Leaves to appeal in battle of the maples

With so many other distractions of late, the IPKat nearly overlooked the Opinion of Advocate General Ruiz-Jarabo Colomer in Joined Cases C‑202/08 P and C‑208/08 P American Clothing Associates SA v Office for Harmonisation in the Internal Market and Office for Harmonisation in the Internal Market v American Clothing Associates SA.

ACA applied to register as a Community trade mark a sign consisting of an image of a maple leaf with the letters ‘rw’, in capitals (above, right), for ‘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 to register the mark at all, stating that the sign gave 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 was a copy of the emblem of that State, as it appears in the communication of the International Bureau of the World Intellectual Property Organisation of 1 February 1967 to the States which are parties to the Paris Convention and in the WIPO database of emblems protected under Article 6ter of that Convention(left).

The First Board of Appeal dismissed ACA's appeal: it accepted that the red-coloured maple leaf was the emblem of Canada and, on the basis of an earlier judgment of the Court of First Instance, examined whether, from a heraldic point of view, the disputed sign contained an element which was identical to or an imitation of the Canadian emblem, concluding that the word element ‘RW’ did not preclude the application of Article 6ter (1)(a) of the Paris Convention.

ACA then appealed to the Court of First Instance, whose decision (noted by Class 46 here) caught everyone by surprise by saying that the Article 6ter protection of national emblems applied in respect of goods only, but not services. It thus allowed the appeal in Class 40 while dismissing it for the classes of goods. Both parties now appealed against this decision to the European Court of Justice.

The Advocate General has now recommended to the Court that it dismiss ACA's appeal in respect of the goods and allow that of OHIM in regard to the services. He said (among many things in a very long Opinion):

"103. The Court of First Instance misinterpreted the aim of the Paris Convention and the reference to that Convention made by Article 7 of the Regulation on the Community Trade Mark. An analysis of each of those provisions separately allows useful conclusions to be drawn.

(a) Concerning the correct interpretation of Article 6ter of the Paris Convention

104. The essential aim of the Convention is to uphold the principle of national treatment, accompanying it with minimum rules for the protection of the objects of industrial property to which it applies. 

105. The principle of national treatment covers the prohibition of discrimination against foreign signs, affording them the same legal protection as that given to patents, trade marks and designs at national level. It also includes a conflict of laws rule, under which, in the countries party to the Convention, industrial property cases are to be judged in accordance with the lex loci proteccionis, that it to say, according to the law of the State in which legal protection is sought for the invention, mark or design, in accordance with the principle of territoriality inherent in the Convention. 

106. Consequently, the signatories of the Paris Convention are required to apply their industrial property laws in the same way to the trade marks of their citizens and to those of the subjects of the other States Parties, who may claim, as a minimum, the protection provided under the Convention.

107. The Court of First Instance is therefore wrong partially to deny protection to emblems pursuant to Article 6ter, since, although that provision does not include service marks, it also does not need to concern itself in extenso with the scope of absolute protection for emblems. The provision in question only requires the contracting States not to register trade marks which are identical to or contain a national emblem. However, the signatory States are free to extend the scope of the rule to service marks. In this respect, OHIM is correct when it describes the Paris Convention as being in the nature of a ‘minimum requirement’, not a ‘uniform law’. In Community law, there is no shortage of this kind of regulation, which authorises the Member States to exceed the requirements fixed in a directive, using the so-called ‘minimum harmonisation’ method.

108. On the other hand, contrary to OHIM’s view, Article 6sexies of the Convention does not support a broad interpretation of Article 6ter thereof. Articles 6sexies only invites the signatory States to protect service marks but does not require their registration. Consequently, the rules governing that protection of signs are adopted by each country, which may, therefore, assimilate them to trade marks or establish a special regime. In any event, except for specific references to services in the Convention, such as those in Articles 2 and 3 in conjunction with Article 5, it is for the national legislature to determine the degree of equivalence of the marks designating services with those which appear on consumer goods. 

109. In short, the extension of the protection of national emblems to service marks does not derive from the Paris Convention, but from national or Community legislation.

(b) The scope of Article 7(1)(h) of Regulation No 40/94

110. The question of whether this absolute ground for refusal also applies to service marks depends, therefore, on the Regulation on the Community trade mark and, in my view, should be answered in the affirmative.

111. First, because the seventh and ninth recitals in the preamble to that regulation, and Article 1(1) thereof, endorse the relevance of that ground, on the same conditions, to both signs: those for goods and those which designate services. Moreover, save for error or omission, the regulation contains no provision which distinguishes between them, in particular, with regard to their registration or to the rights of their proprietors.

112. Secondly, because the European legislature, in the exercise of its powers, has treated the two signs in the same way in Regulation No 40/94, and it makes no sense to claim that its intention was to restrict the protection of national emblems specifically for services, which constitute the most important sector of economic activities in the gross domestic product of all the Member States.

113. In these circumstances, I am certain that the reference in Article 7(1)(h) must be understood as made to the ground for refusing registration in Article 6ter of the Convention, but not to its supposed scope.

114. Thirdly, because I do not share the view of the Court of First Instance that, when the European legislature drafted the regulation on the Community Trade Mark, it was aware that the reference in Article 7(1)(h) restricted the possibility of national emblems being used to oppose marks to trade marks, leaving those emblems unprotected with regard to service marks. I suspect, rather, that the Member States were fully aware that the Paris Convention did not involve such a restriction and that it did not curtail their power to determine the nature of the protection which they wished to guarantee service marks in the Community.

115. It is unlikely that, as the judgment under appeal suggests, in Regulation No 40/94, which was so innovative and which had to be approved unanimously in accordance with Article 235 of the EEC Treaty (now Article 308 EC), no Member State would have noticed the reduction in protection for national symbols which, according to that judgment, was the consequence of the reference in Article 7(1)(h), especially bearing in mind the sensitivity of the Governments in respect of those emblems.

116. It is therefore appropriate to allow the single ground of appeal raised by OHIM in Case C-208/08 P relating to an error of law in the application of Article 7(1)(h) of Regulation No 40/94, in conjunction with Article 6ter of the Paris Convention, and to set aside the judgment against which OHIM has appealed".

The IPKat suspects that, on policy grounds if for no other reason, the Court would prefer to reach the conclusion regarding service marks that has been proposed by the Advocate General, but wonders how sound his arguments are. What we have here is really an argument that you have to give effect to the essential function of the Convention, which is defined by the broad terms of its preamble rather than the narrower substantive provisions by which its members are bound.  It is inconceivable that the legislative intent was to create and apply a strict distinction between marks for goods and services, but what we are dealing with here is an absence of intention rather than a positive -- and many people would prefer Europe's highest court to apply the law rather than to create it. 

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