The National Union for French Ski Instructors (SNMSF) registered the collective CTM ‘école du ski français’ for Classes 25, 28 and 41. The International Union for Ski instructors (SIMS) applied for a cancellation action on the grounds of Article 7 (1) (g) and (h) CTMR. In Judgment T-41/10, the General court upheld the decisions of OHIM, which rejected the action.
Firstly, Article 7 (1) (h) CTMR states that [shall not be registered] “trade marks which have not been authorised by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property”.
According to Article 6 ter (1) (a), “the countries of the Union agree to refuse or to invalidate the registration, [...]either as trademarks or as elements of trademarks, of armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view.”
In the present case, the Court held that in the contested CTM, the sole combination of the 3 colors of the French flag did not constitute an imitation “from a heraldic point of view”, given that the other characteristics of the flag are missing - i.e.: the rectangular or square shape, and the presence of the 3 stripes of equal width. In the sense of these articles, it is not relevant to examine whether the SNMSF aims at creating confusion between the sign and a reference to the French Republic; the global impression of the contested sign is remotely like the French flag, so that the relevant public will not perceive it as a replica.
Secondly, Article 7(1) (g) states that [shall not be registered] “trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service”.
The Court concluded that the word element ‘école du ski français’ as well as the logo in blue, white, red colors do not have a deceitful nature for Class 41 services as the SNMSF is composed of instructors with a French certificate or who are authorized to exercise in France; further, the sector is competitive, thus the public will rather interpret the expression ‘ski français ‘ like meaning a ‘French method of skiing’, with particular characteristics than believe that the services are rendered by a public service of the French government.
For more action in Court than on the slopes for French ski Unions, go here.