A city logo as a trademark?

According to trademark law, a trademark is intended to indicate the commercial origin of a product or service. For this reason, certain symbols cannot be registered as trademarks. National flags, coats of arms, or signs of public interest are, for example, excluded from trademark protection under the Paris Convention. That makes sense: it would be odd if a company could claim exclusive rights to, say, the Swedish coat of arms.

Whether a country can enjoy additional trademark protection is currently being tested with Sweden’s recent application for the trademark “Sweden.” While this is still pending approval, it’s important for other institutions to protect their name or logo through a trademark registration, since they don’t automatically fall under such exemptions. Public institutions can certainly benefit from a strong brand strategy.

In 2022, Luxembourg-based company BMB Ressources, known commercially as Promanté—a producer of industrial adhesives and maintenance products—tried to register a new figurative trademark. Their design closely resembled the lion that the city of Luxembourg has used as its symbol since 1998 — and had registered as a trademark. The city filed an opposition with the Benelux Office for Intellectual Property (BOIP).

According to the BOIP, both lions were visually very similar. But in trademark disputes, visual resemblance isn’t the only factor. The goods or services for which the trademark is registered also matter. These must either overlap, be similar, or be complementary. In this case, the trademarks overlapped in only two classes, but the city of Luxembourg attempted to show that Promanté’s other classes were closely related to theirs.

Luxembourg also claimed that their trademark was well-known and therefore deserved broader protection — but the evidence provided was insufficient. Understandably so, given that the threshold for proving notoriety is quite high.

Ultimately, the BOIP partially sided with Luxembourg: because their trademark was protected for ‘materials for artists’, Promanté could not register their trademark for paints and related goods. Even though not in the same class, these were seen as highly similar. For the other goods, Promanté’s trademark remained valid. Whether this will stand is uncertain, as an appeal has already been filed against the decision.

Read more about Brand Twins and how they can coexist in this blog. This includes a reasoning on how Lotus (cookies), Lotus (cars), and Lotus (toilet paper) can live in harmony.

Strikingly, Promanté had already been using the lion logo in practice for fifteen years and had even registered it in 2009 in combination with their brand name. That adds an extra layer of nuance. Because anyone who passively observes for years without objecting may be seen as having implicitly accepted the use. A swift response is crucial.

This case illustrates how important it is for governments to not only register their emblems, logos, and names as trademarks but also to actively monitor and enforce them. That’s the only way to prevent confusion, reputational damage, or unwanted associations.

At Remarkable, we support governments and public institutions every day in smart brand management. Questions about how best to protect your emblem or logo? We’re happy to help you think it through.