General Court interprets Article 7(1)(i) within spirit of Paris Convention

In Kreyenberg v Office for Harmonisation in the Internal Market (OHIM) (Case T-3/12), the General Court has confirmed that Community Trademark Registration No 6110423, depicted below, was invalid on the basis of Article 7(1)(i) of the Community Trademark Regulation (207/2009). 

The General Court confirmed that, for the registration of a mark to be contrary to Article 7(1)(i), it must either be an identical copy, or an imitation, of an emblem of particular public interest that is not covered by the Paris Convention, and must mislead the general public to believe that there is a connection between the goods and/or services offered under the mark and the organisation to which the emblem relates.

The mark was originally registered in respect of goods and services in Classes 9, 16, 35, 36, 39, 41, 42, 44 and 45 of the Nice Classification in the name of Heinrich Kreyenberg on August 4 2008, despite observations being submitted by the EU Commission arguing that registration of the mark would infringe Article 7(1)(h) of the regulation on the basis of the following EU emblems protected by the Paris Convention: 

QO188 

QO189

The EU Commission also referred to one of its communications dating from July 23 1997, entitled “The use of the €uro symbol”, which identifies the specific dimensions and colours in which the symbol should be used, alleging that registration of the mark would be contrary to Article 7(1)(i).

Following registration of the mark, the EU Commission applied to invalidate Kreyenberg’s registration under Article 7(1)(h) on the basis of earlier protected emblems QO188 and QO189, and under Article 7(1)(i) in respect of the € symbol. The Cancellation Division of OHIM refused the application for invalidation on the basis that the mark would not be interpreted as a heraldic imitation of the protected emblems, and that the use of the € symbol within the mark was not an identical reproduction of the € symbol, as envisaged by Article 7(1)(i).

The European Commission appealed to the Second Board of Appeal of OHIM on the basis that the mark should not have been registered under Article 7(1)(h), due to the following protected emblem that was not referred to in the initial invalidity proceedings:

QO867

Whilst the Board of Appeal rejected the inclusion of this additional earlier protected emblem in proceedings, on the basis that no new arguments or evidence could be admitted at the appeal stage, it did consider the invalidity of Kreyenberg’s registration on the grounds that the mark included the € sign, following the EU Commission’s communication concerning use of the € sign. The Board of Appeal found that the mark in question would be considered by the public to be an identical reproduction of the € sign, and, in light of the goods and services covered by the application, would mislead the public into believing that there was a connection between the goods and services covered by the registered mark and the EU institutions.

Kreyenberg appealed this decision to the General Court on the following grounds:

1. The representation of the € symbol is not excluded from trademark registration under Article 7(1)(i).
2. Even where the representation of the € symbol is precluded from registration under Article 7(1)(i), the mark in question is not of such a nature to suggest a connection between the applicant and the institutions of the European Union.

Considering the first ground of appeal, the General Court provided guidance on the interpretation of Article 7(1)(i), finding that it prevented registration of identical and imitative reproductions of emblems of particular public interest, not protected by Article 6ter of the Paris Convention. In particular, it based this finding on the use of “including” within Article 7(1)(i) of the regulation. So that the protection afforded by this provision was not broader than that provided in respect of emblems protected by the Paris Convention, the General Court emphasised that, for the registration of a mark to be prevented under Article 7(1)(i), it must mislead the public that there is a connection between the mark and the organisation to which the emblem relates.

Kreyenberg based his argument that the representation of the € symbol was not an emblem under the definition of Article 7(1)(i) on the following grounds:  

1. Kreyenberg argued that the European monetary union was not relevant to Article 7(1)(i) because it did not cover all of the EU member states. Kreyenberg attempted to argue that the OHIM manual of trademarks practice did not indicate that the € sign was a protected emblem, that there were no decisions that indicated that the € sign was a protected emblem, and that it should be considered as an important everyday symbol, such as the recycling mark, and therefore should not be afforded protection under Article 7(1)(i). The General Court dismissed these arguments as they did not provide sufficient evidence that the € sign should not be protected by this provision.
2. Kreyenberg also attempted to argue that the € sign was an everyday symbol that indicated currency. The General Court disagreed, stating that the EU commission communication of July 23 1997, made it clear that the € symbol should be used in a certain way, that its reproduction or imitation is not authorised, and therefore that it is an emblem of particular public interest.
3. Kreyenberg argued that Article 7(1)(i) applied only where emblems of particular public interest were identically reproduced. If the provision also applied to imitations of such emblems, this would afford broader protection than Article 7(1)(h). Kreyenberg also argued that the term 'including' within the provision meant that only identical reproductions of emblems would be refused registration. The General Court dismissed both arguments, stating that even allowing protection for imitative reproductions of emblems would not necessarily afford a greater scope of protection to emblems not protected by virtue of Article 6ter of the Paris Convention. The General Court stated that Kreyenberg had misunderstood the significance of the word 'including' within the provision, which clearly suggested that an imitative reproduction of an emblem of public interest was also precluded from registration as a trademark.
4. Kreyenberg also alleged that the reproduction of the € symbol within the contested registration was an altered reproduction of the € symbol that the public would not confuse with an identical reproduction. Kreyenberg argued that the € symbol within the contested mark differed in colour from the €  symbol, and was linked to the letter 'e', and therefore was sufficiently distinct from the € sign not to be precluded from registration. The General Court dismissed this argument, and found that the contested mark was an imitation of the € sign. Given that the court had indicated that Article 7(1)(i) also referred to imitative reproductions of emblems that were in the public interest, and that the differences between the contested mark and the emblem in question were not particularly significant, the mark was considered an imitation of the € emblem within the meaning of Article 7(1)(i).

The General Court dismissed this ground of appeal.

With regard to the second ground of appeal, Kreyenberg argued that the public would not believe that there was a connection between the contested mark and the European institutions, to which the € symbol refers.

1. Kreyenberg argued that the € symbol did not refer to any particular authority or organisation and was merely an indication of currency, or even where it did refer to an authority, this was merely the European monetary union, which was not considered to be a relevant authority under Article 7(1)(i). The General Court disagreed, on the basis that the monetary union was not distinct from the European Union, as it was established by the relevant EU treaties.
2. Kreyenberg added that the goods and services designated by the contested registration would not be provided by the European institutions. The General Court dismissed this argument, stating that Article 7(1)(i) applies where the application of an identical or imitative reproduction of an emblem to the goods and/or services covered by a mark would mislead the public that there was a connection between the goods and/or services and the organisation represented by the emblem. This included where the public believed that the goods and/or services originated from, were guaranteed, or endorsed by the organisation in question. On the basis that the Treaty on the Functioning of the European Union refers to the industries and sectors specified by the contested registration, the public would believe that there was a connection between products or services bearing the mark and the European institutions.
3. Kreyenberg also argued that the € element of its mark was not sufficiently dominant to mislead the public.  However, the General Court dismissed this argument, considering that the additional elements of the crown semi-circle, the additional 'e' and the use of the terms 'euro experts' did nothing to neutralise the impression created by the € element of the contested mark, and its link to the European institutions.

On this basis, the General Court dismissed Kreyenberg’s appeal, and found the registration to be invalid.

Whilst this ruling highlights the differences between the provisions of Articles 7(1)(h) and (i), it is interesting that the General Court has chosen to interpret Article 7(1)(i) within the spirit of the Paris Convention, despite this provision not being expressly referring to the treaty. Whilst some symbols of particular public interest may not be specifically protected by the Paris Convention, it is clear that they should not automatically be eligible for trademark registration. In this case, the € symbol has clear relevance to the single European market, and the European institutions. However, it is noteworthy that the General Court has interpreted Article 7(1)(i) in the spirit of the Paris Convention, requiring an identical copy or imitation of an emblem of particular public interest to mislead the public that there is a connection between the relevant authority to which the emblem refers, and the goods and or services to which the mark is applied. This is not explicitly stated in the regulation, and it remains unclear whether this interpretation was intended by the legislators. Whilst interpreting the regulation at face value would not assist the trademark proprietor in this case, whether this approach will be followed remains to be seen.

Amanda McDowall and Chris McLeod, Squire Sanders (UK) LLP, London