06 June 2011

Trade Marks: Prince Ernst August of Hanover & Brunswick etc v OHIM

The challenge by the Prince of Hanover to the decision of the First Board of Appeal upholding the examiner's decision to dismiss the Prince's application to register his family coat of arms as a trade mark is a peach of a case. Unfortunately, the transcript of T-397/09 Prinz von Hannover v OHIM [2011] T-EUECJ 397/09 (25 May 2011) is in French. No English or even Anglophone judges or lawyers seem to have taken part.

Before I go into the facts of the case it is worth reading the Wikipedia articles on the House of Hanover and the House of Windsor for some background. It will be seen that the link with Hanover was broken when Queen Victoria acceded to the throne. The royal family changed its name from Saxe-Coburg and Gotha to Windsor at height of the First World War - just about the time of the Bolshevik revolution in Russia. The current head of the House of Hanover is Ernst August V, Prince of Hanover, the third husband of Princess Caroline of Monaco.

His Royal Highness (if that is how he is to be styled) or Monsieur Ernst August as the applicant's name appears in the law report applied to register the following sign as a Community trade mark for a large number of goods and services in classes 16. 25, 28. 32, 33, 35, 39. 41 and 43:

Looks familiar? Well that's what the examiner thought when he (or she) rejected the application on the ground that it was uncannily similar to the coat of arms of the United Kingdom which is protected under art 6ter of the Paris Convention. The Prince appealed to the Board of Appeal which upheld the examiner.

In an action in the General Court against the Board's decision before Judges Czucz, Lubucka and Gratsia, Prince Ernst August argued that there are significant differences between his sign and the royal coat of arms and that they are put to different uses. Rejecting his argument, the Court held that art 7 (1) (h) of Regulation 208/2009 precludes the registration of signs that fall within the scope of art 6ter of Paris unless such registration is authorized by the competent authorities whom I assume to be Cam, Clegg & Co. in this case. Although the transcript is not altogether clear on the point the Prince seems to have argued (possibly with some justification) that his coat of arms had been in his family just as long as they had been with our royals. The Court held that did not matter when the arms were protected as national emblems under the Paris Convention. Also, they added that Arthur & Felicie [2005] ECR II-4891 doesn't apply since art 6ter prohibits similar as well as identical signs.

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