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Imre Gonda deputy head Trademark , Model and Design Dept. Hungarian Intellectual Property Office

State Emblems as Absolute Grounds for Refusal and the European Criteria - the application of Article 7 (1)(h) and (i) CTMR -. Imre Gonda deputy head Trademark , Model and Design Dept. Hungarian Intellectual Property Office. Regulatory environment - Art. 7(1)h & 7(1)i CTMR -.

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Imre Gonda deputy head Trademark , Model and Design Dept. Hungarian Intellectual Property Office

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  1. State Emblems as Absolute Grounds for Refusal and the European Criteria- the application of Article 7 (1)(h) and (i) CTMR - Imre Gonda deputy head Trademark , Model and Design Dept. Hungarian Intellectual Property Office

  2. Regulatory environment- Art. 7(1)h & 7(1)i CTMR - The following shall not be registered: • trade marks which have not been authorised by thecompetent authorities and are to be refused pursuant toArticle 6ter of the Paris Convention for the Protection ofIndustrial Property, hereinafter referred to as the ‘ParisConvention’; • trade marks which include badges, emblems or escutcheonsother than those covered by Article 6ter of the ParisConvention and which are of particular public interest,unless the consent of the competent authority to theirregistration has been given; 7th Liaison Meeging on Trade Marks 21-22 May 2012

  3. Manual- 7.8.3.3 - As regards other symbols it should be noted that not any symbol falls inArticle 7(1)(i) CTMR. The aim is to protect only those which are of particularpublic interest and whose protection is reserved, preferably, by aninternational instrument (such as a convention or treaty) and only if all theMember States are party to that international instrument (such as the GenevaConvention). 7th Liaison Meeging on Trade Marks 21-22 May 2012

  4. Relevant International Instruments Geneva Convention(Red Cross) • All MS’s are contracting parties to that Nairobi Treaty(Olympic Symbol) • only 14 MS’s are contracting parties • „large” MS’s are not signatory Principles to apply? • majority? • size / population / economic significance of MS’s involved? → European Criteria 7th Liaison Meeging on Trade Marks 21-22 May 2012

  5. European Criteria definition and scope (Manual 7.1.3) • „Art.7(1) is a European provision and has to be interpreted on the basis of common European standard” • „ It would be incorrect to apply different standards of distinctiveness, based on different national traditions, or to apply different, that is more lenient or stricter, standards on the breach of public order or morality, depending on the country concerned.” • applicable for all grounds for refusal • if AG is valid in one single MS = not necessarily enough! 7th Liaison Meeging on Trade Marks 21-22 May 2012

  6. European Criteria deficiencies and solicitudes of the principle • colorful and diverge parameters inside Europe (language, historical & cultural background, consumer behaviour, etc.) • perception of consumer for the same sign may differ from country to country • how to define the content (majority principle)? • may lead to discrimination of some MS’s • not realistic to find a common standard (ground) valid everywhere • conversion of such CTM’s? Σ: in practice will almost never result a refusal 7th Liaison Meeging on Trade Marks 21-22 May 2012

  7. Case-law of ECJ and GC- European Criteria - C-25/05 A. Storck KG. vs OHIM (paragraphs 81 & 83) • Art. 7(1) should be read in conjunction with Art. 7(2) • (…) mark must be refused registration if it is covered by one of the grounds laid down in Art. 7(1) of CTMR in part of the EU. Such part may comprise a single Member State. T-232/10 Couture Tech Ltd. v. OHIM • coat of arms of the former USSR • contrary to public policy and accepted principles of morality in certain MS’s • legislation & administrative practice of CZ, HU, LT • argument of the applicant: public policy & morality of the EU should apply 7th Liaison Meeging on Trade Marks 21-22 May 2012

  8. Case-law of ECJ and GC- European Criteria - T-232/10 Couture Tech Ltd. v. OHIM Findings of the General Court • Mark must be refused registration when it is covered by an absolute ground for refusal (…) only in part of the Union and that part may be comprised of a single Member State. • consumers within the EU are, by definition, within a MS. • perception of signs are not the same in all MS’s. 7th Liaison Meeging on Trade Marks 21-22 May 2012

  9. Case-law of ECJ and GC- European Criteria - T-232/10 Couture Tech Ltd. v. OHIM • The autonomous character of CTM regime does not preclude taking into account particular circumstances of Member States which are likely to influence that perception. (paragraph 36) • The aim of developing the common market does not justify infringing public policy or accepted principles of morality in part of that market. (paragraph 38) • It is for OHIM to examine the existence of absolute grounds for refusal in all parts of the EU. (paragraph 39) Essential changes required in the practice of examination & the interpretation of absolute grounds (CTMR) 7th Liaison Meeging on Trade Marks 21-22 May 2012

  10. Aftermath- European Criteria - Possible consequences after the erosion of the doctrine of „European Criteria” • Change of OHIM practice? (trainings etc.) • Review of documents highlighting the practice of OHIM? • Effect on already registered CTM’s? • Interpretation of the case-law in post grant procedures (cancellation)? • National Offices could provide support for OHIM (exchange of experience and information) → New item of the Convergence? 7th Liaison Meeging on Trade Marks 21-22 May 2012

  11. Thank you for your attention! www.hipo.gov.hu imre.gonda@hipo.gov.hu

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