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EUROKURIER cannot register EU emblem elements
The German Federal Patent Court (BPatG) recently ruled on an unusual cancellation request filed in 2009 by the European Union and involving the protection of a central EU emblem, the circle of 12 five-pointed stars on blue background. The European Union had requested the cancellation of the black and white word/device mark "EUROKURIER" for various customs and transport related services in classes 36 and 39.
The German PTO initially rejected the EU's cancellation request, applying provisions of the German Trademark Act which correspond to Art. 7 (1) (h) and (i) of the EU Trade Mark Regulation. These provisions exclude signs from trademark protection which incorporate State emblems protected under Art. 6ter of the Paris Convention. The PTO thought that the EUROKURIER sign did not evoke a false impression of an association with EU institutions. For one thing, the horizontal bar with its winged ends was a conspicuous and unusual design element which in itself did not evoke any association with EU institutions. And furthermore, the examiner did not see the necessary conceptual similarities between the services covered by the mark – customs clearance in class 36 and transportation related services in class 39 – and the work of the EU institutions. The PTO pointed out that the EU is not engaged in providing customs and transportation services on a commercial scale, but only on an organizational and regulatory plane. As far as commercial services are concerned, the public was said to be well aware of a tendency of international operators to highlight their EU-wide sphere or operations by using the element "EURO" and/or a circle of stars in their logos. Thus, no-one perceiving these elements would falsely presume that a private undertaking using them was affiliated with the EU institutions.
The German Federal Patent Court disagreed with the first instance decision in all respects. It first of all confirmed that the emblem of the Council of the European Union, a circle of twelve five-pointed stars on blue background, as well as the flag of the EU, are emblems protected under Art. 6ter of the Paris Convention. The court went on to hold that the EUROKURIER logo also depicted a circle of twelve five-pointed stars on dark background. This overlap was sufficient in the view of the judges to constitute an "imitation" of an official emblem in its heraldic meaning, pursuant to Art. 6ter - i.e. taking over those parts of a protected emblem that provide its specific heraldic character. The court thought that the additional elements – the word EUROKURIER and the stylized wings – did not lead away from the false impression that EUROKURIER was commercially linked to the EU institutions. The word EUROKURIER could be mistaken for the name of an official EU courier service. The wings were said to be a standard symbol of transportation undertakings without any indication as to whether or not these might be affiliated with the EU.
Finally, the court also confirmed sufficient conceptual connection between the services claimed by EUROKURIER and the activities of the EU institutions. The court found that the various tasks allocated to the EU on a regulatory and organizational plane covered the possibility that a commercial customs clearance and transportation service such as EUROKURIER could be run by, or affiliated with, the EU and executing tasks allocated to the EU. The court therefore ordered the sign to be cancelled.
An interesting, well-reasoned decision analysing and applying the criteria for trademarks unlawfully imitating protected State emblems, and giving sound guidance in an area of trademark law that is not frequently explored.
Case Reference: 26 W (pat) 73/10 of 28 July 2016.
Read the decision in German here.
Posted by: Anthonia Ghalamkarizadeh @ 11.04
Tags: Eurokurier, EU, state emblem, Art. 6ter Paris Convention, BPatG, German Federal Patent Court,
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