Validity of service marks composed of State emblems

On February 28, 2008, the European Court of First Instance (CFI) allowed to registration the mark in class 40 which had initially been rejected by the Examiner.

For the Court, provisions of the Paris Convention and of the Community Regulations concurred in prohibiting State emblems only for product trademarks but not for service trademarks. Then the CFI refused the mark in class 25 by justifying that a component consisting in a State emblem of a complex mark is sufficient to apply the prohibition.

This decision contradicts what the OHIM Cancellation Division ruled on October 19, 2007. The OHIM declared invalid the trademark incorporating an imitation of the European Emblem (12 stars on a blue background) with the words “MASTER CAR MAGAZINES ASSOCIATION” in both classes 16 and 42. For the Examiner, the public was likely to assume that both the goods and services relating to reports, studies or publications on cars, motorcycles and bicycles emanated from European authorities.

The CFI should have made an extensive reading of the provisions to apply the same rules for product and service marks. It would otherwise be quite easy to overcome the prohibition by filling trademarks for instance in class 35 for retail services in respect of products that would otherwise fall in the prohibition scope. A difference of position between the examination stage and a cancellation action is a pure non-sense and might need the ECJ to take further position on the question.

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