5. Notification under the Paris convention or trips agreement

Section 30 of the Act states:

For the purposes of sections 28 and 29, the State emblems (other than the national flag) of, or the official signs or hallmarks adopted by, a convention country, or the emblems, abbreviations, or names, of an international organisation, as the case may be, are protected under the Paris Convention or the TRIPS Agreement only if, or to the extent that, ---

a) the country or the organisation concerned has notified New Zealand in accordance with Article 6ter (3) of the Paris Convention, 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, as the case may be; and

b) the notification remains in force; and

c) New Zealand has not objected to it in accordance with Article 6ter (4) of the Paris Convention, or under that Article as applied by the TRIPS Agreement, or any such objection has been withdrawn.

Section 30 of the Act implements Article 6ter of the Paris Convention12 which is concerned with protection for national or state emblems of Convention countries and with emblems of certain international organisations.

The World Intellectual Property Organisation (WIPO) as per Article 6ter of the Paris Convention notifies New Zealand and other member states of any armorial bearings, flags, state emblems, official signs and hallmarks, abbreviations and names to be protected. New Zealand has to take all steps necessary to prevent trade mark registration for those “representations”.

When received, the notified " representations" are entered into the IPONZ database as a ‘protected’ mark and appear in any trade mark search result.

If a trade mark is found which is the same as or deceptively similar to the trade mark being searched a concern will be raised under section 28 or 29 of the Act.

However, with regard to state emblems, or the official signs or hallmarks adopted by a convention country, or the emblems, abbreviations, or names of international organisations, these are protected under the Paris Convention or TRIPS Agreement, only to the extent that:

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of the Paris Convention, or under that Article as applied to the TRIPS Agreement, and that any such objection has been withdrawn.

Please note that as the Flags, Names and Emblems Protection Act 1981 protects certain other flags, words and emblems, IPONZ may also raise a concern under section 17 of the Act, (i.e. the registration of the trade mark being ‘contrary to law’) regarding the registrability of marks that include flags, names and emblems of organisations.