JUDGMENT OF THE COURT OF FIRST INSTANCE (Fifth Chamber)
28 February 2008 (*)
(Community trade mark – Application for a figurative Community trade mark representing a maple leaf – Absolute ground for refusal – Service mark – Article 7(1)(h) of Regulation (EC) No 40/94 – Article 6ter of the Paris Convention – Matters of law brought before the departments of OHIM and before the Court)
In Case T‑215/06,
American Clothing Associates SA, established in Evergem (Belgium), represented by P. Maeyaert and N. Clarembeaux, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
ACTION brought against the decision of the First Board of Appeal of OHIM of 4 May 2006 (Case R 1463/2005-1) concerning the application for registration as a Community trade mark of a sign representing a maple leaf,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fifth Chamber),
composed of M. Vilaras (Rapporteur), President, F. Dehousse and D. Šváby, Judges,
Registrar: B. Pastor, Deputy Registrar,
having regard to the application lodged at the Registry of the Court of First Instance on 8 August 2006,
having regard to the response lodged at the Registry of the Court of First Instance on 24 October 2006,
further to the hearing on 6 November 2007,
gives the following
Judgment
Legal context
1 Article 7 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended, provides:
‘1. The following shall not be registered:
…
(h) trade marks which have not been authorised by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention;
…’
2 Articles 1, 6, 6ter, 6sexies and 7 of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended, (United Nations Treaty Series, Vol. 828, No 11847, p. 108) (‘the Paris Convention’) provide:
‘Article 1
…
(2) The protection of industrial property has as its object patents, utility models, industrial designs, trade marks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition.
…
Article 6
(1) The conditions for the filing and registration of trade marks shall be determined in each country of the Union [composed of the countries to which the Paris Convention applies] by its domestic legislation.
…
Article 6ter
(1) (a) The countries of the Union agree to refuse or to invalidate the registration, and to prohibit by appropriate measures the use, without authorisation by the competent authorities, either as trademarks or as elements of trade marks, 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.
(b) The provisions of … (a), above, shall apply equally to armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organisations of which one or more countries of the Union are members, with the exception of armorial bearings, flags, other emblems, abbreviations, and names, that are already the subject of international agreements in force, intended to ensure their protection.
(c) No country of the Union shall be required to apply the provisions of … (b), above, to the prejudice of the owners of rights acquired in good faith before the entry into force, in that country, of this Convention. The countries of the Union shall not be required to apply the said provisions when the use or registration referred to in … (a), above, is not of such a nature as to suggest to the public that a connection exists between the organisation concerned and the armorial bearings, flags, emblems, abbreviations, and names, or if such use or registration is probably not of such a nature as to mislead the public as to the existence of a connection between the user and the organisation. …
(3) (a) For the application of these provisions, the countries of the Union agree to communicate reciprocally, through the intermediary of the International Bureau, the list of State emblems, and official signs and hallmarks indicating control and warranty, which they desire, or may hereafter desire, to place wholly or within certain limits under the protection of this Article, and all subsequent modifications of such list. Each country of the Union shall in due course make available to the public the lists so communicated.
Nevertheless such communication is not obligatory in respect of flags of States. …
Article 6sexies
The countries of the Union undertake to protect service marks. They shall not be required to provide for the registration of such marks.
Article 7
The nature of the goods to which a trade mark is to be applied shall in no case form an obstacle to the registration of the mark. …’
Background to the dispute
3 On 23 July 2002, the applicant filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Regulation No 40/94.
4 Registration as a mark was sought for the following mark consisting of an image of a maple leaf with the group of letters ‘rw’ below it:
5 The goods and services in respect of which registration was sought are in Classes 18, 25 and 40 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following descriptions:
– ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’ (Class 18);
– ‘Clothing, footwear, headgear’ (Class 25);
– ‘Tailoring; taxidermy; bookbinding; dressing, processing and finishing of skins, leather, furs and textiles; photographic film development and photographic printing; woodworking; fruit pressing; grain milling; processing, tempering and finishing of metal surfaces’ (Class 40).
6 By decision of 7 October 2005, the examiner refused to register the mark sought in respect of all the goods and services concerned, on the basis of Article 7(1)(h) of Regulation No 40/94, on the ground that the mark was likely to give rise to an impression on the part of the public that there was a link between it and Canada as the maple leaf in the mark sought is an imitation of the emblem of the Canadian State.
7 That emblem, as it appears in the communication of the International Bureau of the World Intellectual Property Organisation (WIPO) of 1 February 1967 to the States which are parties to the Paris Convention and in the WIPO database, is the following:
8 On 6 December 2005, the applicant filed a notice of appeal, under Articles 57 to 62 of Regulation No 40/94, against the decision of the examiner.
9 By decision of 4 May 2006 (‘the contested decision’), notified to the applicant on 29 May 2006, the First Board of Appeal dismissed the applicant’s appeal and upheld the examiner’s decision.
10 On the basis of the evidence referred to in paragraph 7 above, the Board of Appeal found that the red-coloured maple leaf was the emblem of Canada (paragraph 11 of the contested decision). Having regard to the case-law (Case T-127/02 Concept v OHIM (ECA) [2004] ECR II-1113, paragraph 40), the Board of Appeal considered that it was necessary, in the present case, to examine whether the mark sought contained an element which could be regarded as the Canadian emblem or an imitation thereof ‘from a heraldic point of view’. The fact that the mark sought contains the word element ‘rw’ cannot preclude the application of Article 6ter(1)(a) of the Paris Convention (paragraphs 12 to 14 of the contested decision).
11 In that regard, the Board of Appeal rejected the applicant’s argument regarding the difference in colour between the maple leaf in the mark sought and the Canadian emblem. As the application for registration filed by the applicant did not specify any particular colour, the mark sought could be represented with any combination of colours, including the red colour of the Canadian emblem (paragraph 15 of the contested decision).
12 Furthermore, the Board of Appeal took the view that there was no significant difference in the design of both maple leaves. What is in issue, in both cases, is the same eleven-pointed leaf, in the shape of a star consisting of five parts on a stem, with visibly identical spacing between the points or the parts. Consequently, the relevant public sees the maple leaf in the mark sought as a heraldic imitation of the Canadian emblem (paragraph 16 of the contested decision). Therefore, registration of the mark sought may mislead the public as to the origin of the goods and services covered by that mark, having regard also to the great variety of goods and services which Canada is able to offer and promote (paragraph 17 of the contested decision).
13 According to the Board of Appeal, the alleged reputation, in Belgium, of the applicant’s mark RIVER WOODS cannot call into question the foregoing findings given that the acquisition by a trade mark of distinctiveness through use does not apply to the case referred to by Article 7(1)(h) of Regulation No 40/94 (paragraph 19 of the contested decision). The Board of Appeal also rejected the other arguments of the applicant, which maintained that it had registered a number of similar national marks, including Canadian marks, and invoked OHIM’s previous decision-making practice concerning marks containing flags or State emblems (paragraphs 20 to 22 of the contested decision).
Forms of order sought
14 The applicant claims that the Court of First Instance should:
– annul the contested decision;
– order OHIM to pay the costs.
15 OHIM contends that the Court of First Instance should:
– dismiss the action;
– order the applicant to pay the costs.
Law
16 In support of its application, the applicant relies on a single plea in law, alleging infringement of Article 7(1)(h) of Regulation No 40/94. The Court considers that it is necessary to examine that plea, first, as regards the services in Class 40 covered by the application for registration and, secondly, as regards the goods in Classes 18 and 25 covered by that application.
The services in Class 40
Arguments of the parties
17 The applicant states that, although the issue of the application of Article 6ter(1)(a) of the Paris Convention to service marks may give rise to some questions, it will expound its arguments without distinguishing between the goods and services covered by the disputed application for registration.
18 OHIM concedes that, taken literally, Article 6ter of the Paris Convention applies only to trade marks, that is to say to trade marks for goods. That provision does not therefore oblige the States party to the Convention of Paris and the States or international organisations – including the European Union – which are members of the World Trade Organisation and which must comply with Article 6ter, to refuse or to invalidate the registration as service marks or as elements of service marks, of signs including or imitating State emblems or other official signs. However, according to OHIM, the States and OHIM itself are unquestionably free to do so.
19 First, the WIPO, which administers the Paris Convention, expressly acknowledges that possibility, as is apparent from paragraph 7 of the ‘General Information on Article 6ter’, available on the WIPO internet site. Secondly, Article 1 of Regulation No 40/94 expressly refers to the protection of ‘trade mark[s] for goods or services’, while Article 7 thereof, which relates to absolute grounds for refusal, makes no distinction between trade marks for goods and service marks. Lastly, the Court itself confirmed, in ECA, paragraph 10 above, that Article 6ter of the Paris Convention is also applicable to service marks, since the mark which was at issue in that case designated both goods, in Class 9, and services, in Class 41, and the Court did not distinguish between goods and services when it held that registration of that mark had been correctly refused under Article 6ter of the Paris Convention.
20 At the hearing, OHIM argued in favour of a wide interpretation of Article 6ter of the Paris Convention which would cover service marks as well because, since the adoption of Article 6ter of the Paris Convention, that category of marks has acquired increased importance, comparable to that of trade marks for goods. Furthermore, according to OHIM, the WIPO recommends such an interpretation of the provision in question.
21 In its reply, OHIM also maintained that, in any event, the issue of the application of Article 6ter of the Paris Convention to service marks was not part of the discussions before the Court, seeing that, on the one hand, that issue had never been broached during the procedure before the departments of OHIM and, on the other hand, the applicant had not sufficiently explained the argument that that provision does not apply to service marks in its application. However, at the hearing, OHIM conceded that the Court could examine that issue, in spite of failure by the applicant to submit specific arguments in that regard, and this was noted in the minutes of the hearing.
Findings of the Court
22 It must be pointed out at the outset that, both before the departments of OHIM and before the Court, the applicant essentially relied on a single plea in law alleging infringement of Article 7(1)(h) of Regulation No 40/94, on the ground that registration of the mark applied for, which is neither the emblem of the Canadian State nor an imitation thereof ‘from a heraldic point of view’, cannot be refused pursuant to Article 6ter(1)(a) of the Paris Convention.
23 The issue of the applicability of Article 6ter(1)(a) of the Paris Convention to service marks is a preliminary matter which must be resolved in order to ensure that Regulation No 40/94 is properly applied having regard to the plea submitted by the applicant. In order to establish whether the mark applied for, in so far as it covers services, is a mark whose registration may be contrary to Article 6ter(1)(a), it is necessary to establish whether that provision applies to service marks. If that is not the case, then OHIM’s refusal to register that mark in respect of the services actually constitutes infringement of Article 7(1)(h) of Regulation No 40/94, as claimed by the applicant, without the need to examine whether the mark sought includes the State emblem of Canada or an imitation thereof ‘from a heraldic point of view’.
24 Therefore, the matters of law in the dispute brought before the Board of Appeal included the issue of the applicability of Article 6ter of the Paris Convention to service marks, even if the applicant did not put forward a view on that matter and even if the Board of Appeal omitted to rule on that aspect (Case T-57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II-287, paragraph 21). That issue may therefore be raised for the first time before the Court of First Instance (HOOLIGAN, paragraph 22).
25 For the reasons given in paragraph 23 above, that issue is also one of the matters of law in the dispute brought before the Court. Although it must rule only on the application of the parties, whose task it is to define the scope of the dispute, the Court cannot be bound merely by the arguments relied upon by the parties in support of their claims, since it would otherwise be forced, in some circumstances, to base its decisions on erroneous legal considerations (order of 27 September 2004 in Case C-470/02 P UER v M6 and Others, not published in the ECR, paragraph 69, and order of 13 June 2006 in Case C-172/05 P Mancini v Commission, not published in the ECR, paragraph 41). That is particularly so in the present case, as the applicant has voiced doubts as to the applicability of Article 6ter of the Paris Convention to service marks. Therefore, as OHIM itself conceded at the hearing, that issue is not outside of the scope of the discussions and must be examined by the Court, as that examination is necessary to deal with the single plea raised by the applicant.
26 Consequently, it must be examined whether Article 6ter of the Paris Convention also applies to service marks. In that regard, it must be stated that the wording of that provision refers only to ‘trade marks’. It is clear from Article 1(2), Article 6(1) and Article 6sexies of the Paris Convention that the Convention establishes a distinction between, on the one hand, ‘trade marks’ which, as is apparent from Article 7 thereof, are registered for goods and, on the other hand, ‘service marks’. As Article 6ter refers only to trade marks, that is to say to marks for goods, the conclusion must be that the prohibition on registration and use established by that provision does not affect service marks.
27 However, OHIM submits that the Community legislature may also prohibit the registration of marks which contain a State emblem as an element in respect of services, although it is not required to do so under Article 6ter of the Paris Convention.
28 Clearly, Article 7(1)(h) of Regulation No 40/94 merely refers to Article 6ter of the Paris Convention, by stating that ‘the following shall not be registered: trade marks which … are to be refused pursuant to Article 6ter of the Paris Convention’. As Article 6ter of the Paris Convention does not concern service marks, they cannot be marks which ‘are to be refused’ under that provision and cannot, therefore, be covered by the absolute ground for refusal established by Article 7(1)(h) of Regulation No 40/94. The mere fact, relied upon by OHIM, that Article 7 of Regulation No 40/94 makes no distinction between marks for goods and service marks is not sufficient to result in the contrary conclusion, as that distinction is established by Article 6ter of the Paris Convention to which Article 7(1)(h) of Regulation No 40/94 refers.
29 If the Community legislature had also intended to prohibit the registration of marks containing ‘armorial bearings, flags, and other State emblems’ in respect of services, it would not merely have referred to Article 6ter of the Paris Convention, but would have inserted in the wording of Article 7 of Regulation No 40/94 a prohibition against the registration, either as a Community trade mark or as an element of such a mark, ‘of armorial bearings, flags, and other State emblems … and any imitation from a heraldic point of view’ without distinguishing, implicitly but necessarily, by the mere fact of referring to Article 6ter of the Paris Convention, between marks for goods and service marks.
30 The above considerations cannot be invalidated by the judgment in ECA, paragraph 10 above, relied upon by OHIM, because, in that judgment, the Court did not examine the issue of the applicability of Article 6ter of the Paris Convention to service marks, an issue which was, moreover, not raised by the parties in that case.
31 Lastly, OHIM’s argument that Article 6ter of the Paris Convention should be interpreted widely must be rejected. First, the only relevant WIPO document put forward by OHIM (see paragraph 19 above) merely states that Article 6ter of the Paris Convention ‘does not oblige States party to the Paris Convention to refuse or to invalidate the registration, and to prohibit the use of State emblems or other official signs as a service mark or as an element of a service mark. States are nevertheless free to do so …’. Thus, contrary to OHIM’s submission, that document by no means militates in favour of a wide interpretation of that provision. Furthermore, it must be pointed out that it was precisely in order to extend to service marks the protection granted by the Paris Convention to marks for goods that a specific provision was inserted in Article 16 of the Trade Mark Law Treaty, adopted at Geneva on 27 October 1994. However, that Treaty, which was signed by the European Community on 30 June 1995, was not ratified by it.
32 Secondly and above all, it may be assumed that, when it adopted Regulation No 40/94 relatively recently, the Community legislature was aware of the importance, in modern commerce, of service marks and could, therefore, also have extended the protection granted to State emblems by Article 6ter of the Paris Convention to that category of marks. As the legislature did not see fit to extend the scope of the relevant provisions in such a way, it is not for the Community judicature to take the place of the Community legislature and apply an interpretation contra legem of those provisions, whose meaning is in no way ambiguous.
33 It follows from all of the above that in refusing to register the mark sought for the services in Class 40, the contested decision infringed Article 7(1)(h) of Regulation No 40/94 and must be annulled.
The goods in Classes 18 and 25
Arguments of the parties
34 The applicant refers, at the outset, to the case-law of the Court relating to the interpretation of Article 6ter(1)(a) of the Paris Convention (ECA, paragraph 10 above, paragraph 39) and concludes from that that the registration of a mark which, like the mark applied for, does not undermine the right of the State to control the use of the symbols of its sovereignty and cannot mislead the public as to the origin of the goods and services for which it is used cannot be refused on the basis of that provision.
35 First, the applicant submits that the Board of Appeal erred in dismissing the presence of the word element ‘rw’ in the mark applied for as irrelevant. According to the applicant, regard must always be had to the perception of the average consumer and, more particularly, to the overall impression that the mark has on him (see, by analogy, Case C-404/02 Nichols [2004] ECR I-8499, paragraph 35; see also, ECA, paragraph 10 above, paragraph 64). The average consumer normally perceives a mark as a whole (Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23).
36 In the present case, the word element ‘rw’, an abbreviation of the applicant’s principal mark RIVER WOODS, forms a whole with the figurative element of the mark applied for. Moreover, account must be taken of the way in which that mark is perceived by the average consumer in the normal circumstances in which it is used. In its application, the applicant reproduces images, which, in its opinion, give an idea of such a perception. The taking into account of the overall impression of the mark sought, as perceived in the normal circumstances in which it is used, excludes any possibility of the application of Article 7(1)(h) of Regulation No 40/94 in the present case.
37 Secondly, the applicant submits that that the Board of Appeal also erred in finding, in paragraph 16 of the contested decision, that, as regards the maple leaf in the mark sought, ‘the relevant public may have the impression that it is a heraldic imitation of the Canadian emblem’.
38 The applicant states that the protection granted to State emblems by Article 6ter(1)(a) of the Paris Convention covers similarities in a well-defined area, namely imitations ‘from a heraldic point of view’. The applicant submits in that regard that ‘this qualification effectively narrows down the scope of the impermissible imitation beyond what would normally be considered unacceptable in trademark law. As State emblems frequently comprise common symbols, such as a lion, an eagle or the sun, imitations are forbidden only if they reproduce the heraldic characteristics of the State sign concerned. In consequence, the symbol as such remains free and may be used in the composition of trademarks’ (Acts of the 1925 Revision Conference of The Hague, p. 245). The applicant also refers to the deliberations at the Conference of Lisbon, held in 1958 for the purpose of revising the Paris Convention, concerning the question whether the confinement of the protection granted by Article 6ter(1)(a) to imitations ‘from a heraldic point of view’ should be abandoned (Acts of the Conference of Lisbon, pp. 129, 131 and 139-140).
39 Furthermore, the applicant submits that, except in exceptional circumstances, Article 6ter of the Paris Convention does not seek to protect an emblem when it is not used as an emblem. Like marks or any other distinctive sign, an emblem may be more or less commonplace in nature. According to the applicant, that has a bearing on the protection granted to the emblem in question by Article 6ter(1)(a) of the Paris Convention. An emblem which is of a more commonplace nature and exhibits only few marked heraldic characteristics thus enjoys very limited protection.
40 In the present case, the Canadian Government notified to the WIPO, as a State emblem, the same red-coloured maple leaf, which is part of the Canadian national flag. According to the applicant, the red colour of that leaf is an element of crucial importance as shown by, first, the information, under the heading ‘type’ in the entry for that emblem in the WIPO database, that the emblem in question is in ‘colour’, secondly, the graphic representation of the same emblem in that database and, thirdly, the fact that the shade of red used is specific and does not correspond to a colour which is very common for a maple leaf. The final element distinguishes the Canadian emblem from the representation which comes naturally to mind when one thinks of a maple leaf.
41 According to the applicant, it is self-evident that Article 6ter of the Paris Convention is not designed to allow the monopolisation, by Canada, of the natural representation of a maple leaf, particularly as that tree does not grow only in Canada. The mark sought contains only a black-coloured natural representation of a maple leaf. Furthermore, compared to the Canadian emblem from a graphic point of view, the maple leaf in the mark sought is different as regards the breadth of the stem. Lastly, in the perception of the average consumer, who will be confronted with the mark sought in the normal circumstances in which it is used, the maple leaf in that mark forms a whole with the distinctive and dominant word element ‘rw’ and does not have heraldic characteristics.
42 In those circumstances, it is impossible to regard the mark sought as an imitation of the Canadian emblem ‘from a heraldic point of view’. The registration of that mark would not adversely affect either the Canadian emblem itself or the monitoring of the use of that emblem by the Canadian State.
43 Thirdly, the applicant disputes the finding in the contested decision (paragraph 17) that the registration of the mark sought may mislead the public as to the origin of the goods and services designated by that mark.
44 The applicant submits that, in order to assess the likelihood of error as to the origin of the goods or services covered by the mark applied for, regard must be had, first, to the perception of the average consumer and, secondly, to the goods or services in question. Furthermore, the link, possibly suggested by the mark sought between the goods and services it covers and a country, must be sufficiently direct and concrete to mislead the average consumer (see, by analogy, Case T-334/03 Deutsche Post EURO EXPRESS v OHIM (EUROPREMIUM) [2005] ECR II-65, paragraphs 24, 25 and 41).
45 In the present case, the mark applied for, taken as a whole, is not likely to mislead the average consumer. The reference made by the contested decision to the great variety of goods and services which Canada, one of the largest global economies, is able to offer and promote is unconvincing as such considerations are also valid in respect of many other countries. The existence of a sufficiently direct and concrete link between the goods and services covered by the mark sought and the country in question, namely Canada, has not been established in the present case.
46 On the contrary, faced with the mark sought, in relation to the goods or services it covers, the consumer perceives in that mark a word element which forms a whole with an imaginative decorative element having, at most, a very slight geographical connotation. That connotation is much less apparent than in the case of other marks, such as for example the mark Mont Blanc, registered for pens or for cream. In those cases, the consumer does not perceive any link between the origin of the pen or cream concerned and the Mont Blanc region. Moreover, the use, in the clothing sector, of signs of the same kind as that of the mark applied for is frequent.
47 Fourthly, the applicant submits that the Board of Appeal erred in ruling out, as of no relevance in the present case, an examination of the reputation of the applicant’s mark RIVER WOODS and of the use, by the applicant, of derived marks, such as the mark applied for.
48 From a factual point of view, the applicant submits a number of documents, annexed to the application, which, in its opinion, show that it has already widely used those derived marks, inter alia the mark applied for, and that, furthermore, its mark RIVER WOODS is one of the most well-known marks in Belgium.
49 From a legal point of view, the applicant states that its argument, which was put forward before the Board of Appeal, did not relate to the acquisition of distinctive character through use. The applicant concedes that such a view is out of place given the wording of Article 6ter of the Paris Convention.
50 Nevertheless, the applicant takes the view that, on account of the widespread use of those derived marks and the reputation of its mark RIVER WOODS, the consumer who is faced with the mark applied for will under no circumstances think that the goods or services covered by that mark come from Canada or enjoy any official recognition on the part of that State. Therefore, the use and reputation, referred to above, are relevant factors in an assessment of the absolute ground for refusal referred to in Article 7(1)(h) of Regulation No 40/94 and of Article 6ter of the Paris Convention, all the more so because there were no objections made to the use of the mark RIVER WOODS or the other derived marks of the applicant by any State and international organisation.
51 Lastly, the applicant submits that the Board of Appeal did not sufficiently take into consideration the many other earlier national and Community marks containing a flag or a State emblem which were submitted by the applicant before OHIM. It is true that each mark must be assessed on the basis of its own characteristics and not on the basis of a previous practice on the part of OHIM or on the basis of earlier registrations in other European or non-European countries. However, such details may be relevant factors as regards the possibility of registering a sign as a Community trade mark.
52 That is particularly so where the other registrations submitted illustrate the application of provisions of international treaties, such as those of the Paris Convention, or the practice in the country of origin of the emblem concerned. That country is the best placed to define the scope of the protection of its own emblem and is, moreover, behind its communication as an emblem covered by Article 6ter of the Paris Convention. Therefore, it is difficult to justify a perception of the protection granted to the national emblem which is more stringent outside of that country than within it. In the present case, as OHIM in a sense represents Canada, it must take into consideration Canadian practice as regards the protection of the emblem concerned.
53 In that regard, the applicant maintains that it applied for registration, as a Canadian mark, of a mark identical to the mark applied for. Registration of that mark was not refused on the basis of an absolute ground for refusal, but was later abandoned on other grounds. To accept the registration of the mark in question, the Canadian Intellectual Property Office asked only that the applicant accept the following disclaimer text: ‘The right to the exclusive use of the representation of the eleven-point maple leaf is disclaimed apart from the trade mark.’ That view on the part of the Canadian Intellectual Property Office merely reflects the principle that it is the ‘overall impression’ of the mark and its ‘perception as a whole’ that must be taken into consideration.
54 Furthermore, the applicant registered two other marks at the Canadian Intellectual Property Office, both including a maple leaf, which was, in the first case, covered with a motif inspired by the United States flag and, in the second case, contained the group of letters ‘rw’ within it. Those registrations were preceded by a disclaimer stated in the same terms as that mentioned in the preceding paragraph. Those two marks as well as a mark identical to the mark applied for were also registered in the United States.
55 However, OHIM did not make registration of the mark applied for subject to the condition that the applicant should accept a similar disclaimer, although it should have provided for such a possibility as regards marks including elements borrowed from the emblems and symbols of a State, which may give rise to doubt as regards the extent to which they are protected.
56 Furthermore, the applicant submits that OHIM has itself registered other marks belonging to the applicant, which in view of the contested decision, could have been refused. In that regard, the applicant reproduces in its application three Community trade marks of which it is the proprietor. The first, registered under the number 2793479, includes a maple leaf with the group of letters ‘rw’ inside it. The second, registered under the number 2788115 includes, inter alia, a maple leaf covered with a motif which reproduces the design of the United States flag. The third includes, among other elements, a flag similar to that of the United States. Furthermore, the applicant observes that the mark applied for as well as the three marks referred to above have already been accepted by the Benelux Intellectual Property Office as well as by other national trade mark offices.
57 Lastly, the applicant submits that OHIM’s refusal to register the mark applied for is not consistent with OHIM’s practice concerning marks which include the representation of a maple leaf or other State emblem. The applicant reproduces, in its application, 29 signs including maple leaves or flags and other State emblems and provides evidence that all those signs have been registered as Community trade marks.
58 OHIM disputes the applicant’s arguments.
Findings of the Court
59 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 (ECA, paragraph 10 above, paragraph 39). State emblems 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’ (ECA, paragraph 10 above, paragraph 40).
60 Accordingly, in the present case, the fact that the mark also contains the word element ‘rw’ does not, in itself, preclude application of that article, contrary to what the applicant claims (see, to that effect, ECA, paragraph 10 above, paragraph 41).
61 In that context, the applicant errs in referring to Nichols, paragraph 35 above, paragraph 35. It must be stated at the outset that paragraph 35 of that judgment, which is relied on by the applicant, is of no relevance. In any event, it must be pointed out that that judgment concerns the interpretation of Article 3(1)(a) and (b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1). That is a provision the wording of which is similar to that of Article 7(1)(a) and (b) of Regulation No 40/94, which provides that the following shall not be registered as Community trade marks: first, signs which do not conform to the requirements of Article 4 thereof, namely those of which a Community trade mark may not consist, and, secondly, trade marks which are devoid of any distinctive character.
62 Irrespective of the incorrect reference made by the applicant, it is true that it is settled case-law that, as regards a compound mark, any distinctive character may be assessed, in part, in respect of each of the terms or elements, taken separately, but that assessment must, in any event, be based on the overall perception of that trade mark by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, present such character. The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present such character (see Case C‑37/03 P BioID v OHIM [2005] ECR I-7975, paragraph 29, and the case-law cited).
63 It is therefore apparent from that case-law that the mere fact that an element of a compound mark is devoid of distinctive character does not preclude registration of the mark in question as a Community trade mark, if the mark, perceived as a whole, has such character.
64 By contrast, the same is not true as regards the absolute ground for refusal referred to in Article 7(1)(h) of Regulation No 40/94, which refers to Article 6ter of the Paris Convention. Article 6ter prohibits not only the registration of marks which consist solely of a State emblem or an imitation thereof ‘from a heraldic point of view’, but also the registration or the use of a State emblem or an imitation of such an emblem ‘from a heraldic point of view’ as an element of a compound mark.
65 Therefore, for the purpose of assessing a complex mark from the perspective of that provision, regard must be had to each of the elements of that mark and it is sufficient that one of them is a State emblem or an imitation thereof ‘from a heraldic point of view’ to preclude registration of the mark concerned, irrespective of its overall perception.
66 The applicant’s reference to ECA, paragraph 10 above, paragraph 64, is also incorrect. First, in paragraph 64 of that judgment, the Court merely reiterated the wording of the decision of the Board of Appeal, which was contested in that case. Secondly, that paragraph is in the part of the judgment which deals with the derogation established by Article 6ter(1)(c) of the Paris Convention and concerns, in particular, the relevant public’s perception as to the existence of a connection between the proprietor of the mark applied for and the international organisation whose emblem appears in that mark. That paragraph of ECA, paragraph 10 above, cannot therefore be interpreted in favour of the registration, as a Community trade mark, of a mark including other elements as well as a State emblem or the emblem of an international organisation. That argument was expressly rejected by the judgment in ECA (see paragraph 59 above).
67 Therefore, in the present case, it must be examined whether the maple leaf in the mark applied for will be perceived as the emblem of the Canadian State or as an imitation thereof ‘from a heraldic point of view’. The applicant maintains that that is not the case and adduces, first, the difference in colour between the maple leaf in the mark applied for and that which constitutes the emblem of the Canadian State and, secondly, the graphic differences between those leaves as regards the stem.
68 As regards the difference in colour, given that the application for registration does not mention the colours of the mark sought, that mark could be depicted in any combination of colours and thus equally with a red-coloured maple leaf. Therefore, the fact that the maple leaf in the Canadian emblem is red in colour is irrelevant in the present case (see, to that effect, ECA, paragraph 10 above, paragraph 45). Moreover, it should be noted that the Canadian emblem may, like the maple leaf in the mark applied for, be reproduced in black and white (see, to that effect, ECA, paragraph 10 above, paragraph 46).
69 The contested decision was therefore correct when it rejected, in paragraph 15, the applicant’s argument concerning the difference in colour between the two maple leaves.
70 As regards the graphic differences between the stem of the two leaves, it is necessary for the purpose of establishing whether a mark is contrary to the provisions of Article 6ter(1)(a) of the Paris Convention, to compare that mark and the State emblem concerned ‘from a heraldic point of view’.
71 In that regard, it must be pointed out that armorial bearings and other heraldic emblems are drawn on the basis of a relatively simple description which contains particulars regarding the layout and background colour and lists the different elements (such as a lion, an eagle, a flower, etc) constituting the emblem with information as to their colour and position within the emblem. That heraldic description does not, by contrast, include detailed particulars regarding the design of the emblem and the specific elements which constitute it, with the result that a number of artistic interpretations of one and the same emblem on the basis of the same heraldic description are possible. Although there may be differences in detail between each of those interpretations, the fact remains that they will all be imitations ‘from a heraldic point of view’ of the emblem concerned.
72 Consequently, when making a comparison ‘from a heraldic point of view’ within the meaning of Article 6ter of the Paris Convention, regard must be had to the heraldic description of the emblem concerned and not to a possible geometric description of the same emblem, which is by nature much more detailed (ECA, paragraph 10 above, paragraph 44).
73 In the present case, Canada notified a representation of the maple leaf which constitutes its State emblem (see paragraph 7 above) to the International Bureau of WIPO without any accompanying description. It is obvious that a heraldic description of that emblem would include only the information that it is a red‑coloured maple leaf without providing further details in respect of the specific design, as such details are not necessary or customary for a heraldic description.
74 It is true that a comparison of the maple leaf notified as the emblem of the State of Canada and the maple leaf in the mark applied for reveals some differences in design regarding the stem of both leaves, as the two serrations on either side of the central third of the leaf are deeper in the case of the maple leaf in the Canadian emblem. However, a detail such as the exact depth of those serrations would never appear in the heraldic description of the emblem in question but, if need be, in a much more detailed geometric description, which is, however, of no relevance to the comparison ‘from a heraldic point of view’.
75 It follows that the Board of Appeal was correct to conclude, in paragraph 16 of the contested decision, that, in spite of the ‘slight difference between the width of the stems’ of the two leaves, ‘the relevant public in the Community will perceive the [mark applied for] essentially as an imitation of the Canadian emblem’. Although that public is not defined in the contested decision, it can only be the public at large, at which the articles of everyday consumption covered by the mark applied for are directed. That public, made up of average consumers, who, according to the case-law (Case T‑320/03 Citicorp v OHIM (LIVE RICHLY) [2005] ECR II-3411, paragraph 69), are deemed to be reasonably well informed and reasonably observant and circumspect, does not pay particular attention to the details of emblems and marks, such as, in the present case, the difference in width of the stem of the two maple leaves in question.
76 The applicant also disputes the finding in paragraph 17 of the contested decision that ‘the registration of the mark applied for may mislead the public as to the origin of the goods and services to which that mark will be applied’.
77 In that regard, it must be pointed out that the application of Article 6ter(1)(a) of the Paris Convention is not subject to the condition that there be a possibility of error on the part of the public concerned as regards the origin of the goods designated by the mark applied for or as regards the existence of a connection between the proprietor of that mark and the State whose emblem appears in that mark.
78 The second sentence of Article 6ter(1)(c), which refers to such a connection, relates only to the emblems and other signs of the international intergovernmental organisations referred to in Article 6ter(1)(b) and not to the emblems and other State signs referred to in Article 6ter(1)(a). ‘[T]he said provisions’, referred to in the second sentence of Article 6ter(1)(c), are clearly the provisions referred to in the first sentence of Article 6ter(1)(c), namely the ‘the provisions of … (b)’ relating to the emblems of international organisations. That reading is borne out by the reference, on two occasions, to ‘the organisation’ concerned in the wording of the second sentence of Article 6ter(1)(c).
79 As regards the reference in the second sentence of Article 6ter(1)(c) to ‘the … registration referred to in … (a), above’, it seeks merely to specify that only the registration or the use, ‘either as trademarks or as elements of trademarks’, of the emblems of the organisations mentioned in (b) ‘and any imitation from a heraldic point of view’ is concerned by the provision in Article 6ter(1)(c). By contrast, that mere reference cannot be interpreted in such a way as to extend the scope of the derogation provided for in subparagraph (c) to State emblems also, as such an extension is contrary to the rest of the clear wording of Article 6ter(1)(c).
80 It is apparent from all of the foregoing that paragraphs 17 and 18 of the contested decision, relating to the possibility that the relevant public might make a connection between the applicant and Canada, have no impact on the operative part of that decision, as that operative part is, to the requisite legal standard, based on the considerations in paragraphs 14 to 16 of the contested decision, according to which the mark applied for includes an imitation ‘from a heraldic point of view’ of the emblem of the Canadian State. The applicant’s argument that the Board of Appeal’s finding in paragraph 17 of the contested decision was incorrect must therefore be rejected as irrelevant.
81 The same is true of the argument relating to failure to take into account the alleged reputation of the applicant’s mark RIVER WOODS. It is apparent from the explanations given by the applicant before the Court (see paragraph 50 above) in that regard that the applicant invoked that alleged reputation against the argument that the relevant public, when faced with the mark applied for, will make a connection between the applicant and Canada. As has just been stated, the existence of such a connection, even if it were proved, is of no relevance to this case.
82 Lastly, the applicant’s arguments relating to the alleged registrations of other national or Community marks, which are identical to or comparable with the mark applied for or, more generally, include representations of flags or other State emblems, are also irrelevant.
83 As regards the practice of OHIM itself, it must be pointed out that decisions concerning registration of a sign as a Community mark which the Boards of Appeal are called on to take under Regulation No 40/94 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the question whether a sign may be registered as a Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Community Courts, and not on the basis of previous practice in the decisions of the Boards of Appeal (see ECA, paragraph 10 above, paragraph 71, and the case-law cited).
84 With respect to the earlier national registrations, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system. Accordingly, the registrability of a sign as a Community trade mark is to be assessed on the basis of the relevant Community legislation alone. Consequently, neither OHIM nor, as the case may be, the Community Courts are bound by decisions adopted in any Member State, or indeed a third country, finding a sign to be registrable as a national trade mark. Registrations already made in the Member States are therefore a factor which may only be taken into consideration, without being given decisive weight, for the purposes of registering a Community trade mark. Those considerations apply a fortiori to the registration of marks other than that sought in the present case (see ECA, paragraph 10 above, paragraph 70, and the case-law cited).
85 As regards, in particular, the allegedly less restrictive practice of the Canadian Intellectual Property Office, clearly the applicant has neither proved nor even stated unequivocally that it obtained authorisation from the competent Canadian authorities to register the mark applied for. The applicant’s contention that it filed an application in Canada for registration of a mark identical to the mark applied for, which was subsequently withdrawn on grounds unconnected with Article 6ter of the Paris Convention, by no means establishes that there was such an authorisation. In the absence of final registration in Canada of the mark applied for, it is by no means certain that the Canadian authorities did not raise, at a later stage in the registration procedure, an objection on account of the presence, in the mark applied for, of the same maple leaf as that which constitutes the emblem of the Canadian State.
86 It follows from all of the above that the Board of Appeal did not infringe the provisions of Article 7(1)(h) of Regulation No 40/94 and of Article 6ter(1)(a) of the Paris Convention in refusing to register the mark applied for in respect of the goods in Classes 18 and 25. Consequently, the action must be dismissed as unfounded in so far as seeks to challenge the refusal to register the mark applied for in respect of the goods in those two Classes.
Costs
87 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Under Article 87(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, or where the circumstances are exceptional, the Court of First Instance may order that the costs be shared or that each party bear its own costs.
88 In the present case, both the applicant and OHIM have succeeded on some and failed on other heads. In those circumstances, each party must be ordered to bear its own costs.
On those grounds,
THE COURT OF FIRST INSTANCE (Fifth Chamber)
hereby:
1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 4 May 2006 (Case R 1463/2005-1) in so far as it relates to the registration of the mark applied for in respect of the services in Class 40 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponding to the following description: ‘Tailoring; taxidermy; bookbinding; dressing, processing and finishing of skins, leather, furs and textiles; photographic film development and photographic printing; woodworking; fruit pressing; grain milling; processing, tempering and finishing of metal surfaces’;
2. Dismisses the action as to the remainder;
3. Orders each of the parties to bear its own costs.
Delivered in open court in Luxembourg on 28 February 2008.