Twelve-star mark refused registration

European Union

In Concept - Anlagen u Geräte nach 'GMP' für Produktion u Labor GmbH v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has upheld a decision to refuse registration of a black and white pictorial mark made up of twelve stars encircling the letters 'ECA' on a black background.

Concept - Anlagen u Geräte nach 'GMP' für Produktion u Labor GmbH applied to register the mark with the OHIM for various goods and services, including computer hardware and software, the organization of seminars and conferences, and computer program design. The OHIM refused registration on the grounds that it was similar to the emblem of the European Union, which is protected by Article 6ter of the Paris Convention for the Protection of Industrial Property. Article 6ter, subsumed into EU law by virtue of Article 7(h) of the Community Trademark Regulation, provides in part that:

"The countries of the union [composed of the countries to which the present convention applies] agree to refuse or to invalidate the registration, and to prohibit by appropriate measures the use, without authorization by the competent authorities, either as trademarks or as elements of trademarks, of armorial bearings, flags, and other state emblems, of the countries of the union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view."

Concept appealed to the CFI arguing, among other things, that when examined from a heraldic point of view, the mark was not an imitation of the EU emblem because it contained the word element 'ECA'. According to Concept, heraldic emblems stem from coats of arms and, in heraldry, word elements never appear in the centre of coats of arms. Concept further stated that its mark was in black and white, whereas the EU emblem was usually represented in colour.

It also contended that it had a defence pursuant to Article 6ter (1)(c) of the Paris Convention, which provides, among other things, that a trademark can be registered as long as it is not of such a nature as to suggest to the public that a connection exists between the organization using the mark and any official emblems. Concept stated that the mark was unlikely to mislead the public into thinking that there was a connection with the EU emblem, as the goods and services covered by the application differed to the goods and services offered by the institutions of the European Union.

The CFI dismissed Concept's appeal and refused to allow registration. Neither the fact that the mark was in black and white nor the addition of the word element 'ECA' prevented it from being an imitation of the EU emblem from a heraldic point of view. It stated that the important question was whether, from a heraldic point of view, the mark contained an element that could be regarded as the EU emblem or an imitation thereof. The CFI noted that the element need not necessarily be identical to the emblem. It concluded that the fact that the EU emblem was stylized and that only part of it had been used did not mean that there was no imitation from a heraldic point of view.

The CFI also rejected Concept's defence under Article 6ter (1)(c), finding that the relevant public might believe that a connection between Concept and the various EU institutions existed given the diverse range of goods and services offered by these institutions.

Peter Munzinger, Bardehle Pagenberg Dost Altenburg Geissler, Munich

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