining matters pursuant to s 42(b) of the Act was addressed by Madgwick J in Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd.[2] The question in that case was considered in the context that use of a particular trade mark would constitute an infringement of the Copyright Act 1968 (Cth). His Honour stated in that case:

   Issue was taken as to the appropriateness of the Registrar determining issues of law outside the area of his or her expertise, namely trade marks. It was submitted by counsel for the Registrar that it was not within the competence of the Registrar to determine at the stage of opposition proceedings whether a trade mark would be contrary to law if it involved issues beyond those set out in the Act. It was submitted that the proper administration of the Act requires that the Registrar only make determinations under s 42(b) where there is a clear finding that the Registrar can apply, such as a decision of a court of competent jurisdiction that a mark infringes the law and not when it involves complex considerations of legal matters going beyond those specifically set out in the Act. …

   [I]n my opinion the fact that the existence of any contrariety to law is to be exercised in some circumstances by an administrative body and, in other circumstances, by a judicial body does not mean that the phrase ‘if its use would be contrary to law’ should have an ambulatory meaning, depending on what kind of tribunal is to apply it. Nor can any reticence on the part of an administrative decision-maker to express an opinion on a matter of law be encouraged. The idea that ‘contrary to law’ in the context of judicial proceedings means contrary to all laws, whilst in the context of proceedings before the Registrar it means contrary to laws which are easy for the Registrar to determine or which are ‘clear cut’, is not sustainable. … Further, it is well-settled that a power granted to the Registrar and to a court can be at once administrative and judicial depending on who was exercising the power. …

   [T]he Registrar has the comfort that the criterion is that the use ‘would’ not ‘could’ be contrary to law. … Such opinion does not have a similar effect to say, a judicial conclusion of law as to breach of copyright proceedings; the effect is limited to the refusal of registration. In any case, an appeal de novo lies from the Registrar’s decision to this Court where any error of the Registrar may be corrected.[3]

   [2] [2001] FCA 683.

   [3] Ibid [23]-[28].

2. It is clear from the words of Madgwick J, above, that it is within in the power of the Registrar to make a decision under s 42(b) of the Act in respect of s 15(1)(e) of the GC Act.

Must the Applicant’s Trade Mark be considered as a whole?

1. The Applicant has submitted that because s 15(1)(e) includes the word ‘design’—this word being absent from ss 15(1)(a) and (d)—the construction of the section requires that ‘it is necessary to consider the entire design and not dissect the “emblem” of the Red Cross out of that “design”’. The Applicant based this submission on principles of statutory interpretation including the following:

   The [first principle] is that when a word is consistently used in legislation, it should be given the same meaning consistently. [The second principle is that] where the legislature could have used the same word but chose to use a different word, the intention was to change the meaning.

1. The Applicant cited the following words of Hodges J from Craig Williamson Pty Ltd v Barrowcliff to support the first principle:

   I think it is a fundamental rule of construction that any document should be construed as far as possible so as to give the same meaning to the same words wherever those words occur in that document, and that that applies especially to the meaning of an Act of Parliament, and with especial force to words contained within the same section of an Act. There ought to be very strong reasons present before the Court holds that words in one part of a section have a different meaning from the same words appearing in another part of the same section.[4]

   [4] [1915] VLR 450, 452.

2. To support the second principle the Applicant cited the following words of Irvine CJ from Scott v Commercial Hotel Merbein Pty Ltd:

   [T]hough it is not to be conclusive, the employment of different language in the same Act may show that the Legislature had in view different objects.[5]

   [5] [1930] VLR 25, 30.

3. The Applicant averred:

   In the present case, the legislature used the same words ‘emblem/emblems’ in subsections 15(1)(a), 15(1)(d) and 15(1)(e) of [the GC Act], and at the same time used the contrasting words ‘emblems’ and ‘design’ within subsection 15(1)(e). It is perfectly clear that:

   the word ‘emblem’ in subsection 15(1)(a) has the same meaning as ‘emblems’ in subsection 15(1)(e) (with the currently irrelevant distinction that that one word is in the singular and the other word is in the plural); and

   the ‘emblems’ of subsection 15(1)(e) are different from a design in that subsection.

4. While I accept the principles of statutory interpretation described above, I am not persuaded that the application of those principles results in the construction averred by the attorneys that in considering s 15(1)(e) the Applicant’s trade mark must be considered as a whole and that the Applicant’s Cross Device must not be ‘dissected’ from the trade mark. The word ‘emblem’ has a particular meaning which, according to the Macquarie Dictionary includes, ‘an object, or a representation of it, symbolising a quality, state, class of persons, etc.; a symbol.’ A ‘design’ on the other hand may possess no symbolism. There are many designs which are not considered or intended by their creators to be emblems. The emblems referred to in s 15 can be referred to as designs, but not all designs are emblems. It appears reasonable for me to conclude that it was necessary for the drafters of s 15(1)(e) to use the word ‘design’ to enable the considerations of designs, which are not emblems, for the purposes of that provision. If the drafters had referred to ‘an emblem … so nearly resembling any of the emblems …’ this would have precluded the comparison with designs which are not emblems.

1. When considering a trade mark such as is being considered in the present matter each of the elements of that trade mark can be considered as a design in its own right. I am satisfied that it is appropriate to consider the Applicant’s Cross Device separately from the Applicant’s Trade Mark as a whole when considering s 15(1)(e) of the GC Act.

The purpose of the Geneva Conventions Act

1. The Applicant has submitted that in interpreting and the GC Act it is necessary to bear in mind its purpose, saying:

   [T]he purpose behind the enactment of the Geneva Conventions Act 1957, and similar legislation in other countries, is to protect the integrity of the Red Cross emblem. This, we contend, presumes that a majority of the relevant population already has an awareness of the Red Cross emblem and its significance in time of conflict, namely as a symbol that is used to provide protection for sick and injured combatants as well as medical personnel, supplies, vehicles and installations. More importantly though, the defence forces of all nations would have an accurate and refined knowledge of the Red Cross emblem in the same way that they would know the flags of their allies and their enemies, and often those flags depict very little difference. Thus in reality, the Red Cross emblem is largely directed to a very discerning section of the world, the armed forces. In that respect, as section 15(1)(d) suggests, the Red Cross emblem is a heraldic device.

   Like many other organisations wishing to preserve the integrity of a sign, emblem or the like, the Red Cross organisations permitted to use the Red Cross emblem, to our knowledge, do not alter the Greek cross. That is to say the red coloured cross always comprises horizontal and vertical arms of equal length with straight parallel sides and ends, and is completely surrounded by a white background. To make changes would erode the distinctiveness of the Red Cross emblem and its ability to function as intended, namely as a sign for the protection of the sick and wounded etc. …

   This is consistent with other signs, symbols and emblems that are used during armed conflicts, including national flags, and images of national flags which are typically worn on combat clothing so as to distinguish combatants from different nations. Nations do not tinker with the appearance of a national flag as to do so would adversely affect the ability of the flags to distinguish one army from another.

   …

   It is therefore not surprising that the Registrar has previously registered trade marks that comprise little more than a stylised representation of a Greek Cross, such as registration 451999. Nor is it surprising that the Registrar has previously registered trade marks that include a stylised representation of a Greek cross in addition to other matter where the cross device forms a prominent part of the mark, such as registration 608359.

2. For illustration purposes the trade marks referred to in the submissions above are provided here:

451999 608359

1. The submissions given above are of little assistance to the Applicant. Initially I will point out that s 15(1)(d) concerns, not the Red Cross emblem as suggested by the Applicant’s Attorneys, but a white or silver cross on a red ground, being the heraldic emblem of the Swiss Confederation (two examples are given below):

‘Swiss Emblem’ ‘Swiss Flag Waving’

1. Secondly, even if I were to accept the Applicant’s submissions in connection with the Red Cross, this does not assist in connection with the heraldic emblem of the Swiss Federation. Nor does the submission that nations ‘do not tinker with the appearance of a national flag’ help the Applicant. Flags are typically run up flag poles and are blown in the wind. When there is no wind flags typically hang limp. Pictorial designs of flags are often depicted with the flags waving. As can be seen by the Swiss Flag Waving design, above, this can create significant distortion of any emblem which might be on the flag. If an objective assessment of the Swiss Flag Waving was made it is arguable that it would not fall under s 15(1)(d) of the GC Act: it is not a cross and the arms are not of the same lengths. However, there is no doubt in my mind that the Swiss Flag Waving design contains within it a design so nearly resembling the heraldic emblem of the Swiss Confederation as to be capable of being mistaken for it: thereby falling under the provisions of s 15(1)(e). A similar conclusion with respect to s 15(1)(a) of the GC Act is likely to be arrived at, for similar reasons, in the case of the even more distorted example of the cross depicted in the Red Cross Flag Waving design shown below.

‘Red Cross Flag Waving’

The Applicant’s Trade Mark

1. The Applicant’s Trade Mark has the appearance of two stylised flags: a chequered flag on the left-hand-side, and a second flag bearing the Applicant’s Cross Device and a fleur-de-lis on the right-hand-side. The effect of the flags is to distort the images upon them. The chequered flag on the left of the design no longer consists (objectively) of squares—as it does in the Applicant’s earlier trade mark 502443—instead the squares have become distorted into rhombi. The flag is nevertheless readily recognisable as a chequered flag such as might be used to indicate the end of a motor race. The subjective impression is that the flag has squares upon it, rather than rhombi. A similar distortion has, subjectively, occurred to the cross device on the right hand flag. The impression created by the Applicant’s Cross Device is of a Greek cross distorted by its presence on a flag.

2. If the Applicant’s Cross Device were to be rendered in red on a white background, or white (or silver) on a red background, there is no doubt in my mind that its use would be contrary s 15(e) of the GC Act as it would so nearly resemble one of the emblems in ss 15(1)(a) or (b) as to be capable of being mistaken for, or, as the case may be, understood as referring to, one of those emblems.

The State of the Register and the International Registrations

The State of the Register

1. The Applicant has made a number of submissions regarding the precedent of trade marks which are registered in Australia, and to the approach other jurisdictions have taken to the assessment of the Applicant’s Trade Mark. The Applicant has pointed to a number of trade marks which feature the Chevrolet Bowtie and are, or were, registered by the Applicant and for which the Applicant was not required to request an endorsement. I have listed some of these at para 12 above. Precedent provided by trade marks already on the Register is capable of informing current decisions; however, the state of the Register is not binding upon the Registrar.

2. Another reason that the Register can only provide guidance is that errors may have been made in the examination of earlier marks, although I make no comment as to whether this has occurred or not. In this regard I refer to the remarks of Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks:

[A]lthough consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.[6]

[6] [2000] FCA 177, [35].

1. The Applicant has also drawn my attention to eight trade marks registered by other traders ‘all of which include a cross device where the horizontal and vertical arms are not of equal length and do not include a colour endorsement.’ Nearly all eight contain versions of what is unmistakably the Christian cross, and are very unlikely to be mistaken, either objectively or subjectively, for crosses described by ss 15(1)(a) or (d) of the GC Act. The remainders are sufficiently different from the crosses described in those provisions as to not fall within them or s 15(1)(e). It is not necessary that I list them all here, but two illustrative examples of the trade marks are:

1021860 1143664

The International Registrations

1. The Applicant has also drawn my attention to the registration in New Zealand (‘NZ’) and the United Kingdom (‘UK’) of a number of trade marks owned by the Applicant which are, or include, the Chevrolet Bowtie device and which have been registered without any endorsement. The Applicant has also indicated that a design identical to the Applicant’s Trade Mark has been registered in New Zealand without any endorsement. The following designs have been registered in New Zealand and the United Kingdom (‘the Foreign Registrations’):

1. The Applicant has further drawn my attention to the provisions of the Geneva Conventions Act 1958 (NZ) and the Geneva Conventions Act 1957 (UK) which mirror s 15(1) of the GC Act. I agree that the relevant provisions of those acts are essentially the same as the provisions of the GC Act.[7]

   [7] See: Geneva Conventions Act 1958 (NZ) s 8(1); Geneva Conventions Act 1957 (UK) ss 6(1), (2).

2. I note that trade marks which are identical to the Foreign Registrations are currently also registered in Australia: as can be seen from the Applicant’s Earlier Trade Marks shown in para 12. Trade marks identical to the second and third of the Foreign Registrations are registered in Australia, also without endorsements.

3. It is a laudable goal that identical trade marks are treated in a similar fashion by trade mark authorities across the globe. However, there are a number of factors that may give rise to decisions which differ across jurisdictions. These include: differences in the drafting of legislation, differences in the interpretation of legislation, and differences in the practices adopted by various trade mark offices both over time and currently. I have arrived at my decision in this matter by interpreting the law as it stands in Australia in accordance with accepted principles of statutory interpretation, and in the light of the current practice of the Australian Trade Marks Office.

Conclusion

1. Section 33 of the Act provides:

   33Application accepted or rejected

   (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it.

   Note:For this Act see section 6.

   (2)The Registrar may accept the application subject to conditions or limitations.

   Note:For limitations see section 6.

   (3)If the Registrar is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

   Note:For this Act see section 6.

   (4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

   Note:For applicant see section 6.

2. I am satisfied that if the Applicant’s Cross Device were to be rendered in red on a white ground, or in white or silver on a red ground the use of the Applicant’s Trade Mark would be contrary to s 15(1)(e) of the Geneva Conventions Act 1956. Rendering the Applicant’s Cross Device in those colours would make it a design so nearly resembling an emblem specified in s 15(1)(a) or (d) respectively as to be capable of being mistaken for one of those emblems. Accordingly I reject trade mark application 1565109 in accordance with ss 33 and 42(b) of the Act.

Robert Wilson
Hearing Officer
Trade Marks Hearings
1 December 2015