ECJ rejects different level of protection for service marks

European Union
In American Clothing Associates NV v Office for Harmonization in the Internal Market (OHIM) (Joined Cases C-202/08 P and C-208/08, July 16 2009), the European Court of Justice (ECJ) has clarified the scope of protection for emblems and flags under the Paris Convention for the Protection of Industrial Property.
In 2002 American Clothing Associates NV filed an application with OHIM for the registration of a figurative trademark consisting of a maple leaf and the letters 'RW' in relation to goods in Classes 18 and 25 and services in Class 40 of the Nice Classification. The OHIM examiner decided that the representation in American Clothing's application was identical (save for very minor differences) to the maple leaf used in the Canadian flag. As such, the application was refused on the basis of Article 7(1)(h) of the Community Trademark Regulation (40/94), which prohibits the registration of any "trademarks which have not been authorized by the competent authorities and are to be refused under Article 6ter of the Paris Convention". Under the Paris Convention, there is a prohibition on registration of armorial bearings, flags and other state emblems as trademarks or elements of a trademark. Any such applications for registration should be refused by the relevant trademark authorities. 
American Clothing appealed and the Court of First Instance decided that while the refusal by OHIM to register the mark was correct in relation to goods on the basis of the wording of Article 6ter, that article did not apply to service marks. Therefore, Article 6ter did not prohibit registration of an emblem or flag for services (for further details please see "CFI refuses to register maple leaf as trademark"). Both American Clothing and OHIM appealed against this decision for two separate reasons.

American Clothing argued that emblems such as the maple leaf should not be subject to absolute protection without further consideration of other factors akin to those relevant for registration of trademarks, including:
  • a consideration of the overall impression of the mark; and
  • a requirement that use of the mark containing the emblem suggests a connection with the relevant state.
This was not accepted by either the advocate general or the ECJ, which confirmed that as a result of the fundamental differences between a trademark and an emblem, the broad protection given to emblems which fall within the scope of the Paris Convention was justified. The ECJ also confirmed that a trademark which does not exactly reproduce the emblem can still be covered by Article 6ter (and should not be registered) where it is perceived by the relevant public as imitating such an emblem. Each of these issues are questions of fact. The ECJ also held that the fact that device marks consisting of or including an emblem or flag (whether subject to a disclaimer or not) had been registered at a national level was irrelevant for OHIM decisions.

OHIM argued that Article 6ter of the Paris Convention should cover marks for both goods and services, notwithstanding the wording of Article 6ter itself. The ECJ reviewed the terms of Article 7(1) of the regulation, which sets out the absolute grounds for refusal, and agreed with the advocate general's opinion that Article 7(1)(h) should apply to both goods and services. There were no practical reasons for distinguishing between trademarks and service marks - to decide otherwise would have created inconsistency with the terms and interpretation of the other provisions of Article 7(1). 

The ECJ thus agreed that OHIM's rejection of American Clothing's original application for the leaf device with respect to services was correct. 

Sara Laver, Ashurst LLP, London

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