American Clothing Associates SA v OHIM (AG Colomer for the ECJ; Joined Cases C-202/08 and C-208/08; 12.05.09)

The AG recommended that the ECJ set aside the CFI’s judgment in this case in so far as it held that Article 7(1)(h), in conjunction with Article 6ter of the Paris Convention, did not apply to service marks.

The CFI partially allowed an appeal to overturn the BoA’s refusal to register a sign (below, left) applied for by American Clothing Associates SA for various goods in Classes 18 and 25 and services in Class 40, on the basis that it gave rise to an impression on the part of the public that it was linked to the maple leaf emblem of Canada (below, right) which was protected under Article 6ter of the Paris Convention.

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Article 6ter of the Paris Convention (which is incorporated into the Regulation at Article 7(1)(h)) prohibits the registration of trade marks comprising or containing, inter alia, state emblems. The CFI held that on a proper construction of Article 6ter, the prohibition applied only in respect of applications for goods; service marks were excluded. Accordingly, the BoA’s refusal in respect of Class 40 was overturned. The addition of the letters RW to the maple leaf device did not stop Article 6ter applying.

In the AG’s opinion, the CFI misinterpreted the aim of the Paris Convention and the reference to it in Article 7 of the Regulation. The AG opined that the essential aim of the Paris Convention was to uphold the principle of national treatment and to provide a ‘minimum requirement’, not a ‘uniform law’. It only required Contracting States not to register trade marks which are identical to, or contain, a national emblem. However, those States were free to extend the scope of protection to service marks. The AG concluded that the extension of the protection of national emblems to service marks therefore derived from national or Community legislation.

The AG considered recitals seven and nine of the preamble to and Article 1(1) of the Regulation and concluded that the Regulation contained no provision which distinguished between signs which designated goods and those which designated services. Further, he stated that the European legislature treated the two types of sign in the same way in the Regulation and it therefore made no sense to claim that its intention was to restrict the protection of national emblems specifically for services, which constituted the most important sector of economic activities in all Member States. The AG concluded that Article 7(1)(h) of the Regulation must be understood to refer to the ground for refusal of registration in Article 6ter of the Paris Convention, rather than to the scope of its protection.

The AG also concluded that he did not share the view of the CFI, that when the European legislature drafted the Regulation, it was aware that the reference in Article 7(1)(h) restricted the protection for national symbols, leaving them unprotected with respect to service marks. Contrary to what was suggested by the CFI in its judgment, it was unlikely that no Member State would have noticed the reduction in protection for national emblems, particularly given the sensitivity of governments in respect of national emblems and the fact that the Regulation had to be unanimously approved in accordance with Article 235 of the EEC Treaty (now Article 308 EC).