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Friday, 23 April 2004

CFI HERALDS A NEW DAWN


The IPKat is please to report on a rare sighting – an Article 6ter Paris Convention case.

Concept applied to register a figurative mark consisting of a circle of twelve stars in black and white with the letters ECA in their centre for computer hardware and software, the organisation of conferences and other training and services connected with computer software a databases. The application was refused by the OHIM examiner under Article 7(1)(h) of Regulation 40/94, which prohibits the registration of marks which consist of important state symbols or imitations of them from a heraldic point of view. After an unsuccessful appeal to the Board of Appeal, Concept appealed to the CFI.

The CFI dismissed the appeal. The most interesting parts of its reasoning include:

♦ The fact that Concept’s mark also contained a word element did not, in itself, preclude the application of Article 6ter. The important question was whether in this case Concept’s mark contained an element which could be regarded as the European emblem or an imitation thereof from a heraldic point of view. That element did not have to be identical to the emblem in question and the fact that the emblem was stylised or that only part of the emblem was used did not mean that there was no imitation from a heraldic point of view.

♦ When making the comparison from a heraldic point of view, regard had to be had to the heraldic description and not to the geometric description, which is by its nature much more detailed. From the heraldic point of view, the mark applied for only differed from the heraldic description of the EU emblem in that Concept’s circle of stars appeared in white on a black background, rather than in blue and yellow. However, the difference in colour was irrelevant in this case because Concept’s application was not limited to any particular colours and thus could be used in the EU’s colours. Additionally, the EU emblem was itself often reproduced in black and white. The fact that the stars in application were not the same size as those in the EU emblem did not mean that the relevant public would not think that Concept’s application was not an imitation from a heraldic point of view. Both featured twelve stars of the same type and shape.

♦ The fact that the EU emblem had a rectangular background of a flag, compared to the square background of Concept’s mark did not distinguish the two indicia. The heraldic definition did not specific the shape of the background of the EU emblem. It was the circle of stars, rather than the background that was predominant. Finally, though the circle of stars was originally the flag of the EU, it is now considered to be its symbol or emblem.

♦ 5. Under the second sentence of Article 6ter(1)(c), the registration of a mark containing the emblem of an international organisation can be allowed if it is not of such a nature to suggest to the public that a connection exists between the organisation concerned and the emblem in question or if such a registration is not of such a nature as to mislead the public as to the existence of a connection between the user and the organisation. Even though it had not mentioned the provision by name, OHIM had conducted the relevant analysis in making its decision and had found that the registration and use of Concept’s mark was capable of giving rise to the impression on the part of the relevant public that there was a connection between the mark sought and the Council of Europe or the European Community. There was an overlap between the applied-for goods and services and the activities of the EU since the EU provided its publications on CD-ROM and in database form and provided training and conferences. Because of the wide variety of goods and services offered by the EU, it could not be ruled out that the relevant public would believe that there was a connection between Concept and the European institutions. The presence of ECA within the centre of Concept’s mark reinforced the impression of a connection with the EU and could be an acronym for any EU agency or body, including the European Court of Auditors.

The IPKat finds this a rather confusing case. He’s not particularly familiar with the concept of “heraldic similarity” and wonders if any readers can explain how it works and how it differs form the notion of similarity in trade mark law which is his bread and butter (or at least, his fish and milk).

Heraldry here, here, here and here

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