AG opinion may herald broad protection for national emblems

In American Clothing Associates SA v Office for Harmonization in the Internal Market (OHIM) (Joined Cases C-202/08 P and C-208/08 P, May 12 2009), Advocate General Ruiz-Jarabo Colomer has examined the scope of protection afforded to national emblems under international and EU law against appropriation for commercial purposes. 

The proceedings arose from American Clothing Associates SA's application to register a mark consisting of the image of a maple leaf with the letters ‘RW’ immediately below it. The application was in respect of goods and services in Classes 18, 25 and 40 of the Nice Classification. The OHIM examiner rejected the application on the grounds that the mark was an imitation of the Canadian emblem. The First Board of Appeal of OHIM dismissed the subsequent appeal.

American Clothing brought an action before the CFI. The CFI upheld the decision of the board in respect of the mark insofar as it covered goods in Classes 18 and 25. According to the CFI, the fact that the mark was applied for in black and white, that there were minor differences between the leaf device and the Canadian emblem and that the letters 'RW' appeared underneath did not preclude a finding that the leaf device in the mark imitated the Canadian emblem "from a heraldic point of view" under Article 6ter of the Paris Convention for the Protection of Industrial Property. However, the CFI concluded that Article 6ter and Article 7(1)(h) of the Community Trademark Regulation (40/94), which protects national emblems, did not apply, on the face of their wording, to service marks. Accordingly, the CFI held that the mark should be allowed in respect of services in Class 40.

Both American Clothing and OHIM appealed to the European Court of Justice (ECJ) seeking to overturn in part the CFI's decision. American Clothing criticized the scope of protection afforded to national emblems by virtue of the CFI's decision and argued that its mark should be registered for all the goods and services covered. OHIM argued that the CFI should have refused the mark for services as well as goods. 

Advocate General Ruiz-Jarabo Colomer has now recommended that the ECJ dismiss American Clothing's appeal in respect of goods and allow OHIM's appeal in respect of services.

In relation to goods, the advocate general outlined at some length the differences between the essential functions of national emblems and trademarks and the protection afforded to them. He interpreted Article 6ter as prohibiting the use or registration of state emblems or imitation of them whether or not the public is misled. The CFI's assessment of the imitation of the Canadian emblem "from a heraldic point of view" was, in his opinion, correct. In relation to services, the advocate general indicated that he did not believe that the intention of those drafting the EU legislation was to prevent the registration of imitations of national emblems in relation to goods, but not services. According to the advocate general, such a distinction would make no sense.

While this may be true, it is at least arguable that, intentional or not, the effect of Article 7(1)(h) of the regulation and Article 6ter of the Paris Convention is to make such a distinction between trademarks and service marks. It remains to be seen whether the ECJ will follow the advocate general's advice in this respect.