Strict Trade Mark Office practice on “contrary to law” issues: GM sees red on Corvette emblem trade
A Delegate of the Registrar of Trade Marks has rejected General Motors LLC’s (“GM”) application to register its Corvette Emblem trade mark (see below) (“GM Mark”) on the basis that it contains a cross device which, if used in red on a white background or in white or silver on a red background, would be contrary to the Geneva Conventions Act 1957 (“GC Act”). This decision is an example of the increasingly strict approach taken by the Trade Marks Office on “contrary to law” issues during examination which arguably places it out of step with other jurisdictions.
*GM Corvette Emblem Mark
History of General Motors’ application to register the Corvette Emblem
In 2015 General Motors LLC  ATMO 114 (1 December 2015), GM filed an application to register the GM Mark covering “motor vehicles, and parts thereof” in Australia. During examination, an objection under s 42(b) of the Trade Marks Act 1995 (“TMA”) was raised on the basis that the GM Mark contained the emblem of a cross with vertical and horizontal arms of equal length which is protected under section 15 of the Geneva Conventions Act 1957. In line with the Trade Marks Office’s (“TMO”) usual practice, GM was provided with the option of adding the following endorsement to overcome the objection:
It is a condition of registration that, in use, the cross device contained within the trade mark will be rendered in colours other than red on a white or silver background, or white or silver on a red background.
GM also had the option of seeking Ministerial consent to overcome the objection.
GM did not accept either option and instead filed numerous rounds of submissions arguing that the objection should be withdrawn. On reaching an impasse, the Examiner issued a Notice of Intention to Reject the application. GM subsequently requested a hearing on the matter.
Crossing the Geneva Conventions Act
Section 15 of the Geneva Conventions Act prohibits, without Ministerial consent, the use of the following signs (amongst others):
- the emblem of a red cross with vertical and horizontal arms of the same length on, and completely surrounded by, a white ground, or the designation “Red Cross” or “Geneva Cross” (s 15(1)(a));
- the emblem of a white or silver cross with vertical and horizontal arms of the same length on, and completely surrounded by, a red ground, being the heraldic emblem of the Swiss Confederation (s 15(1)(d)); and
- a design or wording so nearly resembling any of the emblems or designations specified in paragraph (a), (b), (c), (ca) or (d) as to be capable of being mistaken for, or, as the case may be, understood as referring to, one of those emblems (s 15(1)(e)).
The Delegate quickly dispensed the applicability of subsections 15(1)(a) and (d) as the cross in the GM Mark did not comprise arms of equal length.
In relation to s 15(1)(e), the Delegate considered that the GM Mark fell foul of this subsection, as the cross component so nearly resembled one of the emblems under s 15(1)(a) or (d) that it would be mistaken for one of those emblems if it were to be rendered in red on a white background or white or silver on a red background. In finding this, the Delegate made the following observations:
- in line with Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd  FCA 683 it is within the powers of the Registrar to determine matters pursuant to s 42(b) of the TMA in respect of s 15(1)(e) of the Geneva Conventions Act.
- in considering s 15(1)(e), it is permissible to consider the cross component separately from the trade mark as a whole. This was because s 15(1)(e) refers to a “design” and each of the elements within the GM Mark can be considered as a design in its own right.
- GM’s earlier Australian trade mark registrations for marks incorporating the cross element which did not include an endorsement were not persuasive as “the state of the Register is not binding upon the Registrar”. GM’s earlier registrations which did not have an endorsement are set out below:
- GM’s examples of earlier third party trade mark registrations which included a cross device where the horizontal and vertical arms are not of equal length and did not include an endorsement were also not persuasive as they were “sufficiently different” to the crosses described in the Geneva Conventions Act. The Delegate did not list all the examples provided by GM but two examples set out in the decision were:
- GM’s registrations for marks incorporating a cross device in New Zealand and the United Kingdom were also not persuasive. While the Delegate acknowledged that NZ and the UK both have similar legislation to the Geneva Conventions Act, he stated that “there are a number of factors that may give rise to decisions which differ across jurisdictions”, including differences in drafting, interpretation, and practice. His decision was said to be made in accordance with Australian law and current practice.
A stricter approach?
The TMO’s practice on marks containing a cross has had a checkered history. Indeed, while the Trade Marks Examiner’s Manual of Practice and Procedure sets out the practice to be adopted by examiners, inconsistencies in application are apparent. A cursory search on the Australian Trade Marks Register has disclosed many trade marks that incorporate a cross component. Most of these registrations contain a colour endorsement. However, many do not and there is no discernible pattern suggesting a possible explanation. Compare for example, the following marks which do and do not have an endorsement:
MARKS WITH ENDORSEMENT
MARKS WITHOUT ENDORSEMENT
More recently, the TMO appears to be adopting a stricter approach on contrary to law issues even when the same objection was not raised on earlier similar marks. This decision follows that trend and serves as a cautionary note that trade mark applicants cannot rely on earlier or overseas registrations, arguably placing Australia out of step with other jurisdictions. Moreover, any endorsement setting a condition of registration also raises separate issues on the validity or vulnerability of the registration, in cases where the mark is used contrary to the endorsement.
An alternative endorsement?
Interestingly, GM has since filed two divisional applications for the GM Mark. The specification of each divisional application is identical, covering “motor vehicles”. One of these applications contains the following endorsement:
It is a condition of registration that the mark will not be used in a manner which offends section 15 of the Geneva Conventions Act 1957
This application has not yet been examined and it will be interesting to see whether the TMO accepts this endorsement. This endorsement is much more favourable to GM than the usual endorsement entered on registrations for trade marks which include a cross, as it leaves open the possibility for GM to use the GM Mark with the cross component in red and white. The issue of whether this use offends s 15 of the GC Act is a matter that would then be decided if the registration is challenged.
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