General Court: no absolute protection for symbols of particular public interest

Kat friend Jan Jacobi reports on a consequential decision by the General Court on official symbols.

Official symbols are generally protected under articles 7(1)(h) and 7(1)(i) EUTMR. Article 7(1)(h) applies to symbols that are registered with and listed by WIPO, such as flags, state emblems and hallmarks. Article 7(1)(i) applies to signs that are of a particular public interest, but which have not been registered with WIPO. An example of such a sign is the euro sign (€).

In a recent decision of 1 December 2021, the General Court (10th Chamber) gives an insightful analysis of the rationale behind the two articles and whether a different scope of protection applies to them.

Background

In 2011, Austrian applicant Gabriele Schmid successfully applied for a figurative mark, which displays the official EU symbol for protected geographical indications (‘the PGI symbol’) within the meaning of Regulation (EU) 1151/2012. The PGI symbol is depicted below.

The mark of Schmid was applied for Class 29 of the Nice Classification with the description “pumpkin seed oil, corresponding to the protected geographical indication Styrian pumpkin seed oil”. As seen in the depiction below, the mark displays the PGI symbol in full.

In 2019, the Cancellation Division of EUIPO declared the mark of Schmid invalid on the basis of article 7(1)(i) EUTMR, following an application for cancellation filed by the Austrian Landeskammer für Land- und Forstwirtschaft in Steiermark (Regional Chamber of Agriculture and Forestry of Styria, Austria). The case was then brought by Schmid before the (fourth) Board of Appeal (‘BoA’).

In assessing whether the mark of Schmid could be cancelled on the basis of article 7(1)(i) EUTMR, the BoA firstly examined if the PGI symbol was a symbol of particular public interest. According to established case law, particular public interest exists when a symbol has a distinct link with one of the activities carried out by an international intergovernmental organisation (IGO). Considering that the PGI Symbol is used by the European Union for goods that correspond to a protected geographical indication, the BoA concluded that a link exists between the PGI Symbol and an IGO. Thus, it is of particular public interest.

The BoA secondly assessed whether the mark of Schmid depicted the PGI Symbol and, if so, whether Schmid had received permission by the relevant authority (in this case, the European Commission) to register the PGI Symbol as part of her application. In that respect, the BoA found that the mark of Schmid depicts the PGI Symbol in full, and that the European Commission neither directly consented thereto, nor allowed, such use on the basis of Regulation 1151/2012.

Having established that Schmid registered a symbol of particular public interest without authorization, the BoA ruled that the mark should be cancelled on the basis of article 7(1)(i) EUTMR. It therefore dismissed the appeal, resulting in the case being brought by Schmid before the General Court

General Court

Before the General Court, Schmid alleged that, similar to article 7(1)(h), article 7(1)(i) EUTMR can only be relied upon if the use of the protected symbol can mislead the public in thinking there is connection between the user of the symbol and the proprietor of the mark using (part of) that symbol. As the BoA had failed to establish such connection, Schmid argued that the General Court should annul the BoA's decision.

In its decision of 1 December 2021, the General Court analysed the differences between the two articles. To successfully invoke protection under article 7(1)(h) EUTMR, the General Court held that the disputed mark must consist of or contain an identical reproduction of the official sign and, taken as a whole, misleadingly suggest a connection with the authority using the official sign. These cumulative conditions stem from article 6ter of the Paris Convention, which article 7(1)(h) EUTMR incorporates.

Given that article 7(1)(i) EUTMR appears to not expressively require a misleading connection, the protection thereunder would in principle be broader. Per the General Court, this could not have been the intent of the EU legislature, as follows:

'However, there is nothing to indicate that the EU legislature wished to confer upon badges, emblems or escutcheons covered by Article 7(1)(i) of Regulation No 207/2009 greater protection than that for the badges, emblems or escutcheons referred to by Article 7(1)(h) of that regulation, so that the extent of the protection conferred by the former provision cannot be greater than that of the protection conferred by the latter provision' (point 25).

Consequently, the protection conferred by article 7(1)(i) EUTMR can only be relied upon where-- :

'[…] the trade mark in question misleads the public as to the origin of the goods or services which it designates, leading them to believe that the goods or services originate from the authority to which the badge, emblem or escutcheon, a reproduction or imitation of which it contains, refers. Such protection must also apply where the public may believe that, because of the presence in the trade mark of such reproduction or imitation of a badge, emblem or escutcheon, the goods or services have the approval or warranty of the authority to which that badge, emblem or escutcheon refers or that they are connected in some other way with that authority' (point 28).

Consequently, the mere representation in a mark of a symbol of particular public interest is not sufficient to rely upon the protection of article 7(1)(i) EUTMR. Instead, a full examination of both signs is required:

'In that regard, EUIPO’s decision-making bodies must not only examine whether the emblem concerned is included in full or in part in the trade mark into which it is incorporated. They must also assess whether, inter alia, in view of its size and position within such a mark, that emblem is perceptible as such by the public, whether it has a simple or complex configuration of colours or shapes, whether it is supplemented by other word or figurative elements which reduce or alter the perception of that emblem by the public or whether the other elements of the mark in question dominate the overall impression created by it' (point 41).

Concluding that the BoA had failed to conduct such examination, the General Court annulled the decision of the BoA.

Comment

The clarification of the General Court is significant. Symbols that are of particular public interest do not enjoy absolute protection. If the public does not misleadingly assume a connection with the authority using such a symbol, the registration thereof seems permissible. With respect to the case at hand, it seems likely that the protection under article 7(1)(i) can be invoked as soon as the goods sold under the mark no longer correspond to a protected geographical indication. Under such circumstances, the public is likely to be misled into thinking that the PGI Symbol affixed to the good warrants that it corresponds to a protected geographical indication.