20 September 2011

Why You Cannot Trademark Symbols Of Despotism


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Image: Soviet coat of arms on Wikimedia Commons

The image above represents nothing less than the coat of arms of the Union of Soviet Socialist Republics or the Soviet Union as this no longer existing state is known to large parts of the public.

The image above also shows what the British Virgin Islands based company called Couture Tech Ltd attempted to register as a

Community Trade Mark

with the Office for Harmonization in the Internal Market (OHIM).

Funnily, the registration sought to cover an amazingly broad spectrum of goods and services detailed by the classes 3, 14, 18, 23, 26 and 43 of the Nice Classification Agreement.

Not surprisingly to me OHIM

refused to grant registration

because it found that the mark applied for was contrary to public policy or to accepted principles of morality within the meaning of Article 7(1)(f) read with Article 7(2) of Regulation No 40/94. For the sake of clarity, it should be noted that Regulation 40/94 has been codified by Regulation No 207/2009, which is also referred to as the “CTMR”.

Couture Tech Ltd contested this finding before the Board of Appeal, but suffered another setback as in its dismissal the Board held that

symbols connected with the former USSR would be seen as contrary to public policy and to accepted principles of morality by a substantial section of the relevant public, namely the general public living in the part of the European Union which had been subject to the Soviet regime, at least as far as Hungary and Latvia were concerned.

Quoting the Hungarian Criminal Code, the Board of Appeal even stressed that the signs hammer and sickle (however together with other politically burdened insignia) represented

symbols of despotism

and hence signs which are likely to be perceived by the relevant public as being contrary to public policy or to accepted principles of morality.

What a statement, huh?

Couture Tech Ltd, obviously not willing to accept another defeat, asked the General Court to annul the decision of the Board of Appeal based on two pleas.

First, Couture Tech Ltd asserted that the Board did err in interpreting Articles 7(1)(f) and (2) of the CTMR.
Second – and since OHIM had already registered Couture’s mark No 3958154, which related to the same sign, i. e. the Soviet coat of arms – OHIM had lured Couture to rely upon the registration of the mark applied for. Consequently, OHIM did breach the principles of the protection of legitimate expectations and legal certainty.

Today the General Court issued its decision in which it dismisses all of Couture’s assertions.

Although the General Court  nearly neglects the second plea of Couture Tech Ltd, I am of the opinion that it sends a

very strong signal

not only to the brand owners and intellectual property practitioners, but also to the politicians throughout the European Union.

According to that signal, the communist symbols, especially those related to the Soviet regime represent symbols of despotism, the trivialisation of which could not be reconciled with the public policy and accepted principles of morality in Europe.

Consequently, such symbols must not be trademarked.

18 March 2010

When a rapper equals a tazo


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Do you remember when you lastly unleashed a pog from a bottle or a cup containing a light drink? Such pogs are also referred to as “rappers” or – in Spain and Mexico – as “tazos”. Never mind when, I bet you never thought of those things as of subjects of intellectual property protection. Well, that being not enough, I guess you will be surprised again to find out that such rappers/tazos caused the Court of First Instance or, the General Court of the European Union, as it was renamed in the course of the Treaty of Lisbon, to deliver its first ruling on a Community Design case ever.

The Court had to deal with the request of the claimant Grupo Promer Mon Graphic to annul OHIM‘s grant of a Community Design to the defendant PepsiCo Inc.

The defendant had obtained a Community Design for the shape of a “rapper” (see the drawings in the ruling), but faced claimant’s application for a declaration of invalidity based on claimant’s senior Community Design for a “tazo” (see the drawings in the ruling) in pursuance to which defendant’s design lacked the novelty required by Regulation No 6/2002. Claimant further alleged that they had made their design available to defendant on a private and confidential basis and that such disclosure equated with a making available to the public. Thereupon the Invalidity Division of OHIM declared the contested design invalid on the basis of Article 25 (1) (d) of above regulation. PepsiCo appealed against this decision and as a result the Third Board of Appeal of OHIM annulled the decision of the Invalidity Division and dismissed the application for a declaration of invalidity. Accordingly, the Board of Appeal concluded that the difference in the profile of the designs at issue was sufficient to conclude that they produced a different overall impression on the informed user.

Grupo Promer Mon Graphic was reluctant to put up with such an outcome and went to the General Court requesting it to annul the decision of OHIM’s Board of Appeal. In particular, the claimant raised three pleas in law, alleging, (i) defendant’s bad faith and a restrictive interpretation of Regulation No 6/2002 in the contested decision, (ii) lack of novelty of the contested design and, (iii) infringement of Article 25 (1) (d) of Regulation No 6/2002.

With respect to allegations (i) and (ii) the Court made an interesting finding: Article 25 (1) of Regulation No 6/2002 lists the grounds on which a Community design may be declared invalid exhaustively and there is no reference to the bad faith of the proprietor of a contested design. Further, a disclosure on a private and confidential basis cannot be relied upon as it did not target the public and hence did not bar the defendant from novelty.

With respect to allegation (iii) the Court first opined that Article 25 (1) (d) of Regulation No 6/2002 must be interpreted as meaning that a Community design is in conflict with a prior design when that design does not produce  a different overall impression on the informed user from that produced by the prior design. Of course, when determining the above,  the informed user needs to take into consideration the freedom of the designer in developing the Community design. In applying this interpretation to the instant case, the Court held that the two additional circles of the contested design as well as its degree of curvature – when compared to the prior design – were insufficient for the contested design to produce a different overall impression on the informed user. Accordingly, OHIM’s Board of Appeal’s decision had to be annulled.

In my view this decision is very important for two reasons: (i) it is the first ruling of a Court of the European Union that deals with a Community Design and (ii) the Court utilises its ruling to provide for a useful guidance on infringement due to similarity and hence a lack of a different impression on an informed user.

 

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