Language of document : ECLI:EU:T:2021:851

Case T700/20

Gabriele Schmid

v

European Union Intellectual Property Office (EUIPO)

 Judgment of the General Court (Tenth Chamber), 1 December 2021

(EU trade mark – Invalidity proceedings – EU figurative mark Steirisches Kürbiskernöl g. g. A GESCHÜTZTE GEOGRAFISCHE ANGABE – Absolute ground for refusal – Mark which includes badges, emblems or escutcheons – Emblem of one of the areas of action of the European Union – Protected geographical indications – Article 7(1)(i) of Regulation (EC) No 207/2009 (now Article 7(1)(i) of Regulation (EU) 2017/1001))

1.      EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks which include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention – Conditions for protection – Criteria for assessment

(Council Regulation No 207/2009, Art. 7(1)(h) and (i))

(see paragraphs 21-28, 40-42)

2.      EU trade mark – Surrender, revocation and invalidity – Absolute grounds for invalidity – Marks which include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention – Extent of protection – Symbol for protected geographical indications

(Council Regulation No 207/2009, Art. 7(1)(i))

(see paragraphs 38, 39, 43, 45)


Résumé

Ms Schmid is the proprietor of an EU trade mark, registered in respect of the product ‘Pumpkin seed oil, corresponding to the protected geographical indication Styrian pumpkin seed oil’. That figurative mark includes the EU symbol for ‘protected geographical indications’ (‘the PGI symbol’). For that reason, an application for a declaration of invalidity was filed with the European Union Intellectual Property Office (EUIPO) by the Landeskammer für Land- und Forstwirtschaft in Steiermark (Regional Chamber of Agriculture and Forestry of Styria, Austria).

The Cancellation Division of EUIPO declared the contested mark invalid. The Board of Appeal of EUIPO confirmed that invalidity on the ground that the contested mark included the PGI symbol in its entirety and that neither the right nor the obligation to use that symbol covered the right to have it protected as an element of a trade mark.

The General Court annuls the decision of the Board of Appeal. It considers that the Board of Appeal should have examined whether, taken as a whole, the trade mark including an emblem protected by Article 7(1)(i) of Regulation No 207/2009 (1) was likely to mislead the public as to the connection between, on the one hand, its proprietor or user and, on the other, the authority to which the emblem in question relates. It states that the various elements of which such a trade mark consists must be taken into account in that assessment.

Findings of the Court

First of all, the Court notes that the prohibition laid down in Article 7(1)(i) of Regulation No 207/2009 applies when three cumulative conditions are fulfilled:

–      the badge, emblem or escutcheon in question is of particular public interest, the existence of a connection with one of the activities of the European Union being sufficient to show that a public interest attaches to its protection;

–      the competent authority has not consented to the registration;

–      the trade mark including the badge, emblem or escutcheon in question is likely to mislead the public as to the connection between, on the one hand, its proprietor or user and, on the other, the authority to which the element in question relates.

As regards that third condition, it stems from the fact that the extent of the protection conferred by Article 7(1)(i) of Regulation No 207/2009 cannot be greater than that of the protection conferred upon the emblems of international intergovernmental organisations that have been duly communicated to the States which are parties to the Paris Convention. (2) Such emblems are protected only when, taken as a whole, the trade mark which includes such an emblem suggests, in the public mind, a connection between, on the one hand, its proprietor or user and, on the other, the international intergovernmental organisation in question. (3)

Thus, Article 7(1)(i) of Regulation No 207/2009 is applicable where the public may believe that the goods or services designated originate from the authority to which the emblem reproduced in the trade mark refers, or that they have the approval or warranty of that authority, or that they are connected in some other way with that authority.

Next, the Court finds that the Board of Appeal failed to examine the third condition and thus erred in law. It did not assess the way in which the public would perceive the PGI symbol as a component of the contested mark, taken as a whole, or whether that perception might lead the public to believe that the goods covered by such a mark had the warranty of the European Union.

Lastly, the Court clarifies that EUIPO must not only examine whether the emblem concerned is reproduced in whole or in part in the trade mark into which it is incorporated. The various elements of which such a trade mark consists must also be taken into account in that assessment. That obligation to carry out a specific overall examination is not called into question by the fact that the grant of protection under trade mark law to the PGI symbol is, as a general rule, such as to affect adversely the system of protected geographical indications established by the European Union.


1      Article 7(1)(i) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) prohibits the registration of trade marks which include badges, emblems or escutcheons other than those referred to in Article 7(1)(h) of that regulation, that is to say, other than those of States or international intergovernmental organisations that have been duly communicated to States which are parties to the Convention for the Protection of Industrial Property signed in Paris on 20 March 1883, last revised at Stockholm on 14 July 1967 and amended on 28 September 1979 (United Nations Treaties Series, vol. 828, No 11851, p. 305; ‘the Paris Convention’), where they are of particular public interest, unless consent has been given to such registration by the competent authority.


2      Pursuant to Article 7(1)(h) of Regulation No 207/2009.


3      That condition stems from Article 6ter(1)(c) of the Paris Convention.