True, Patriot Love of the Canadian Maple Leaf - at Home and Abroad

O Canada, we stand on guard for thee. But, do other nations stand on guard for Canada? When it comes to protecting official Canadian marks, such as the Canadian maple leaf, apparently Paris Convention Union nation courts are willing to stand up for Canada’s interests.

A recent decision by the European Court of Justice has held that Canada’s maple leaf is a protected mark both for goods and services.

American Clothing Associates SA (ACA), a Belgian clothing company, sought to register a trade-mark made up of the Canadian maple leaf symbol with the letters RW located beneath. The application was for use in association with goods and services.

On initial application, the Office for Harmonization in the Internal Market (OHIM) examiner concluded that the mark was not registerable as it “would improperly connote an association with Canada”. On an appeal of the examiner’s decision, ACA lost in part. The Court of First Instance concluded that despite the inclusions of the RW element, the mark was still in violation of Article 6ter of the Paris Convention and was therefore not registrable for wares.

Article 6ter prohibits the user of marks incorporating State indicia without consent. It states:

(1) (a) The countries of the Union agree to refuse or to invalidate the registration, and to prohibit by appropriate measures the use, without authorization 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.

(c) … 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 organization 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 organization.

The court also pointed to the enabling legislation of the Paris Convention for the council of the European Union Regulation 40/94 which states:

Article 7 (1)(h) trade marks which have not been authorized by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention;

However, as Article 6ter refers only to trade marks, and based on Article 1(2) and Article 6(1) of the Paris Convention, there is a distinction between trade marks which are registered for goods and, ‘service marks’. As such, the Court of First Instance concluded that prohibition on registration and use established by [Article 7] does not affect service marks and that ACA’s RW mark and maple leaf could be registered for services. Article 1(2) states:

Article 1 (2) The protection of industrial property has as its object patents, utility models, industrial designs, trademarks, service marks, trade names, indications of source or appellations of origin, and the repression of unfair competition.

This was further supported by remarks from the World Intellectual Property Organization (WIPO) on their website under the article entitled General Information on Article 6ter:

Article 6ter is only applicable to trademarks and does not oblige States party to the Paris Convention to refuse or to invalidate the registration, and to prohibit use of State emblems or other officias signs as a service mark or as an element of a service mark. States are nevertheless free to do so…

Both the OHIM and ACA appealed to the European Court of Justice (ECJ). In their decision, the ECJ upheld the First Instance Court with respect to their decision on the registrability of ACA’s mark for goods, dismissing the appeal brought by ACA.

The ECJ reasoned that the scope of protection of Article 6ter of the Paris Convention is absolute and “… does not depend on whether the emblem imitated in a trade mark is perceived by the public as a distinctive element or an ornamental element …”. The court further held that the essential functions of trademarks and State emblems are different in that State emblems are meant to identify a State and represent its sovereignty whereas trademarks are a means to identify the origination of goods and services. Furthermore the ECJ said that the protection of State emblems does not require a likelihood of confusion. State emblems cannot be declared invalid, their protection period is not limited and they are protected without the need for registration. The court also concludes that Article 6ter of the Paris Convention may even be applicable in cases where the mark is not an exact reproduction of a State emblem  if a trade mark is perceived by the relevant public as an imitation of a State emblem.

The ECJ, however, disagreed with the First Instance Court that Canada’s Maple Leaf could be registered for services. The ECJ ruled that the Paris Convention does not require States to distinguish between trademarks for goods and services although States are free to do so. The court outlined that based on Article 29(1) of Regulation No 40/94 it is evident that the Community legislature did not intend to discriminate between marks for goods and marks for services.

In their decision, the court refrained from canvassing the policy reasons why official marks should not be registerable for both wares and services. There are very good reasons, however, why wares and services should be treated equal.

Generally, the root policy behind trade mark laws, irrespective if they are Canadian statutes or international treaties, is to protect the public from being misled as to the origins of a ware or service. When it comes to state emblems and flags, however, this is not the case. These official marks are protected to allow for state sovereignity.  The flag of a nation has a special significance to the people of that nation. Flags are raised and lowered with the rise and fall of the sun, they are saluted by the military, and flown at half mast to honour those who have fallen. The symbolism of a flag extends beyond that of a traditional trade-mark. It would only make sense that protection should extend beyond what is traditionally afforded to trade-marks.

Despite the fact that registration of the Canadian maple leaf for both goods and services is, at this time, contrary to European courts’ interpretation of international laws, ACA’s continuing effort to register their RW mark is in many ways a compliment to Canadians. Implicitly, ACA’s efforts recognize the Canadian maple leaf as much more than just a trade-mark . The Canadian maple leaf symbolizes a nation of people that are true, north, strong, and free – a message which certainly rings true the world over.