GENERAL COURT, JUDGMENT OF 25 MAY 2011, T-397/09
The General Court confirmed that a coat of arms filed as Community trademark is not registrable if it is a heraldic imitation of a national coat of arms or of other state emblems. Neither its character as a family name nor the fact that the national coat of arms derived from that coat of arms are sufficient reasons to allow the registration.
Ernst August Prinz von Hannover Herzog zu Braunschweig und Lüneburg (Prinz von Hannover) applied to register the following sign as Community trademark for clothing, beverages, toys and several other goods and services in classes 16, 25, 28, 32, 33, 35, 39, 41, and 43.
Click here to see coat of arms.
The Office for Harmonization in the Internal Market's (OHIM's) examiner refused the registration on grounds of Articles 7(1)(h) Community Trademark Regulation (CTMR) and 6ter of the Paris Convention (PC), holding that from a heraldic perspective this sign was an imitation of the national emblems protected since November 1971 for the United Kingdom (UK).
Click here to see coat of arms.
OHIM's First Board of Appeal confirmed the refusal and dismissed Prinz von Hannover's appeal.
Prinz von Hannover brought an action before the General Court which was, however, also dismissed.
The court held that Article 6ter(1)(a) PC prohibited the trademark registration of any sign consisting of or containing an element constituting an imitation from a heraldic perspective of a national coat of arms or other State emblems. This restriction was not only limited to signs which created a similar image of existing emblems, but also to signs which only used elements of such emblems. Taking into account the description of the heraldic signs, the First Board of Appeal had found that from a heraldic perspective Prinz von Hannover's Community trademark application (a) was an imitation of sign GB 3 and (b) contained an imitation of the coat of arms' supporters in sign GB 4.
The General Court confirmed the latter and did not further assess the similarity with sign GB 3, holding it was sufficient for refusing a registration under Article 7(1)(h) CTMR if a Community trademark application was the heraldic imitation of any protected emblem.
The court rejected Prinz von Hannover's argument that due to the special circumstances of the case - the depicted coat of arms in the Community trademark application was his family's coat of arms - the Community trademark application should be allowed to proceed. The court said that even if the coat of arms of an aristocratic family could be considered as having the character of a family name, the CTMR did not provide for an unconditional right to register a name as Community trademark. Article 7(1)(h) CTMR was an absolute ground of refusal, regardless of the applicant. Apart from that, Prinz von Hannover was still entitled to use the sign under Article 12 CTMR.
Finally, the court held that historical reasons were neither relevant. Even if the UK's coat of arms originally derived from Prinz Hannover's family's coat of arms, this could not be considered for the Community trademark registration. This aspect could only be taken into account by the UK trademark authorities who could grant trademark registration under Article 6ter PC - however, Prinz von Hannover had not provided such approach.