Trademarks cannot include the European flag, says Patent Office

Poland
The Cancellation Board of the Polish Patent Office has held that a figurative trademark including a design similar to the European flag was invalid (Case Sp 158/08, March 6 2009).

On March 22 2004 Polish company Firma Batczew Stanislaw Komperda applied to register a figurative trademark consisting of the words 'Batczew Komperda' on a blue background surrounded by yellow stars. The application covered:
  • goods in Class 29 of the Nice Classification, including bacon, meat extracts, meat jellies, blood pudding, smoked meat, sausages, canned meat, meat, salted meat, liver, lard, ham and cured meat; and
  • services in Class 40, including the slaughtering of animals and food smoking.
The office registered the mark on October 17 2006 (Registration 181286).

The European Commission subsequently filed an action for the invalidation of the mark under Article 131(2)(iii) of the Industrial Property Law. This provision reads as follows:

"Protection shall not be granted for a sign if [...] it incorporates the abbreviated names or symbols (eg, armorial bearings, flags and emblems) of other countries and international organizations, as well as official signs and hallmarks indicating control and warranty adopted in other countries, if the prohibition of registration follows from international agreements, unless the applicant is able to produce an authorization issued by a competent authority [...]."

The commission alleged that the mark imitated the flag of the European Union and that the word element did not affect the overall impression of the mark. The commission relied on Annex A1 of the graphics guide to the European emblem, which states that:

"[p]ermission to use the European emblem does not confer on those to whom it is granted any right of exclusive use, nor does it allow them to appropriate the emblem or any similar trademark or logo, either by registration or any other means. Each case will be examined individually to ascertain whether it satisfies the criteria set out above. This will be unlikely in a commercial context if the European emblem is used in conjunction with a company's own logo, name or trademark."

The Cancellation Board agreed with the commission that the mark imitated the flag of the European Union. The board was of the view that the European flag cannot be used in a trademark, even if the mark contains additional elements. The board cited the decision of the Court of First Instance in Concept v Office for Harmonization in the Internal Market (Case T-127/02), in which it was held that:

"[s]tate emblems and emblems of international intergovernmental organizations are protected not only against the registration and use of marks which are identical to them or which incorporate them, but also against the inclusion in such marks of any imitation of those emblems from a heraldic point of view."

The board's decision is not yet final, as Batczew may file a complaint with the District Administrative Court of Warsaw.

Tomasz Rychlicki, Patpol - Patent & Trademark Attorneys, Warsaw 

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