1. Introduction

Subpart 3 of Part 2 of the Trade Marks Act 2002 (“the Act”) contains the relative grounds for not registering a trade mark, and incorporates sections 22 to 30 of the Act. These Guidelines focus on the registrability of a trade mark under sections 27-30 of the Act.

Under section 27(1) of the Act, the Commissioner may require that the applicant obtain the written consent of the person who appears to the Commissioner to be entitled to consent to the registration and use of a sign as a trade mark where the sign includes a representation of a flag, armorial bearing, insignia, orders of chivalry, or decorations of any entity.

Section 27(1) of the Act does not apply where sections 28 or 29 of the Act apply.

Section 28 of the Act prohibits the registration of a trade mark where the trade mark contains a representation of the flag, armorial bearing or state emblem and official sign or hallmark of convention countries.¹

Section 29 of the Act prohibits the registration of a trade mark where the trade mark contains armorial bearings, flags or other emblems of international intergovernmental organisations of which one or more convention countries are members. The armorial bearing, flag, or other emblem, or the abbreviation or name of the international organisation concerned is protected under the Paris Convention or the TRIPS Agreement, unless the Commissioner considers that its use:

• is not likely to suggest that a connection exists between the organisation and the trade mark; or
• is not likely to mislead the public as to the existence of a connection between the user and the organisation

Section 30 of the Act states that protection under the Paris Convention or the TRIPS Agreement for the purposes of sections 28 and 29, only extends where:

• the country or the organisation concerned has notified New Zealand in accordance with Article 6ter (3) of the Paris Convention², or under that Article as applied by the TRIPS Agreement, that it desires to protect the state emblem, official sign, or hallmark, or the emblem, abbreviation, or name of that country or organisation, as the case may be; and
• the notification remains in force; and
• New Zealand has not objected to it in accordance with Article 6ter (4) of the Paris Convention³, or under that Article as applied by the TRIPS Agreement, or any such objection has been withdrawn.

Footnotes

¹ See Annexure ‘B’ for a list of convention countries.

² See Annexure “A” for a copy of Article 6ter of the Paris Convention for the Protection of Industrial Property.

³ As above.