CFI refuses to register maple leaf as trademark

In American Clothing Associates v Office for Harmonization in the Internal Market (OHIM) (Case T-215/06), the Court of First Instance (CFI) has partially upheld a decision to refuse the registration of a complex trademark containing the figurative representation of a maple leaf.

American Clothing Associates is a major Belgian clothing company trading under the name River Woods, among others. On July 23 2002 American Clothing applied for the registration of the figurative representation of a maple leaf in combination with the initials RW as a Community trademark for goods in Classes 18 and 25 of the Nice Classification (including leather goods and clothing products) and services in Class 40 (including tailoring services).

On October 7 2005 the OHIM examiner rejected the application with regard to all goods and services concerned. The examiner considered that the trademark fell foul of Article 7(1)(h) of the Community Trademark Regulation (40/94), which refers to Article 6ter of the Paris Convention for the Protection of Industrial Property. Article 6ter stipulates that the registration of state emblems or any imitation thereof from a heraldic point of view as trademarks or elements of trademarks must be refused. The examiner considered that the trademark applied for contained an imitation of the Canadian state emblem (a red stylized maple leaf), as it has been notified by Canada to the World Intellectual Property Organization (WIPO).

On May 4 2006 the Board of Appeal of OHIM upheld the examiner's decision. American Clothing appealed to the CFI.

The CFI first considered the trademark insofar as it applied to services. In that respect, the CFI noted that:

• the text of Article 6ter of the Paris Convention refers only to trademarks, as opposed to service marks;
  
  
• the Community Trademark Regulation does not extend the scope of Article 6ter to service marks; and
  
  
• an extensive interpretation of Article 6ter so as to include service marks would be against the law.

Therefore, the CFI annulled the refusal to register the trademark insofar as it applied to services.

The CFI then examined the mark to the extent that it applied to goods. The CFI focused on the comparison between the Canadian state emblem and the trademark in order to assess whether the latter constituted an "imitation from a heraldic point of view". The CFI concluded that the initials RW in the mark could be disregarded and that differences in detail between the two maple leaves were irrelevant.

The CFI construed the expression "imitation from a heraldic point of view" broadly, making a distinction between:

• the 'heraldic description' of a state emblem, which is simple and general (and can be notified to WIPO by the states concerned); and
  
  
• the 'geometric description' of a state emblem, which is more detailed by nature.

The CFI held that state emblems are protected against various materializations of their heraldic description, even where these materializations present 'geometrical' differences (such as in the present case). The CFI applied this test notwithstanding the fact that Canada had not notified any heraldic description to WIPO (only the figurative representation of a red maple leaf).

The CFI also disregarded the difference in colour between the two maple leaves (red and black). According to the CFI, the trademark could be depicted in any combination of colours, while the state emblem appeared in black and white in certain depictions. The CFI thus concluded that the average consumers would perceive the mark as an imitation of the Canadian state emblem. Consequently, the CFI upheld the refusal to register the mark insofar as it applied to goods.

Pursuant to the test applied in the ECA decision (T-127/02) and in the present case, state emblems enjoy a wide - if not absolute - scope of protection (at least in the context of conflicts with trademarks at the registration stage). However, it is questionable whether such a wide scope of protection is justified and whether the test applied by the CFI is the most adequate in cases involving Article 6ter of the Paris Convention. In that respect, American Clothing suggested a more functional approach which would take into account the following factors, among others:

• whether the essential function of the state emblem is likely to be affected;
  
  
• the (heraldic) distinctiveness of the state emblem;
  
  
• the customary nature of the elements included in the state emblem; and
  
  
• the extent to which non-arbitrary figurative elements included in the emblem depart from the depiction of it which comes to mind naturally.
  

It is regrettable that the CFI did not consider this aspect of American Clothing's argumentation in its decision.

Nicolas Clarembeaux and Eleni Foscolos, Altius, Brussels