Opinion of the Advocate General — ECLI:EU:C:2009:299
Date: 2009-05-12
Language of the case: French
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Action for annulment - unfounded;Appeal - unfounded;Appeal - inadmissible;Appeal - successful
Origin: Belgium

Summary of the Judgment 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 (Council Regulation No 40/94, Art. 7(1)(h)) 2. 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 (Council Regulation No 40/94, Art. 7(1)(h)) 1. The prohibition of the imitation of an emblem, laid down in Article 6 ter (1)(a) of the Paris Convention, applies only to imitations of it from a heraldic perspective, that is to say, those which contain heraldic connotations which distinguish the emblem from other signs. Thus, the protection against any imitation from a heraldic point of view refers not to the image as such, but to its heraldic expression. It is therefore necessary, in order to determine whether the trade mark contains an imitation from a heraldic point of view, to consider the heraldic description of the emblem at issue. A trade mark which does not exactly reproduce a State emblem can nevertheless be covered by Article 6 ter (1)(a) of the Paris Convention, where it is perceived by the relevant public as imitating such an emblem. In this respect, a difference detected by a specialist in heraldic art between the trade mark applied for and the State emblem will not necessarily be perceived by the average consumer who, in spite of differences at the level of certain heraldic details, can see in the trade mark an imitation of the emblem in question. Furthermore, the heraldic description of the emblem, which must be referred to in order to determine whether there is an imitation from a heraldic point of view within the meaning of that provision, normally contains only certain descriptive elements, and does not necessarily concern itself with particular features of the artistic interpretation. (see paras 48, 50-52) 2. The Paris Convention provides for a minimum level of protection for elements falling within its scope, while leaving the Member States party to the Convention free to extend the scope of the protection. Consequently, although the Paris Convention did not oblige the States party to it to register service marks and the provisions of the Convention did not apply to those service marks, those States are nevertheless free to provide for such an application unilaterally. The body of relevant Community law provisions do not distinguish, in principle, between trade marks for goods and service marks. Moreover, the mere fact that some provisions of Regulation No 40/94, such as Article 7(1)(e), (j) and (k), restrict their scope, so far as absolute grounds for refusal of registration are concerned, since the restriction laid down in those provisions is limited to certain types of goods, cannot call into question the finding that the provisions of that regulation as a whole apply without distinction to trade marks for goods and service marks. Such a finding must apply to Article 7(1)(h) of Regulation No 40/94, which does not contain any express restriction of the marks covered by it. That interpretation is not affected by the mere fact that that provision in question refers to the Paris Convention. That reference is intended solely to determine the type of signs which must be refused registration and not to restrict the scope of the provision. Consequently, as in the case of the majority of absolute grounds for refusal set out in Article 7(1) of Regulation No 40/94, registration of a trade mark must be refused, whether the application concerns goods or services, where one of the grounds for refusal listed in Article 6 ter of the Paris Convention applies to it. That interpretation of Article 7(1)(h) of Regulation No 40/94 is, furthermore, supported by Article 7(1)(i), the scope of application of which is analogous to that of subparagraph (h), namely trade marks which include badges, emblems or escutcheons other than those covered by Article 6 ter of the Paris Convention. Article 7(1)(i) of Regulation No 40/94 applies without distinction to trade marks for goods and service marks, so that registration could be refused, for example, to a service mark containing a badge. There is no reason why registration should be refused to a service mark containing a badge and not a service mark containing a State flag. If the Community legislature wished to grant such protection to badges and escutcheons, it should be assumed that, a fortiori, it also intended to grant at least an equivalent level of protection to armorial bearings, flags and other emblems of States or international organisations. Thus, it seems unlikely that the Community legislature would have allowed a service provider to use a mark containing a national flag when, at the same time, it would have prohibited that use in respect of badges such as those of a sports association, for example. (see paras 72, 75-80)