The EU vs. OHIM ?

Stefano Sandri

Should the European Community flag be considered included in the IQNet mark registered as Community Trademark by IQNet Association, under No. 459 628? The Cancellation Division of OHIM rejected as ungrounded the EU’s claim filed by the Commission (Decision of 27 November 2007, OHIM reference number: 1595 C).

According to Commission CTM has been registered in breach of Article 7(1) (h) CTMR that prohibits the registration of trade marks which “have not been authorized by the competent authorities and are likely to be refused pursuant to Article 6ter of the Paris Convention”. The Cancellation Division argued that in the decision T-127/02 (Concept –Anlagen u. Geräte nach ‘GMP’ für Produktion u. Labor GmbH v OHIM), the Court issued a judgment regarding the same protected emblem in respect of the same legislation. The Court said at paragraph thirty two: “The aim of Article 6ter (1)(a) of the Paris Convention is to preclude the registration and use of trade marks which are identical to State emblems or which are to a certain degree similar to them”.

The Court added that State emblems and emblems of international intergovernmental organisations are protected not only against the registration and use of marks which are identical to them or which incorporate them but also against the inclusion in such marks of any imitation of those emblems from a heraldic point of view.

According to the OHIM, in the present case, the fact that the mark also contains a word element does not, in itself, preclude application of that article, the important question being in the present case, the mark sought contains an element which may be regarded as the European emblem or an imitation thereof from a heraldic point of view. In this case the issue at stake can be expressed clearly as a question: “does the “Q” device registered as part of the CTM 459 628 include within it an “imitation”, from an heraldic point of view, of the twelve gold stars which form a part of the European Commission’s protected emblem?” However, remarked the Office of Alicante, the stylized Q is not an heraldic element, but part of the trademark IQNET that does not contain the European Emblem but clearly only a graphic representation of a letter Q made of fourteen stars. Therefore, the proprietor´s mark is not invalidated by Article 7.1(h) CTMR.

The applicant also contends that the proprietor’s mark contravenes article 7(1)(c) CTMR in that the CTM “contains an imitation of the European Emblem”. The applicant states that “the use of the circle of stars, together with the above-mentioned other elements (colour of the graphic representation) , lets us presume an attempt to deceive the public as to the origin of the products/services covered by the challenged Community registration. However the judgement pointed out that, given the presence in the mark of the horizontal lines, the letter “I” and the word “Net” it cannot be accepted that the proprietor’s mark “consists exclusively” (see 7(1)(c) CTMR ) of a sign which will characterize products sold under the mark as emanating from the European Union.

The Commission lodged an appeal against the contested decision. I’d be tempted to ask why, but probably there are some other reasons, not strictly legal, that escape to me.