Date: 16 December 2019
Under Article 7(1)(h) EUTMR, a trade mark shall not be registered if it has not been authorised by the competent authorities in accordance with Article 6ter of the Paris Convention for the Protection of Industrial Property (“Paris Convention”). The Paris Convention protects the armorial bearings, flags and other emblems of States that are party to the Paris Convention, as well as names and emblems of international intergovernmental organizations (IGOs), against unauthorised registration and use.
Click here for further discussion on trade marking flags: Flag it Up
In 2016, the Malteser Hilfsdienst (Maltese aid service) applied for the sign shown in Fig.1 for a wide variety of goods and services:
The EUTM applicant, one of the major Catholic charities within the “Sovereign Military and Hospitaller Order of St. John of Jerusalem, Rhodos and Malta” (the Order of Malta), helps people in distress, regardless of religion, origin or political conviction.
The issue in this particular case was that the mark applied for contained a national sovereign reference (the Maltese cross, also known as the Amalfi cross) and, therefore, an authorisation to register the sign in question as a EUTM should have been obtained from the Maltese Government. However, the applicant did not want to obtain consent, arguing that it was not appropriate or necessary given that the Republic of Malta and the Order of Malta had, historically, a number of signs in common. Indeed, the Republic of Malta’s website recognised the right of the order to use its own characters, including trademarks, coat of arms and emblems.
When Malta was still a monarchy, the Maltese cross was included in the official Coat of Arms granted under the authority of the Sovereign. However, a new coat of arms was adopted when Malta proclaimed itself a Republic in 1974. The present coat of arms (as shown in Fig.2) contains an entirely different cross: the George Cross, a decoration for gallantry awarded to the then Island Colony by King George VI for the conspicuous gallantry of its population when under siege during the Second World War.
The applicant submitted that, because of the excellent relationship between the Order of Malta, the applicant and the Republic of Malta, “a conflict with the Maltese Government is therefore purely theoretical in the present case”.
The applicant further argued that no flag rights of the Republic of Malta were challenged or modified. So, why was the objection raised? Well, it was based on the Maltese shipping flag shown in Fig.3, which was entered as a state emblem in WIPO’s database in 1972:
The Second Board of Appeal (in decision R 2110/2018-2) found that the sign in Fig.1 was a clear heraldic imitation of a sovereign sign, within the meaning of Article 7(1)(h) of the EUTMR in conjunction with Article 6ter of the Paris Convention.
The Board went on to confirm that registration as a EUTM would only be possible with the express authorisation of the competent authority. The Board considered it “somewhat surprising” that the applicant had at no point in time requested the permission of the Republic of Malta and had failed to communicate to the EUIPO any attempt to obtain such consent, especially in view of the fact that it was considered at first instance that the competent authorities of the Republic of Malta had taken into account the historical arguments of the applicant and, consequently, would have easily approved the registration of the sign as an EUTM.
The Board concluded that the other arguments set out by the applicant could not be followed, although it might be entitled to use the mark under the conditions laid down in Article 14 EUTMR: “The mere fact that the contested application was rejected does not in any way imply that the applicant would not continue to have the right to use its official mark as such”.