In Case R0405/2022-1, decided on the 20 March 2023, the European Union Intellectual Property Office’s (the “EUIPO”) First Board of Appeal (the “Board of Appeal”) annulled the EUIPO’s refusal of the Bailiwick of Brandenburg of the Chivalric Order of Saint John of the Hospital at Jerusalem’s (the “Applicant”) application to register a mark containing the Maltese Cross, as an EU trade mark.
Case Background
In a bid to secure the registration of the figurative mark ‘JOHANNITER’ as an EU trade mark for various goods and services, the Applicant filed an application on the 19 February 2021. However, the application faced objections from the EUIPO under Article 7(1)(h) of the EU Trade Mark Regulation (Regulation 2017/1001) (the “EUTMR”), as the mark contained a white eight-pointed cross on a red background, commonly referred to as the ‘Maltese Cross’. As per Article 7(1)(h) of the EUTMR, marks which have not been authorised by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property (the “Paris Convention”) shall not be registered as EU trade marks. Article 6ter of the Paris Convention protects armorial bearings, flags and other state emblems of the countries party to the Paris Convention and prohibits the unauthorised use and registration of trade marks which are identical or similar to these emblems or official signs. The EUIPO considered the mark to be an imitation of the Maltese Cross, thus excluding it from registration.
In response to the EUIPO’s refusal of the application, the Applicant argued that the Maltese Cross was not a national emblem, as defined in Article 6ter of the Paris Convention, but it was instead used by the Republic of Malta in their Merchant Flag. Moreover, with regards to the EUIPO’s claim that the Applicant did not receive prior authorization from the Republic of Malta to use the Maltese Cross, the Applicant delved into their historical ties with the Order of Saint John (the “Order”), who had officially adopted the Maltese Cross in 1126 and who had settled in Malta from 1530 to 1798.
Despite the Applicant’s arguments, the EUIPO upheld the refusal to register the mark in its entirety and maintained that the Applicant had not obtained the required authorization from the competent authorities to use the Maltese Cross in its mark. The EUIPO also maintained that the average consumer would associate the figurative element of the mark with the Maltese Cross, on account of its size and arrangement, and due to the use of the Maltese Cross on euro coins, and as the logo of the Maltese national airline, amongst other uses.
The Grounds of Appeal
Unsatisfied with this decision, the Applicant filed an appeal on 15 March 2022, requesting the contested decision’s annulment based on the following grounds:
1) The Historical Use of the Maltese Cross
The Applicant, being the German Protestant branch of the Order, emphasized their association with the Order, and their longstanding historical use of the symbol, which itself predates the Republic of Malta. Therefore, the white eight-pointed cross on a red background was attributable to the Applicant, and not to the Republic of Malta.
2) The Differences in Flags and Prior Authorization
The Applicant maintained that, through a letter dated 25 February 1965, the Republic of Malta had obtained the consent of the Grand Master of the Order to use the white eight-pointed cross on a red background for its Merchant Flag, established by law through Article 72 of the Merchant Shipping Act (Chapter 234 of the Laws of Malta). In order to avoid confusion between the two flags, consent was granted on the basis that the Merchant Flag was given an additional element; this additional element being a white border. Moreover, in contrast to the contested mark, the inner points of the Maltese Cross in the Merchant Flag did not coincide. Ultimately, as a branch of the Order who gave consent to the Republic of Malta to use the Maltese Cross, the Applicant held that it could not be expected to obtain the consent of the Republic of Malta itself.
3) The Inapplicability of Article 6ter of the Paris Convention
The Applicant argued that while Article 6ter of the Paris Convention is intended to guarantee the control of a state over the use of its national emblems, this article did not cover the present scenario; whereby a state started to use a previously-existing emblem used by an organisation since the 12th century. They also held that, as per the reasoning for the implementation of the Paris Convention, state emblems are figurative marks meant to act as an indication of a state’s authority. However, since Merchant Flags merely denote the state in which a ship is registered, they do not represent a state’s authority.
4) No Heraldic Imitation
In accordance with Article 6ter (1)(a) of the Paris Convention, the protection of state emblems extends to any imitation from a heraldic point of view. Therefore, a mark that does not replicate a state emblem can also be prohibited from registration under the Paris Convention, if it can be considered by the relevant public as an imitation of a state emblem. The Applicant therefore held that, as an essential feature of the Maltese Merchant Flag is the white border, which was added in order to distinguish it from the flag of the Order, the mark could not be deemed as an imitation from a heraldic point of view. Moreover, the lettering ‘JOHANNITER’ dominated the overall impression of the mark, distinguishing itself from the Maltese Merchant Flag.
The Board of Appeal’s Considerations
With respect to the imitation of a state emblem from a heraldic point of view, the Board of Appeal pointed out that Article 6ter (1)(a) of the Paris Convention is also applicable to components of trade marks which imitate national emblems. Therefore, there is no need to examine the overall impression created by the mark, as registration of a mark must be refused even if a single element of the trade mark constitutes an imitation of an emblem.
However, the Board of Appeal felt it was necessary to explain that this case was unlike previous cases which dealt with imitation of state symbols from a heraldic point of view, such as ‘Prinz von Hannover v OHIM’ (Case T-397/09) in which two signs were developed in parallel, without the use of one sign being subject to an authorisation by the proprietor of the other sign. In this case, the Board of Appeal held that a heraldic imitation is logically ruled out, as the Order had been using an almost identical sign for centuries.
The Board of Appeal then went on to examine the letter dated 25 February 1965, through which the Republic of Malta had requested the Grand Master of the Order’s consent to use their flag as the Republic of Malta’s Merchant Flag. Contrary to the initial view taken by the EUIPO, the Board of Appeal found that that it is evident that the request for consent relates to the use of an eight-pointed white cross on a red background, these being the identical elements found in the flag of the Grand Master of the Order. Considering that the Merchant Flag of the Republic of Malta protected under Article 6ter of the Paris Convention, is derived from the Order; the Republic of Malta is not the competent body within the meaning of Article 7(1)(h) EUTMR to authorise the use of those elements to the Order.
Although the main points of contention were the heraldic imitation of the emblem and the consent to use the emblem, the Board of Appeal also delved into whether the Merchant Flag is considered as a state emblem under Article 6ter of the Paris Convention. In doing so, they pointed out this issue is particular to the Republic of Malta, whose National Flag and Merchant Flag are different, unlike other states which use the same flag. The Board of Appeal held that the Merchant Flag of a state serves to identify the ships which are entered in the ship register of that country. Therefore, the Merchant Flag does not represent the sovereignty of the state concerned and it should consequently not be deemed as a state emblem within the meaning of Article 6ter of the Paris Convention.
In view of the above, the Board of Appeal decided in favour of the Applicant, allowing the registration of the EU trade mark for all the goods and services claimed by the Applicant. In conclusion, this case highlights the complexities involved in trade mark registrations, especially when historical symbols and associations come into play.
Disclaimer: Ganado Advocates is responsible for contributing this law report but was not in any way involved as legal advisor for the parties in the judgement being covered in this law report.
This article was first published in The Malta Independent on 13/09/2023.
Author: Andrea Grima