3. Flags, state emblems of convention countries

Section 28(a) of the Act prohibits the registration of marks that contain representations of the flag of a convention country⁶, without the authorisation of the relevant authority.

Section 28(a) allows the Commissioner discretion in registering marks containing flags where the Commissioner is satisfied that use of the flag in the manner proposed is permitted without that authorisation.

Where the mark in question consists solely of the flag of the convention country, the Examiner will request authorisation from the relevant authority.

Where the mark in question contains the flag of the convention country as part of the mark, the Examiner will consider the matter on a case-by-case basis.

For example, the mark will be considered in relation to the goods or services applied for. People may be influenced to purchase goods or a service because they appear to originate from the country whose flag is contained in the mark.

Flag of the United Kingdom

Footnote

⁶ See Annexure ‘B’ for a list of convention countries.

Section 28(b) of the Act prohibits the registration of marks that contain representations of armorial bearings or any other State emblem of a convention country⁷ protected under the Paris Convention or the TRIPS Agreement, without the authorisation of the relevant authority.

Armorial bearings and other state emblems of convention countries will only receive protection if New Zealand has been notified by the World Intellectual Property Organisation (“WIPO”) in accordance with the procedures set out in section 30.⁸

Footnotes

⁷ See n6 above.

⁸ See Notification Under The Paris Convention or Trips Agreement below.

Section 28(c) of the Act prohibits the registration of marks that contain representations of an official sign or hallmark adopted by a convention country that is protected under the Paris Convention or the TRIPS Agreement and indicates control and warranty in relation to goods or services of the same, or similar, kind as those goods or services in relation to which the trade mark is to be registered, without the authorisation of the relevant authority. For example:

Official signs or hallmarks only receive protection if New Zealand has been notified by WIPO in accordance with the procedures set out in section 30. ⁹

Footnote

⁹ See Notification Under The Paris Convention or Trips Agreement below.

Where a trade mark application contains a representation of a flag, armorial bearing, state emblem, or an official sign or hallmark, of a convention country,¹⁰ the Examiner will raise a concern under section 28 of the Act and request that the applicant provide consent to the use of the emblem from the appropriate authority.

Where an applicant has obtained consent, the applicant must forward the consent document to IPONZ.

The consent document must:

• clearly identify the mark applied for, and include the representation of the material to which the consent relates;
• relate to the registration, not just use, of the mark applied for;
• clearly identify the goods and services;
• cover all of the goods and services applied for;
• be submitted on official letterhead or carry the seal of the competent authority of the country concerned giving the consent; and
• be an original document, or a certified copy thereof.

Upon receipt of a letter of consent, the Examiner must check that:

• the authority of the country providing consent is the appropriate authority of the country to which the flag, armorial bearing, state emblem, or official sign or hallmark, belongs; and
• the consent document includes all of the necessary information, as outlined above.

If the country which owns the flag, armorial bearing, state emblem, or official sign or hallmark, consents to the registration of the applicant’s mark, but in respect of a narrower specification of goods or services than that originally applied for, then the applicant must request a limitation of the specification, pursuant to section 37(1) of the Act, so that the specification includes only those goods or services listed in the consent document.

Footnote

¹⁰ See n6 above.