3. Contrary to law

Where a mark contains a device of a cross with vertical and horizontal arms of the same length,⁹ or contains the words RED CROSS or GENEVA CROSS, the examiner should raise concerns that the mark is not registrable under section 17(1)(b) of the Act, with reference to sections 8(1)(a), 8(1)(d) and 8(1)(e) of the Geneva Conventions Act 1958.

The applicant may be able to overcome the examiner’s concerns by agreeing to the entry of a “red cross” condition on the register, namely:

It is a condition of registration that the mark shall not be used with the cross device appearing thereon in red on a white ground, or in white or silver on a red ground, or in any similar respective colour or colours.

Footnote

⁹ The examiner should only raise concerns if the mark is (a) not limited as to colour; or (b) limited as to colour, with the cross being red on a white ground, or similar colours; or (c) limited as to colour, with the cross being white or silver on a red ground, or similar colours.

Where a mark contains a device of a crescent moon,10 or contains the words RED CRESCENT, the examiner should raise concerns that the mark is not registrable under section 17(1)(b) of the Act, with reference to sections 8(1)(b) and 8(1)(e) of the Geneva Conventions Act 1958.

The applicant may be able to overcome the examiner’s concerns by agreeing to the entry of a “red crescent” condition on the register, namely:

It is a condition of registration that the mark shall not be used with the crescent device appearing thereon in red on a white ground, or in any similar respective colour or colours.

Footnote

¹⁰ The examiner should only raise concerns if the mark is (a) not limited as to colour; or (b) limited as to colour, with the crescent moon being red on a white ground, or similar colours.

Where a mark contains a device of a lion and a sun similar to that described in section 8(1)(c) of the Geneva Conventions Act 1958, or contains the words RED LION AND SUN, the examiner should raise concerns that the mark is not registrable under section 17(1)(b) of the Act, with reference to sections 8(1)(c) and 8(1)(e) of the Geneva Conventions Act 1958.

Section 12 of the Flags, Emblems and Names Protection Act 1981 prohibits the use of certain Royal and vice-regal emblems if:

• The manner of the use is such that any person is likely to believe that the use has the “authority, sanction, approval, appointment or patronage of” the Queen or the Governor-General; and
• The use has not been authorised by the Queen or the Governor-General.

Section 12 covers the following:

• Any representation of the Coat of Arms of Her Majesty or any other member of the Royal family;
• Any representation of any Royal crown, Royal coronet, Royal cypher or Royal badge;
• Any representation of the Royal Standard or the Sovereign’s personal flag for New Zealand;
• Any representation of the Governor-General’s flag;
• Any representation that so closely resembles any of the above as to be likely to cause any person to believe that it is that thing.

The Royal Coat of Arms		The Royal Crown
The Queen's New Zealand Standard		The Governor-General's Flag

Section 13 of the Flags, Emblems and Names Protection Act 1981 prohibits the use of certain state emblems if:

• The manner of the use is such that any person is likely to believe that the use has the “authority, sanction, approval, appointment or patronage of” the government, or of any Minister of the Crown, or of any government department; and
• The use is not authorised by or under any other Act; and
• The prior written consent of the Minister has not been obtained; and
• The use is not by an officer of the Crown acting in the course of his official duties.

Section 13 covers the following:

• Any representation of the Coat of Arms of New Zealand;
• Any representation of the Seal of New Zealand;
• Any representation of any emblem or official stamp of any government department;
• Any representation that so closely resembles any of the above as to be likely to cause any person to believe that it is that thing.

 

¹¹Section 14(3)(a) of the Flags, Emblems and Name Protection Act 1981 prohibits the use of the word “royal” unless the Governor-General’s consent has been obtained.

There are three exceptions. Consent from the Governor-General is not required if:

• The use of the word “royal” is expressly authorised by or under any other Act; or
• The word “royal” comprises the whole or part of the proper name of any town, road or other place, and that place name is used in full; or
• The word “royal” is the surname of the person engaging in the business, trade or occupation, or of a foundation member of the applicant association.

Where a concern is raised and none of the above exceptions apply, the applicant may request that the Office applies for consent for the use of the word “royal” on their behalf. This will only be done once there are no other outstanding concerns with the trade mark application

Before applying for consent from the Governor-General to the use of the word “royal” on behalf of the applicant, the Office will ask the applicant for the following information:

• A company profile of the applicant’s business that explains what they do; and
• A history of the applicant’s business; and
• A copy of a recent annual report of the applicant’s business (where applicable).

Once this documentation has been received, the Office will apply on behalf of the applicant to the Ministry for Culture and Heritage requesting them to provide advice as to whether the application is acceptable and whether they recommend the Governor-General permit the use of the word “royal” within the applicant’s trade mark in terms of section 14 of the Flags, Emblems and Names Protection Act 1981.

Once consent is obtained from the Governor-General, the concern under section 17(1)(b)(1) of the Act will be withdrawn.

Section 14(3)(b) of the Flags, Emblems and Names Protection Act 1981 prohibits the use of the word GOVERNMENT unless:

• The use of the word GOVERNMENT is expressly authorised by or under any other Act; or
• The use of the word GOVERNMENT has been expressly authorised by the Minister of Internal Affairs; or
• The word GOVERNMENT comprises the whole or part of the proper name of any town, road or other place, and that place name is used in full; or
• The word GOVERNMENT is the surname of the person engaging in the business, trade or occupation.

Section 14(3)(c) of the Flags, Emblems and Names Protection Act 1981 prohibits the use of any other word or statement that claims or implies the patronage of Her Majesty, any other member of the Royal Family, the Governor-General, the House of Representatives, the Government, a Minister of the Crown or any government department, unless:

• The use of the word or statement in question is expressly authorised by or under any other Act; or
• The use of the word or statement in question has been expressly authorised by the relevant person; ¹² or
• The word or statement in question comprises the whole or part of the proper name of any town, road or other place, and that place name is used in full; or
• The word or statement in question is the surname of the person engaging in the business, trade or occupation.

Section 14(3)(d) of the Flags, Emblems and Names Protection Act 1981 prohibits the use of any word or statement that claims or implies connection with any society or body incorporated by Royal Charter, unless:

• The use of the word or statement in question is expressly authorised by or under any other Act; or
• The word or statement in question comprises the whole or part of the proper name of any town, road or other place, and that place name is used in full; or
• The word or statement in question is the surname of the person engaging in the business, trade or occupation.

Footnotes

¹¹ Practice Guideline Amendment 2008/03, IPONZ Newsletter, February 2008.

¹² See sections 14(4)(a)(ii)-(vi) of the Flags, Emblems and Names Protection Act 1981.

Section 16(1) of the Flags, Emblems and Names Protection Act 1981 prohibits the use of the following unless the use has been authorised by the Secretary-General of the United Nations:

• The name of the United Nations;
• The emblem of the United Nations;
• Any word or words that incorporate the name of the United Nations;
• Any word or words that incorporate any abbreviation or variation of the name of the United Nations.

Section 16(3) of the Flags, Emblems and Names Protection Act 1981 prohibits the use of any name or emblem in contravention of a notice that has been given under section 16(2) of the same Act. Such notices include the notices specified in Part B of Schedule 2 of the Flags, Emblems and Names Protection Act 1981.

The contents of Part B of Schedule 2 are set out below

Section 17 of the Flags, Emblems and Names Protection Act 1981 prohibits the use of:

• The word ANZAC;
• Any word that so closely resembles the word ANZAC as to be likely to deceive or mislead any person.

It is an offence to use the word ANZAC, or any other word that so closely resembles the word ANZAC as to be likely to deceive or mislead any person, in contravention of an order made under section 17(1) of the Flags, Emblems and Names Protection Act 1981. The notices specified in Part C of Schedule 2 are deemed to be orders made under section 17(1) of that Act.

The contents of Part C of Schedule 2 are set out below.

Section 19 of the Flags, Emblems and Names Protection Act 1981 prohibits the use of the following unless that use has been authorised by the Girl Guides Association:

• The name GIRL GUIDES ASSOCIATION;
• The names, designations and badges specified in Part D of Schedule 2.

The contents of Part D of Schedule 2 are set out below.

Section 19 of the Flags, Emblems and Names Protection Act 1981 prohibits the use of the following unless that use has been authorised by Toc H, Incorporated:

• The name “Toc H”;
• The button-badge of Toc H (see the description in the Gazette, 1939, at page 2012).

Section 20 of the Flags, Emblems and Names Protection Act 1981 prohibits the use of certain commercial words and names unless the use is expressly authorised:

• By or under any other Act; or
• By the Governor-General by Order in Council.
  

Section 20 covers the following words and names:

• DSIR;
• Department of Scientific and industrial research;
• Ruakura;
• Wheat Research Institute;
• New Zealand Soil Bureau;
• New Zealand Oceanographic Institute;
• Soil Conservation Centre;
• Physics and Engineering Laboratory;
• Institute of Nuclear Sciences;
• Dominion Physical Laboratory;
• NECAL;
• NZGS;
• Animal Research Laboratory;
• Agricultural Research Centre;
• Management Consultancy Services;
• MAF;
• New Zealand Communicable Disease Centre;
• Any word or name that so closely resembles any of the above as to be likely to deceive or mislead any person.

Historic text

Part 2 of the Major Events Management Act 2007 provides for protection of words and emblems that are likely to be associated with events that have been declared a “major event” by Order in Council.

Section 15(1) of the Major Events Management Act 2007 provides that the Commissioner of Trade Marks must not register an emblem if the use of that emblem by that person would breach section 10.

Section 10 of the Major Events Management Act 2007 provides, subject to certain exceptions, that:

1. No person may, during a major event’s protection period, make any representation in a way likely to suggest to a reasonable person that there is an association between the major event and -

1. goods or services; or

2. a brand of goods or services; or

3. a person who provides goods or services.

Section 11 of the Major Events Management Act 2007 states that a Court may presume a representation is in breach of section 10 if it includes any of the following (even if words such as “unauthorised” or “unofficial” are used):

1. a major event emblem; or

2. a major event word or major event words; or

3. a representation that so closely resembles a major event emblem, a major event word, or major event words as to be likely to deceive or confuse a reasonable person.

Where the following circumstances apply, the examiner should therefore raise concerns that the mark is not registrable under section 17(1)(b) of the Trade Marks Act 2002, with reference to section 15 of the Major Events Management Act 2007:

• The mark consists of or includes an emblem and/or word that has been declared a major event emblem or major event word, or so closely resembles a major event emblem, word, or words as to be likely to deceive or confuse a reasonable person;

• The application for registration was filed during the major event's protection period or the application for registration was filed before the start of the protection period but is not registered at the start of the protection period²⁸;

• Use of the mark is not covered by one of the relevant exceptions in section 12 of the Major Events Management Act 2007 namely:

• The applicant for the mark is, or has the written authorisation of, the major event organiser as specified in the Order in Council;

• The word or emblem comprises the whole or part of:

1. the proper name of any town or road or other place in New Zealand; or

2. the legal or trade name of the person making the representation; or

3. an existing registered trade mark

The examiner should also consider whether use of the mark would be likely to deceive or cause confusion. For example, if use of the mark may imply sponsorship, permission or approval by the major event organiser an objection may be relevant under section 17(1)(a) of the Act.²⁹

Footnotes

²⁹ See ‘Suggestion of Endorsement of License’ under ‘Deception or Confusion’, above for more information.

Part 3 of the Major Events Management Act 2007 sets out specific emblems and words that are permanently protected.