Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 25/01/2018

ASHFORDS LLP

Ashford House Grenadier Road

Exeter EX1 3LH

REINO UNIDO

Application No:	017177321
Your reference:	DPC/CSQ/054795-29
Trade mark:
Mark type:	Figurative mark
Applicant:	LiFung Trinity Management (Singapore) Pte. Ltd 315 Outram Road, #14-08 Tan Boon Liat Building Singapore 169074 SINGAPUR

The Office raised an objection on 18/10/2017 pursuant to Article 7(1)(h) EUTMR because it found that the trade mark applied for is an imitation from a heraldic point of view of an armorial bearing protected under Article 6ter of the Paris Convention, for the reasons set out in the attached letter.

The applicant submitted its observations on 15/12/2017, which may be summarised as follows.

1. The trade mark, (the ‘mark’ from here on), will not be perceived as an imitation, from a heraldic point of view, of the protected emblem (the ‘emblem’ from here on) in question, , for the following reasons: the emblem consist only of golden lions with blue tongues placed inside a red shield, whereas the mark is in black and white combined with the letters ‘KC’; the size of the lions in the emblem differ and follow the outline of the shield, by contrast, the lions in the mark are all the same size and organized in a rectangular shape; the style of the lions are very different in the two depictions, firstly, they are golden and blue in the emblem and black and white in the mark, secondly, the expression on the faces and the claws differ significantly; the mark has no shield, and shields are very important for the impression of heraldic imagery. Considering all the above mentioned the relevant consumer would not confuse the mark with the emblem.

2. The applicant has used this sign since 1926 and the relevant consumers recognise it as a trade mark.

3. The applicant already owns three registered trade marks featuring the same lions, both registered by the EUIPO and the UK National Office (UKIPO). These marks are cited. The present mark has also been applied for simultaneously in the UK, without any objections raised.

4. The UKIPO is listed as the addressee for correspondence relating to the 6ter registration in question.

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.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

According to Article 7(1)(h) EUTMR trade marks which have not been authorised by the competent authorities are to be refused pursuant to Article 6ter of the Paris

Convention and shall not be registered.

Article 6ter of the Paris Convention contains the following provisions:

(1)(a) The countries of the Union agree to refuse or to invalidate the registration, and to prohibit by appropriate measures the use, without authorisation by the competent authorities, either as trademarks or as elements of trademarks, of armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view.

(b) The provisions of subparagraph (a), above, shall apply equally to armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organisations of which one or more countries of the Union are members, with the exception of armorial bearings, flags, other emblems, abbreviations, and names, that are already the subject of international agreements in force, intended to ensure their protection.

(c) No country of the Union shall be required to apply the provisions of subparagraph (b), above, to the prejudice of the owners of rights acquired in good faith before the entry into force, in that country, of this Convention. The countries of the Union shall not be required to apply the said provisions when the use or registration referred to in subparagraph (a), above, is not of such a nature as to suggest to the public that a connection exists between the organisation concerned and the armorial bearings, flags, emblems, abbreviations, and names, or if such use or registration is probably not of such a nature as to mislead the public as to the existence of a connection between the user and the organisation.

The aim of Article 6ter (1)(a) Paris Convention is to preclude the registration and use of trade marks which are identical to flags, emblems and coats of arms of countries or which are a heraldic imitation thereof. Such registration or use would adversely affect the right of the respective State to control the use of the symbols of its sovereignty and might, moreover, mislead the public as to the origin of the goods for which such marks are used (21/04/2004, T-127/02, ECA, EU:T:2004:110, § 19).

In response to the applicant’s submissions, the Office states the following:

1.

The Court has ruled that as far as ‘imitation from a heraldic point of view’ is concerned, 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 and, therefore, in spite of differences at the level of certain heraldic details, the contested trade mark may be an imitation of the emblem in question within the meaning of Article 6ter PC (judgments of 16/07/2009, C-202/08 P and C-208/08 P, RW feuille d’érable, EU:C:2009:477, § 50 et seq.; 25/05/2011, T-397/09, Suscipere et finire, EU:T:2011:246, § 24-25). To apply Article 7(1)(h) EUTMR, it can therefore be sufficient that the average consumer, despite some differences in heraldic details, can see in the mark an imitation of the emblem. This imitation may exist when the emblem, protected under Article 6ter PC, displays the main element of the emblem or shows part of it. That element need not necessarily be identical to the emblem in question. The fact that the emblem in question is stylised or that only part of the emblem is used does not necessarily mean that there is no imitation from a heraldic point of view (judgment of 21/04/2004, T-127/02, ECA, EU:T:2004:110, § 41).

In the present case, the mark displays the three lions of the emblem, although there are differences such as colours, size of the lions and details in facial expression and claws, from a heraldic point of view, the relevant consumer will with overwhelming probability consider the three lions in the mark as an imitation of the three lions in the emblem.

The EUPIO Guidelines cites the following example when explaining objectionable marks, under Article 7(1)(h) EUTMR, where a mark contains a protected emblem. Part B, Examination, Section 4, Absolute grounds for refusal and European Union collective mark marks, Chapter 9, TRADE MARKS IN CONFLICT WITH FLAGS AND OTHER SYMBOLS (ARTICLE 7(1)(h) and (i) EUTMR), Point 2.3:

Although there are many differences in the details – such as colours, size, facial expressions of the animals etc – between the protected emblem (top left) and the mark (right), the mark was refused due to a heraldic imitation as the central elements are highly similar. The same reasoning is applicable to the mark in question, the emblem contains three lions represented as walking with the right front foot raised (passant), the representation is highly similar to the lions organised in the same manner in the mark, regardless of slight differences in the size of the lions.

Furthermore, as regards the shield in the emblem, a heraldic imitation may occur also when a mark displays only parts of the main element of the emblem, the lions are clearly the main element of the emblem, , and the lions of the mark may easily be confused with these lions.

In addition, although the mark is a black and white version of the protected emblem it may still be considered a heraldic imitation (judgments of 21/04/2004, T-127/02, ECA, EU:T:2004:110, § 45 and 28/02/2008, T-215/06, RW feuille d’érable, EU:T:2008:55, § 68).

2.

The Office does not deny that the applicant has used the sign as a commercial indicator since 1926, this, however, is not relevant as long as the mark was applied for after the 6ter emblem was protected. Long-standing use cannot overcome an objection under Article 7(1)(h) EUTMR.

Furthermore, the three lions emblem has an over 800 year old history, this is also confirmed by the material submitted by the applicant.

3.

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

As regards the national decisions referred to by the applicant, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

4.

The fact that the UKIPO address can be found in the 6ter registry is not relevant, however, refusal under Article 7(1)(h)for EUTMR may be overcome by submitting an authorisation to register the trade mark from the competent authority of the relevant state or organisation.

For the abovementioned reasons, and pursuant to Article 7(1)(h) EUTMR, the application for European Union trade mark No 17 177 321 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.

Lars Paalgard SOYLAND