In its decision of July 16, 2009 (C-202/08 and C-208/08), the European Court of Justice had to determine in which cases signs that are identical or similar to a state emblem are capable of being registered as trademarks, according to Article 7(1)(h) Community Trademark Regulation (CTMR) in conjunction with Article 6ter (1)(a) Paris Convention for the Protection of Industrial Property (PC).
In 2002, the company American Clothing Associates had filed an application consisting of an image of a maple leaf with the letters “RW” in capitals, for goods and services in classes 18, 25 and 40. The application was rejected according to Article 7(1)(h) CTMR on the grounds that the sign is able to create an impression of a connection between the sign and Canada for the public, since the maple leaf is the state emblem of Canada. Article 7(1)(h) CTMR refers to Article 6ter PC, according to which the registration either as trademarks or as elements of trademarks, of armorial bearings, flags, and other state emblems, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view, is to be refused.
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The Board of Appeal had confirmed the rejection of the application. In contrast, the Court of First Instance annulled the decision in respect of the services in class 40, on the grounds that Article 6ter (1)(a) PC, to which Article 7(1)(h) CTMR refers, does not apply to services.
However, the European Court of Justice did not follow the view of the Court of First Instance. Community law does not make any fundamental distinction between trademarks and service marks. The reference to the Paris Convention aims to determine the kind of signs, the registration of which has to be refused. It does not limit the scope of application of the CTMR.
Further, with regard to the remaining questions, the court confirmed that the registration of this trademark is to be refused according to Article 7(1)(h) CTMR in conjunction with Article 6ter (1)(a) PC. The role of a state emblem is to identify the state and its sovereignty and unity. The role of a trademark is to guarantee the origin of the marked goods and services. Because of this distinction, many aspects that are applicable to trademarks, do not apply for the protection of state emblems.
The court pointed out that the prohibition of the imitation of state emblems only applies to imitations from a heraldic point of view. Not the picture itself or its geometrical description is protected, but its heraldic expression. Thus, a sign that does not exactly depict the state emblem can be prohibited according to the Paris Convention, if it can be considered by the respective public as an imitation of such sign.