Australia has a common law trade mark system based on judicial precedent as well as statute. In Australia, rights in a trade mark accrue through use whether or not the trade mark is registered. Rights are in fact dependent on use, and whether or not that use has been commercial trade mark use.
Two of the most significant objectives in developing the current legislation, enacted in 1996, were to broaden the definition of a trade mark and to introduce a presumption of registrability including restricted and prohibited signs.
Restricted signs
The use of certain words and expressions in trade marks for Class 36 services is restricted under the Banking Act 1959 sections 66 and 66A and the Life Insurance Act 1995 section 16E. Class 36 services include insurance, financial, monetary and real estate services. The restricted words and expressions include:
- ADI
- AUTHORISED DEPOSIT-TAKING INSTITUTION
- BANK
- BANKER
- BANKING
- BUILDING SOCIETY
- CREDIT SOCIETY
- CREDIT UNION
- FRIENDLY SOCIETY (in relation to the conduct of a financial business)
- any other word or expression (whether or not in English) that is considered to be like the above terms.
If the restricted words are expressed by another ways, or a part of other words but still mean the same, for example: BANKASIA. The exception is when the term ADI forms part of another word, for example TRADITIONAL.
All applicants of trade mark applications containing one or more of these restricted terms are required to be on the List of Authorised Deposit-Taking Institutions available on the Australian Prudential Regulatory Authority (APRA) website or to provide written authorisation from APRA. To seek approval for any of the above words write directly to:
The Australian Prudential Regulation Authority
GPO Box 9836
SYDNEY NSW 2001
If APRA grants consent or decides consent is not necessary, you can supply a copy of the relevant APRA documentation to Australia Intellectual Property Office with your application.
Prohibited signs
Under Article 6ter of the Paris Convention for the Protection of Industrial Property, member states (including Australia) agree to protect various signs including:
- armorial bearings
- flags
- emblems
- official signs
- hallmarks
- abbreviations and names of international intergovernmental organizations.
Under Article 6ter a member state must:
- refuse to register a trade mark that consists of or contains a notified sign as well as any trade mark that has a certain similarity to a notified sign
- invalidate any registrations for trade marks that consist of or contain notified signs
- provide effective means to stop unauthorised use of notified signs
- extend protection to the flags of the member states regardless of whether they have been notified
- if they intend not to extend protection to a notified sign, communicate such an intention within 12 months of notification
- make a list of those signs that have been notified available to the public.
Australia directly applies Article 6 of the Paris Convention. Australia can reject applications for the registration of trade marks falling under one or more categories of prohibited and prescribed signs. Trade marks containing or consisting of such signs generally cannot be accepted for registration unless the proposed use is in accordance with the relevant law or the owner has the consent of the authority responsible for the administration of the particular sign.
