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Practice Amendment Notice

PAN1/10 - Examination practice in relation to Protected Symbols

This PAN affects examination practice in relation to Protected Symbols. It will be reproduced in the Examination Guide in the Section entitled "PROTECTED WORDS and Other Signs ("Reserved Words") and Prohibited Words", Section 2, entitled: "Marks Protected under Article 6ter of the Paris Convention or WTO Agreement".

Background

The practice in relation to National symbols has been reassessed in light of the comments made in the recent judgement by the ECJ in the American Clothing Associates NV case C-202/08P External Link (RW and maple leaf device). This case provides guidance on the different functions of National emblems and trademarks and the way they are treated in law.

National Emblems

National Emblems are covered by s.57 of the Trade Marks Act 1994 (as amended):

Specifically s.57 (2) and (4):

(2) A trade mark which consists of or contains the armorial bearings or any other state emblem of a Convention country which is protected under the Paris Convention or the WTO agreement shall not be registered without the authorisation of the competent authorities of that country.

...

(4) the provisions of this section as to national flags and other state emblems, and official signs or hallmarks, apply equally to anything which from a heraldic point of view imitates any such flag or other emblem, or sign or hallmark.

Purpose of a National Emblem

The American Clothing Associates NV case considered the difference in function between a National sign and a trade mark. A National emblem will indicate a State and is a presentation of its sovereignty and unity, whereas a trade mark should guarantee the identity of origin of the marked product to the consumer, without any possibility of confusion.

This difference in function has an effect on the way the law treats trade marks and National symbols. These differences, as they apply in the UK, are summarised in the following table:

Read across each row to find the type of trade mark and the effect that has on national symbols.
Trade mark National symbol
Obtained by registration States communicate emblems to be protected to WIPO
(Flags are protected without notification to WIPO)
Protection is limited in respect of certain determined classes of goods and services Are entitled to general protection independent of specific goods and services
Can be declared invalid and their proprietor can be deprived of his rights Cannot be declared invalid and their proprietor cannot be deprived of his rights
Duration of their protection can be limited Duration of their protection is not limited
A likelihood of confusion test exists in the case of similarity between marks and between goods or services Paris Convention makes no reference to such a test and protection is irrespective of goods and services
Protection of an earlier registration requires action by the proprietor of the trade mark Absolute grounds for refusal operate ex officio

Consequently, the scope of protection is very different as between a trade mark and a national symbol under the Paris Convention. The protection afforded to the latter is very broad in that it prohibits the use of a National Symbol as a trade mark and also as an element of a trade mark, in respect of any goods or services. The reproduction of the Symbol need not be an exact, but where it is likely to be perceived by the relevant public as an imitation from a heraldic point of view it is prohibited.

The relevant public is defined in the American Clothing case as the average consumer and not a specialist purchasing public.

The case also provides useful guidance in relation to the interpretation of the phrase "from a heraldic point of view". This is taken to mean that the heraldic description of the sign in question is relevant, but the actual comparison is made against how the symbol would normally be reproduced and detailed heraldic knowledge and interpretation of the heraldic description would not be required. It is a matter of impression and how the sign would be perceived by the relevant consumer.

Practice in relation to National Emblems

National emblems will be taken to mean those marks notified to the World Intellectual Property Office (WIPO) and included in the Art 6 ter External Link database of marks. An exception is in respect of flags of a National state which are protected irrespective of whether they have been notified to WIPO.

The relevant test will be ‘whether the average consumer considers that the symbol in the mark is a National Emblem or an imitation, from a heraldic point of view, of the protected sign’. That is, where the sign in the mark is similar to a National Emblem and the differences between the sign and the National Emblem are so slight that they would not be perceived without direct comparison of the two signs by the average consumer, an objection under s. 3(5) and s. 4 will be taken.

The overall impression of the mark or the prominence of the protected sign within the mark is not a determining factor; an objection will be raised in all cases where an application contains a protected National Symbol.

Objections taken under s. 3(5) and s. 4(4) maybe overcome by obtaining the consent of the relevant authority to the use and registration of the symbol.

Examples

Protected National Symbols of Ireland and Canada are:

Protected National Symbols of Ireland and Canada

Unacceptable

The following examples incorporate these symbols as part of the sign, and would not be acceptable. They would be open to objection under s. 3(5) and s. 4(4):

'My Lucky star'

The 1st mark consists essentially of the words ‘My Lucky star’, but the presence of the National Emblem of Ireland, though small, is sufficient to warrant an objection.

In the 2nd mark the device is not an exact representation of the National Emblem of Canada, but it is an imitation from a heraldic point of view, and would be taken by the average consumer to be the National Emblem. Again, the mark would face an objection.

Acceptable

The following examples are acceptable and would not face an objection under s. 3(5) or s.4(4):

American Flag and a maple flag

The first is a stylisation version of the American Flag but contains sufficient differences that the average consumer would not take it to be an imitation of the protected National Symbol.

The second is an acceptable trade mark; although a maple leaf, it is clearly not an imitation of the Canadian Emblem.