Australia: Flags in the breeze – General Motors case shows that trade marks with cross designs face difficulty in Australia

Last Updated: 10 June 2016
Article by Sean McManis

The Australian Trade Marks Office has adopted a position that places high hurdles in front of applicants whose trade marks incorporate cross designs that resemble a Greek cross.

General Motors LLC applied for registration of the following trade mark in respect of "motor vehicles and parts thereof":

Geneva Conventions Act 1957

An objection to registration was raised on the basis that use of the mark would be contrary to law, unless General Motors used the mark in accordance with the following endorsement:

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.

The Examiner's basis for requiring this endorsement can be found in the provisions of the Geneva Conventions Act 1957. That act prohibits the use, without the written consent of the relevant minister, of a design so nearly resembling the Red Cross emblem or the heraldic emblem of the Swiss Confederation as to be capable of being mistaken for, understood as referring to, one of those emblems.

Specifically it states in section 15 that:

(1) Subject to this section, a person shall not, without the consent in writing of the Minister or of a person authorized in writing by the Minister to give consents under this section, use for any purpose whatsoever any of the following:
(a) 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";
...
(d) 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;
(e) 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;

General Motors Claims

General Motors pointed to the fact that the Cross design in its mark does not have arms of equal length but is a distorted image with horizontal lines that are approximately 3.6 times longer than the vertical lines.

It also pointed at the fact that since 1913, General Motors has used a stylised cross in related emblems, which are known internationally as the Chevrolet 'bowtie', and that the current mark is the seventh generation of that emblem. The second and third generation emblems, which were applied to vehicles manufactured between 1963 and 1982, included a red coloured Chevrolet 'bowtie' having a white or silver coloured border, and the fifth generation emblem, which was in use from 1997 to 2004, included a white Chevrolet 'bowtie' displayed on a red coloured background. General Motors stated that to the best of their knowledge the Red Cross Society has never objected to use of those emblems.

General Motors also pointed to the fact that they hold four prior trade mark registrations in Australia that incorporate somewhat similar cross designs, only one of which had an endorsement stating that the cross device would not be used in red, and that it holds numerous registrations in other countries.

Decision

The matter was taken to a hearing but despite arguments to the contrary, the Hearing Officer maintained that the mark cannot be registered without agreement to the endorsement specified above.

Assessment of the Mark as a Whole

The Hearing Officer took the view that when assessing the trade mark, the assessment need not be based on consideration of the design as a whole. The Geneva Conventions Act 1957 refers to "emblems" and "designs" and the Hearing Officer drew a distinction between those. He interpreted the word "design" as having a broader meaning than "emblem", saying that the emblems are designs but not all designs are emblems. He reasoned that the word design was used to allow the assessment of designs that are not emblems and took the view that the Cross device in the trade mark can be assessed separately from the trade mark saying:

When considering a trade mark such as is being considered in the present matter each of the elements of that Trade Mark can be considered as a design in its own right. I am satisfied that it is appropriate to consider the Applicant's Cross Device separately from the Applicant's Trade Mark as a whole considering section 15(1)(e) of the Geneva Conventions Act.

Distorted Crosses

General Motors also argued that the Cross device in its trade mark does not so nearly resemble any prohibited emblem as to be capable of being mistaken for, or understood as referring to one of those emblems. They pointed out that relevant organisations and countries do not tinker with the appearance of their flags, as to do so would adversely affect the ability of those to identify the entity or country concerned.

The Hearings Officer maintained that even if he were to accept such submissions in connection with the Red Cross, it would not assist the Applicant in connection with the heraldic emblem of the Swiss Confederation. He took the view that flags are often depicted waving, which can create significant distortion of an emblem on the flag. The following is an example provided in the decision:

The Hearing Officer took the view that the impression created by the General Motors' Cross device is use of a Greek cross distorted by its presence on a flag, and so maintained the view that its use, contrary to the endorsement requested, would be contrary to the Geneva Conventions Act.

Prior Registrations

With respect to General Motors' claims concerning prior registrations owned by it and third parties, the Hearing Officer made the usual comment that prior registrations are not binding precedents, and in respect of various third party marks referred to, said that nearly all are versions of a Christian cross that is unlikely to be mistaken for crosses described in the Geneva Conventions Act.

General Motors referred to its numerous international registrations and the Hearings Officer stated that while it is "a laudable goal that identical trade marks are treated in a similar fashion by trade mark authorities across the globe" legislation, interpretation and practices differ. He stated that Australian decisions need to be based upon interpretation of Australian law "in accordance with accepted principles of statutory interpretation, and in light of the current practice of the Australian Trade Marks Office".

Conclusion

The decision reflects the strict approach that the Australian Trade Marks Office is now adopting in relation to its assessment of trade marks incorporating a design element that could be viewed as similar to a Greek cross. While the correctness of this approach has not yet been judged by the courts, trade mark owners will presently find it difficult to register marks incorporating a Greek cross or a similar design, without agreeing to the colour endorsement specified above.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Shelston IP ranked one of Australia's leading Intellectual Property firms in 2015.

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