2016-09-22

Imitating an official emblem in a trademark is NOT authorized

Applicants should pay attention not to file trademarks containing or imitating elements of flags or state emblems.

Proof of it is the success achieved in the case concerning the cancellation request filed by the European Union in 2009 against the semi-figurative German trademark

eurokurier-2
N° 30 2008 032 360 filed for various customs and transport services in classes 36 and 39.

According to the provisions of Art 6ter of the Paris Convention, flags and emblems of member states as well as names and emblems of international intergovernmental organizations (IGOs) are protected against unauthorized registration and use as trademarks.

However the German Patent Office rejected the EU’s cancellation request in April 2010 considering that the semi-figurative trademark EUROKURIER did not evoke any association with the EU institutions, neither in the comparison between the signs nor in the comparison with the protected commercial services.

Thanks to solid arguments filed by Office Freylinger S.A., this first instance decision has now been rejected by the German Federal Patent Court (BPatG) pointing out that the design of twelve five-pointed stars on a dark background is sufficient to constitute an imitation of the official emblem in its heraldic meaning and that the additional elements could not avoid a risk of confusion with the activities of the EU institutions. Moreover the German Federal Patent Court has confirmed that the commercial customs clearance and transportation services run by EUROKURIER could also be allocated to the European Union institutions.

Consequently the German trademark application N°30 2008 032 360 was ordered to be cancelled.

Case Reference : 26W (pat) 73/10 of 28 July 2016

Nathalie CAILTEUX