Trade Mark Cancelled Due To Similarity With EU Flag

An interesting case has been decided in Germany recently where the European Union has been successful in obtaining the cancellation of a trade mark which it claimed infringed on the European Union flag consisting of 12 gold stars on a blue background. The flag is classed as a state emblem and so it cannot be incorporated into a trademark under Article 6 of the Paris Convention.

The European Union sought to obtain cancellation of a trade mark "EUROKURIER" for a firm providing courier services. The trade mark was a black and white figurative mark incorporating the word 'EUROKURIER' which also had twelve five-pointed stars arranged in a circle. The mark was registered in classes 36 and 39 for customs and transport related services.

At first instance, the German Patents and Trade Marks Office (PTO) rejected the EU's request to cancel the "EUROKURIER" trade mark. The court relied on provisions contained in the German Trade Mark Act which correspond to Article 7(1)(h) and (i) of the EU Trade Mark Regulation. These state that no trade mark shall be registered for protection if they include state emblems or official logos protected under Article 6 of the Paris Convention. The PTO was however of the opinion that the disputed mark did not give a false impression that it was in some way related to European Union institutions. They believed that the design of the trade mark especially the horizontal winged bar did not give a conceptual similarity between both the mark and the EU flag.

The German Federal Patent Court disagreed with the decision made in the lower court. They confirmed that the EU registration which depicts the twelve stars as well as the EU's flag are symbols and emblems protected under Article 6 of the Paris Convention. The court's view was that the "EUROKURIER" mark was sufficient enough to be an "imitation" of an official mark of the EU. The court went on to say that the disputed trade mark could be mistaken as being commercially linked to the European Union. In fact, the reasonable person would assume that "EUROKURIER" was an official courier service to the EU institutions. Accordingly the "EUROKURIER" trade mark was cancelled.

The decision in the above case highlights the importance given to emblems and official symbols of various institutions. It is a demonstration that courts generally favour protection for these marks over those which belong to a non-official institution but happen to be similar in design.