Date: 27 September 2018
Can you trade mark a flag? A recent Board of Appeal decision shows that the outcome depends on assessment of the sign as a whole.
Birmingham City University applied to register the figurative EUTM shown below for its Centre for Brexit Studies, covering (amongst other things) education and instructional services (Birmingham City University v EUIPO; R 2741/2017-4).
The EUIPO rejected the application on the basis that the applied-for mark contained an element which consisted of partial representations of flags - namely the “Union Jack” and the flag of the EU – which were protected under Articles 6ter (1)(a) and (b) of the Paris Convention (as referred to under Article 7(1)(h) EUTMR).
Birmingham City University appealed, noting that technically the sign applied for was not even a Union Flag as it only showed 50% of the design. It also provided letters of consent from the relevant UK and EU authorities, as required under Article 7(1)(h) EUTMR.
The examiner argued that that the aim of Article 6 ter (1)(a) was to preclude the registration and use of trade marks which are identical to State emblems or “which are to a certain extent similar to them”, so that the right of the State to control the use of the symbols of its sovereignty is not adversely affected, and so that the relevant public is not misled about the origin of the goods and services.
The Board of Appeal found that the sign was “a newly designed flag consisting of halves of two different flags. A flag of this kind does not exist. No State in the world bears this flag. Nor is this symbol protected on behalf of an intergovernmental organisation. In order to assess whether the sign corresponds to a State flag, it must be assessed as a whole”.
According to the Board, the emblem applied for must “in heraldic terms” imitate the protected flag as a whole. In the case at hand, the inclusion of a portrayal of merely a part of each flag, by way of a diagonally sliced section, reassembled into a flag-like form, could not be said to constitute an imitation of either flag from a heraldic point of view.
In addition, the Board pointed out that the wording “University” and “Centre for Brexit Studies” clearly indicated that the EUTM applicant would examine the implications of the decision of the United Kingdom to leave the EU from a scientific (“university”) point of view, and excluded an interpretation that the EUTM applicant claimed to be endorsed by the UK Government (or by the EU, or by both) for the mark or the services rendered under it. The Board concluded that the composite flag-shaped device was no more than a generic reference to the notion of Brexit, i.e. a reference to a political decision with major economic implications, involving the UK and the (rest of the) EU: “Had the competent services of the EU Commission been concerned about any likelihood to mislead the public, they would not have granted their consent to the filing of the present EUTM application, we may assume”.
Accordingly, the Board upheld the appeal and annulled the contested decision. This decision illustrates that it is possible to trade mark a flag in certain situations, provided that the flag you’re interested in trademarking is not a true representation of the flag or coat of arms or other State emblem of the UK or any other country or the Union. It is wise to consult a trademark attorney about the design of your sign before you put it into production, to avoid your logo being rejected by the UKIPO or the EUIPO.
In the writer’s view, this is a sensible decision. In this particular case, the applicant was somewhat hoisted by their own petard because they did not originally obtain letters of consent before applying to register the mark. In observations submitted to the EUIPO, the applicant tried to argue that, as the partial representations of the Union Jack and the EU flag would be perceived by the public as simply being illustrative of Brexit, it was not necessary to obtain any authorisation by the competent authorities. However, it’s clearly stated in Chapter 9, Section 2.2.1 of the “Guidelines for Examination of EUTMs” that, with regard to trade marks in conflict with flags and other symbols, “Registration of these emblems and signs, as well as any imitation from a heraldic point of view, either as a trade mark or as an element thereof, must be refused if no authorisation has been granted by the competent authority” and further in Section 2.3 that “the fact that the EUTM applied for contains only part of the protected ‘emblem’ does not mean that there may not be an imitation from a heraldic point of view”.
The EUIPO stated in its decision explaining the reasons for rejecting the application that “the Office has informed the applicant that this ground for refusal may be overcome by submitting an authorisation to register the trade mark from the competent authority of the relevant state or organisation”. However, in this particular case it was not only the fact that letters of consent were obtained which swung the verdict in favour of the applicant, it was also the fact that the degree of stylisation took the sign outside the scope of heraldic imitation, something which EU case-law suggests is tricky to assess.