What have maple leaves to do with Paris? The answer is apparent from the decisions earlier today in Joined Cases C‑202/08 P and C‑208/08 P, American Clothing Associates NV v Office for Harmonisation in the Internal Market; Office for Harmonisation in the Internal Market v American Clothing Associates NV, the latest thriller from Luxembourg's favourite court.
Back in July 2002, American Clothing applied to register the sign on the right as a Community trade mark for goods and services in Classes 18, 25 and 40 (‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’ (Class 18); ‘Clothing, footwear, headgear’ (Class 25) and ‘Tailoring; taxidermy; bookbinding; dressing, processing and finishing of skins, leather, furs and textiles; photographic film development and photographic printing; woodworking; fruit pressing; grain milling; processing, tempering and finishing of metal surfaces’ (Class 40)).
The examiner refused registration for in respect all the goods and services concerned, on the basis of Article 7(1)(h) of Regulation 40/94, stating that the mark was liable to give rise to an impression on the part of the public that it was linked to Canada, as he took the view that the maple leaf in the trade mark applied for is a copy of the emblem of Canada (WIPO's maple emblem for Canada appears on the left). American Clothing appealed unsuccessfully to the First Board of Appeal, then appealed further to the Court of First Instance (CFI).
The CFI partially annulled the decision at issue, in so far as it related to the registration of the mark applied for in respect of the services in Class 40, on the ground that Article 6ter(1)(a) of the Paris Convention, to which Article 7(1)(h) of Regulation 40/94 directly refers, does not apply to service marks. The CFI added that, when it adopted the original version of Regulation 40/94 relatively recently, the Community legislature was aware of the importance, in modern commerce, of service marks and could, therefore, also have extended the protection granted to State emblems by Article 6ter of the Paris Convention to that category of marks -- but didn't.
Both sides appealed to the Court of Justice, American Clothing seeking to get the mark registered for goods and OHIM seeking to prevent it being registered for services.
American Clothing's appeal
"40 ... the Advocate General highlighted some of the essential functions which may be attributed to a State emblem. These include that of identifying a State and that of representing its sovereignty and unity. The essential function of the trade mark, for its part, is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin ...OHIM's appeal
42 That discrepancy between the essential functions of trade marks and those of State emblems is also reflected in the difference in their treatment both under Community and international law.
43 Thus, Article 6 of Regulation No 40/94 sets out the principle that a trade mark is to be obtained by registration whereas, under Article 6ter(3)(a) of the Paris Convention, the States are merely to communicate the list of emblems to be protected to the International Bureau of the WIPO, such a communication not being obligatory in respect of flags of States. In respect of trade marks, the principle is that protection is provided in respect of certain determined classes of goods and services, whereas emblems, on the other hand, are entitled to general protection whatever the use one wishes to make of them. In addition, unlike trade marks, emblems cannot be declared invalid and their proprietor cannot be deprived of his rights. Moreover, the duration of their protection is not limited. Many aspects governing the protection of trade marks are therefore not capable of being transposed to the protection of State emblems.
44 The same is true of the existence of a likelihood of confusion which, although it is the specific condition for the protection of the trade mark in the case of similarity between the trade mark and the sign and between the goods or services ... is not required for the protection of an emblem, since Article 6ter(1)(a) of the Paris Convention makes no reference to it.
45 It is apparent from the second sentence of Article 6ter(1)(c) of the Paris Convention that the protection of State emblems is not subject to there being a connection, in the mind of the public, between the trade mark for which registration is sought and the emblem. In the case of emblems of international organisations, that provision authorises the registration and use of a trade mark if that mark is not of a nature such as to mislead the public regarding the existence of a connection between the user of the trade mark and the organisation. It follows that, in other cases, namely those involving State emblems, that possibility does not exist and there is therefore no need to ascertain whether there is such a connection. ...
47 ... Article 6ter(1)(a) ... prohibits the registration and use of a State emblem not only as a trade mark, but also as an element of a trade mark. The protection granted to emblems is therefore, in this regard, also very broad. Furthermore, the last part of that provision also contributes to guaranteeing broad protection to State emblems, in so far as it prohibits the imitation of the emblem in addition to prohibiting its exact replication.
48 However, the prohibition of the imitation of an emblem applies only to imitations of it from a heraldic perspective, that is to say, those which contain heraldic connotations which distinguish the emblem from other signs. Thus, the protection against any imitation from a heraldic point of view refers not to the image as such, but to its heraldic expression. It is therefore necessary, in order to determine whether the trade mark contains an imitation from a heraldic point of view, to consider the heraldic description of the emblem at issue.
49 It follows that American Clothing’s contention that the geometric description of the emblem must be taken into account cannot be accepted. ...
50 Thus, a trade mark which does not exactly reproduce a State emblem can nevertheless be covered by Article 6ter(1)(a) of the Paris Convention, where it is perceived by the relevant public, in the present case the average consumer, as imitating such an emblem. ...
52 ... the heraldic description of the emblem, which must be referred to in order to determine whether there is an imitation from a heraldic point of view within the meaning of Article 6ter(1)(a) of the Paris Convention, normally contains only certain descriptive elements, and does not necessarily concern itself with particular features of the artistic interpretation. The Court of First Instance therefore did not err in law by holding that a number of artistic interpretations of one and the same emblem on the basis of the same heraldic description were possible".
"71 As regards the Court of First Instance’s refusal to apply Article 7(1)(h) of Regulation No 40/94 to service marks, it is necessary to consider the Paris Convention in the light of Article 6ter, to which Article 7(1)(h) of the Regulation refers.
72 ... the Paris Convention provides for a minimum level of protection for elements falling within its scope, while leaving the Member States party to the Convention free to extend the scope of the protection. Consequently ... those States are nevertheless free to provide for such an application unilaterally. ... Article 6ter ‘does not oblige States party to the Paris Convention to refuse or to invalidate the registration, and to prohibit the use of State emblems or other official signs as a service mark or as an element of a service mark. States are nevertheless free to do so ...’.
73 Consequently, Article 6ter leaves the extension of the protection guaranteed to trade marks for goods to service marks to the discretion of the States party to the Convention. In doing so, the Paris Convention does not require those States to distinguish between the two types of marks.
74 It is therefore necessary to consider whether the Community legislature intended to exercise that power of discretion and to extend to service marks the protection granted to trade marks for goods under the Paris Convention.
75 ... the body of relevant Community law provisions do not distinguish, in principle, between trade marks for goods and service marks....
81 ... the Court of First Instance erred in finding that, by refusing registration of the trade mark applied for in respect of services in Class 40 of the Nice Agreement, the decision at issue infringed Article 7(1)(h) of Regulation No 40/94".