Case T‑3/12

Heinrich Kreyenberg

v

Office for Harmonisation in the Internal Market
(Trade Marks and Designs) (OHIM)

(Community trade mark — Invalidity procedure — Community figurative trade mark MEMBER OF €e euro experts — Absolute ground of refusal — Emblems of the Union and its areas of activity — Euro symbol — Article 7(1)(i) of Regulation (EC) No 207/2009)

Summary — Judgment of the General Court (Third Chamber), 10 July 2013

1.      Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Trade marks to be refused under the Paris Convention — Protection of emblems of States and international organisations — Imitation from the heraldic point of view — Condition of the protection of the emblems of international organisations

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

2.      Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks which include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention — Conditions for protection

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

3.      Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Marks which include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention — Extent of protection — Euro symbol

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

4.      Community trade mark — Surrender, revocation and invalidity — Registration contrary to Article 7(1)(i) of Regulation No 207/2009 — Figurative mark MEMBER OF €e euro experts

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

1.      Article 7(1)(h) of Regulation No 207/2009 on the Community trade mark, read in conjunction with Article 6ter of the Paris Convention to which it refers, protects two categories of emblems.

In the first place, that provision prohibits the registration of State emblems, not only as trade marks, but also as elements of trade marks, regardless of whether the emblems are reproduced identically or are merely the object of an imitation from the heraldic point of view. To determine whether a trade mark comprises an imitation of an emblem from the heraldic point of view, it is necessary to consider the heraldic description of the emblem. However, any difference between the trade mark and the emblem detected by a specialist in heraldic art will not necessarily be perceived by the average consumer who, in spite of differences in certain heraldic details, may see in the mark an imitation of the emblem in question.

In the second place, Article 7(1)(h) of Regulation No 207/2009 prohibits the registration of a trade mark comprising a reproduction or imitation from the heraldic point of view of an emblem of an international intergovernmental organisation when it has been communicated to the States which are parties to the Paris Convention through the intermediary of the International Bureau of the World Intellectual Property Organisation. However, that prohibition applies only in the case referred to in Article 6ter (1)(c) of the Paris Convention, that is to say, when, taken as a whole, the trade mark concerned 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, or misleads the public as to the existence of such a connection.

(see paras 28-31)

2.      Article 7(1)(i) of Regulation No 207/2009 on the Community trade mark must be regarded as prohibiting the registration, as trade marks or elements of trade marks, of emblems other than those referred to by Article 7(1)(h) of the same regulation, whether those emblems are reproduced identically or merely imitated.

In the first place, Article 7(1)(i) of Regulation No 207/2009 does not expressly restrict the scope of the prohibition to trade marks reproducing an emblem identically. The wording of that provision allows it to be interpreted as prohibiting not only identical reproduction but also the imitation of an emblem by a trade mark. If that interpretation were not accepted, the practical effect of Article 7(1)(i) of Regulation No 207/2009 would be much diminished: it would be sufficient for an emblem to have been slightly modified, even in an imperceptible way for a person not a specialist in heraldic art, for it to be registered as a trade mark or element of a mark.

Secondly, the Union legislature in no way specified that the registration of only a trade mark consisting exclusively of an emblem could be prohibited under Article 7(1)(i) of Regulation No 207/2009. By using the verb ‘include’ in that provision, the legislature indicated that, in the conditions laid down by that provision, the use of emblems other than those referred to in that provision was prohibited, not only as a trade mark, but also as an element of a mark. That is consistent with the practical effect of that provision, which aims to provide the most complete protection for the emblems to which it refers.

However, that prohibition is not unconditional.

The emblems of international intergovernmental organisations that have been duly communicated to the States which are parties to the Paris Convention are protected by Article 7(1)(h) of Regulation No 207/2009 when, taken as a whole, the trade mark concerned 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. If the protection conferred by Article 7(1)(i) of Regulation No 207/2009 could take effect even where the latter condition is not fulfilled, the protection would be superior to that conferred by Article 7(1)(h) on the emblems of international intergovernmental organisations that have been duly communicated to the States which are parties to the Paris Convention.

There is nothing to indicate that the Union legislature wished to confer upon emblems covered by Article 7(1)(i) of Regulation No 207/2009 greater protection than that for the emblems referred to by Article 7(1)(h), so that the extent of the protection conferred by Article 7(1)(i) cannot be greater than that of the protection conferred by Article 7(1)(h).

Therefore, the protection conferred upon the emblems referred to in Article 7(1)(i) of Regulation No 207/2009 is intended to apply only where, taken as a whole, the trade mark containing the emblem 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 emblem in question relates.

(see paras 34-40)

3.      Article 7(1)(i) of Regulation No 207/2009 protects emblems other than those referred to in Article 7(1) (h), that is to say, emblems other than those of states and those of international intergovernmental organisations duly communicated to the States which are parties to the Paris Convention, provided that the emblems are of particular public interest. In view of the broad wording of that provision, it must be borne in mind that it protects not only the emblems of international intergovernmental organisations which have not been duly communicated to the States which are parties to the Paris Convention, but also emblems which, while not designating all the activities of an international intergovernmental organisation, nevertheless have a special connection with one of those activities. The fact that an emblem is connected with one of the activities of an international intergovernmental organisation is sufficient to show that a public interest attaches to its protection.

It must therefore be held that Article 7(1)(i) of Regulation No 207/2009 protects, in particular, not only emblems of the European Union as such, subject to compliance with the other conditions laid down by that provision, but also emblems that merely relate to one of the Union’s areas of activity.

Furthermore, Article 7(2) of Regulation No 207/2009 states that paragraph 1 of that article is applicable notwithstanding that the grounds of non-registrability obtain in only part of the European Union. Therefore it is to be understood that the public interest referred to in Article 7(1)(i) need not necessarily exist throughout the Union. It is sufficient if it exists in part of it. It must therefore be concluded that Article 7(1)(i) protects any emblem which, without designating the Union as whole, relates to an activity of the Union, even if that activity concerns only certain Member States of the European Union.

On that point, Article 3(4) TFEU provides that ‘the Union shall establish an economic and monetary union whose currency is the euro’. The euro symbol is therefore undoubtedly the symbol of an activity of the European Union. Consequently the mere fact that certain Member States of the European Union do not have the euro as their currency does not justify the conclusion that the euro symbol, which is not shown by any document in the file to have been duly communicated to the States which are parties to the Paris Convention, is excluded from the scope of the protection conferred by Article 7(1)(i) of Regulation No 207/2009.

(see paras 44-47)

4.      See the text of the decision.

(see paras 107-114)