Maple Leaf Melee

A recent CTM case concerning an iconic Canadian symbol caught our attention.

The dispute between American Clothing Associates SA and the Office for Harmonisation in the Internal Market (“OHIM” – the body that administrates the Community Trademark System) focuses upon the Canada’s well-known maple leaf symbol–stylized versions of which appear as part of our own logo, above.

The case considers the extent to which national symbols are afforded protection under the Community Regulation 40/94 and under the Paris Convention.  American Clothing Associates SA (“ACA”) originally sought to register a logo made up of the Maple Leaf symbol, with the letters RW located beneath, for use in association with both goods and services.

OHIM’s examiner refused the initial application concluding that the mark as a whole would improperly connote an association with Canada.  ACA appealed and lost again, the Appeal Board noting that the inclusion of the RW element in the mark did not avoid the application of Article 6ter of the Paris Convention which prohibits the use of marks incorporating State indicia without consent.

ACA appealed yet again, and this time was partially successful.  The Court of First Instance concluded that Article 6ter of the Paris Convention applied only to goods and not to services. As such, the ACA’s application was not prohibited as to services.  Perhaps unsurprisingly, appeals of that decision were filed by both parties–by the ACA, as to the application of Article 6ter, and by OHIM, that Article 6ter and the applicable Regulation applied only to wares.

In mid-May, the European Court of Justice’s Advocate General issued a recommendation that the ACA’s appeal be dismissed and OHIM’s appeal be granted on the basis that Article 6ter of the Paris Convention should apply to goods, and the Regulation should apply to services.  On this approach, the RW and Design mark would accordingly be unavailable for use or registration by ACA.

We’ll keep you posted on new developments in this maple leaf melee.  If ACA loses again, we fully expect that it will seek whatever further appeals are vailable to it, given not only its actions thusfar, but the considerable number of marks it owns that integrate, in whole or in part, State indicia and stylized derivatives from the United States and Canada.

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About the Blog

The authors of the Canadian Trademark Blog are all members of the Canadian law firm Clark Wilson LLP, based in Vancouver, Canada. Each author's practice focuses–either in whole or in substantial part–on Canadian intellectual property law. Together, they manage the trade-mark portfolios of local, national and international brand owners in nearly all industries and markets.

The Authors