Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 28/11/2017

A2 ESTUDIO LEGAL

Calle Hermosilla, 59 Bajo izquierda

E-28001 Madrid

ESPAÑA

Application No:	016453821
Your reference:	4359
Trade mark:
Mark type:	Figurative mark
Applicant:	SKINCODE AG Seestrasse 59 CH- Erlenbach SUIZA

The Office raised an objection on 12/04/2017 pursuant to Article 7(1)(h) EUTMR because it found that the trade mark applied for has not been authorized as regards the use of a protected emblem in it and is to be refused pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property.

The applicant submitted its observations on 12/06/2017, which may be summarised as follows.

• The applicant, SKINCODE AG, is Swiss and its registered office is placed in Switzerland, so the relevant legislation is the Swiss. It is true that in the present case the trademark applied for contains the flag of Switzerland. However, the Federal Act on the Protection of Trade Marks and Indications of Source allows owners to introduce the Swiss flag in their trademarks as an indication of source (Articles 47 and 48 c) TmPA). Furthermore there is a specific reference to cosmetics products through the ‘Swiss Made’ ordinance for cosmetics. The goods applied for by the applicant fulfil the criteria set by Swiss law as is shown in the enclosed documents.

Pursuant to Article 94 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

The objective of Article 6ter of the Paris Convention is to exclude the registration and use of trade marks that are identical or notably similar to state emblems, official signs and hallmarks indicating control and warranty adopted by the states or the emblems, abbreviations and names of Intergovernmental Organizations. Such registration or use would adversely affect the right of the authority concerned to control the use of the symbols of its sovereignty and might, moreover, mislead the public as to the origin of the goods and services for which these marks are used.

Registration of these emblems and signs, as well as any imitation from a heraldic point of view, either as a trade mark or as an element thereof, must be refused if no authorisation has been granted by the competent authority.

• As regards the national law referred to by the applicant, the Office does not dispute the Swiss law, however, the European Union trade mark regime is an autonomous system with its own set of rules; it is independent system that is applicable regardless of any national system. The registrability of the sign has to be assessed by reference only to the relevant Union rules. Accordingly, the Office maintains its opinion that the mark applied for is not eligible for registration under Article 7(1)(h) EUTMR because it contains an element which consists of the flag of the Swiss Confederation that is protected under Article 6ter of the Paris Convention. The applicant at the same time did not provide the Office with the authorisation by the competent authority.

For the abovementioned reasons, and pursuant to Article 7(1)(h) EUTMR, the application for European Union trade mark No 16 453 821 is hereby rejected for all the goods claimed.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Klara BOUSKOVA