08020159, LLM Dissertation
Public Order and Morality as Grounds of Refusal.
European Concept and Comparative Approach
Cheryl Greig
08020159
08020159, LLM Dissertation
This dissertation is submitted in part completion of study for the award by the
University of Glamorgan of the degree of LL.M. in the academic year 2011-2012.
_____________________________
Cheryl Greig
________________________
Date
This dissertation is my own work. All sources used, quoted, summarised and
otherwise referred to within are fully credited and cited in the foot/endnotes and
the Bibliography.
__________________________
Cheryl Greig
_____________________
Date
08020159, LLM Dissertation
Table of Contents
Table of Contents
Abbreviations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2
Why we have Trademarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .4
Brief history of Trademarks . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
FOCUS OF THIS PAPER . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6
CHAPTER 1
Why is there a need to protect society from trademarks based
on public order and morality . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7
Chapter 2
How did public order and morality find its way into the governing of
trademarks on a national and community level? . . . . . . . . . . . . . . . . . .12
Racial Slurs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .17
Profane and Vulgar Matter . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17
Trademarks relating to sexuality and innuendos . . . . . . . . . . . . 24
Promoting Illegal Activity . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28
Chapter 3
Religion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .29
Chapter 4
Who determines if a trademark application breaches the
public order and Morality clause found in Legislation . . . . . . . . . . . . . .36
OHIM Trademark Examiners . . . . . . . . . . . . . . . . . . . . . . . . . . .36
UK Registry Examiner’s Guidelines . . . . . . . . . . . . . . . . . . . . . .37
Appeals . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 39
Chapter 5
Should there be a centralised definition of both public
order and morality to provide guidance with which the
trademark examiners can access when dealing with
questionable trademarks? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41
Austria . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .42
Belgium . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .43
Brazil . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .43
Bulgaria . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .43
Cyprus . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .43
Czech Republic . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .44
Denmark . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .44
08020159, LLM Dissertation
Estonia . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 44
Finland . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 44
France . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .44
Germany . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .44
Greece . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 45
Ireland . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 45
Italy . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .45
Latvia . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 46
Lithuania . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .46
Luxemburg . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 46
Malta . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .46
Netherlands . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 46
Poland . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 46
Portugal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 47
Romania . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 47
Slovakia . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 47
Slovenia . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 47
Spain . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 47
Sweden . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 47
United Kingdom . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .47
Chapter 6
Does refusing a trademark breach Article 10 of the ECHR? . . . . . . . 50
Chapter 7
Does OHIM work? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 56
Chapter 8
Will public order and morality cease to be so important in the
future of trademarks? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .59
Definitions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .63
Bibliography . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 64
08020159, LLM Dissertation
Abbreviations
BBIP
Benelux Bureau for Intellectual Property
CTM
Community Trade Mark
CTMR
Community Trade Mark Regulation
ECHR
European Convention on Human Rights
ECtHR
European Court on Human Rights
EU
European Union
OHIM
Office of Harmonisation in the Internal Market
PC
Politically Correct
TM Act
Trade Mark Act 1994
TRIPs
The Agreement on Trade-Related Aspects of Intellectual Property
Rights
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08020159, LLM Dissertation
Introduction
After struggling to define a dissertation topic, our Research Methods class was
told about the OHIM Universities Network Program, where topics are presented
by senior OHIM officials for LLM students to research. While reviewing the
topics, I found the topic of this dissertation. After deciding on a topic, the
students were then given the opportunity to present their research at OHIM, in
Alicante, Spain.
I have always believed that my life was directing me towards Criminal Law, but I
found my Intellectual Property Law classes to be stimulating which made me reevaluate my career choice. This topic has allowed me to extend my knowledge
of Intellectual Property. Upon initial research of this topic, I found myself asking
more questions of what I was researching. These questions I feel are relevant
with this topic and therefore make up the chapters of this dissertation.
Trade marks (also known as marks) which are thought to be contrary to public
order or the accepted principles of morality are based on the public’s perception.
Each individual must therefore look at their own values and morals in order to
make the decision if the mark is offensive.
The best way I feel I can illustrate the reason for refusing a trade mark on the
basis of Article 7(1)(f) Community Trade mark Regulation is not to reinvent the
wheel, but rather to use decisions which have already been made by OHIM and
the ECJ as well as pulling information from journal articles to help form the
discussion on matters dealt with in this paper.
In no relation to any pertinent information about the topic, I would like to take this
time to thank a couple of people for their support during the LLM and this
dissertation. I would first like to thank Colin Davies for agreeing to be my tutor
on this paper and having the faith in me to represent the University of
Glamorgan in presenting my research to OHIM Officials and other Intellectual
2
08020159, LLM Dissertation
Property Students from all over the European Union at the OHIM Universities
Network meeting in May 2012, in beautiful Alicante, Spain.
I also need to say thank you to my husband, John, for all of his support during
my studies at University while studying the Llb and now the LLM. Without his
love and support I could not have succeeded at achieving my childhood dream
of becoming a solicitor. His faith and continuous support has helped me to
achieve what I had always believed to be an unreachable dream. Lastly, I would
like to thank my children; Tabitha and Stephanie for all of their encouragement
and helping me to maintain my sanity during my law studies, especially in the
drafting this paper. Even though they have a hard time understanding what I
have written, they were always willing to give their opinion and their editing
skills.
I hope you find this paper informative and enjoy reading it.
3
08020159, LLM Dissertation
Why we have trademarks
Companies and individuals (they will be referred to hereinafter as ‘undertakings’)
spend millions on advertising each year looking to promote themselves and their
products; this is why virtually everywhere you look you are bombarded by trade
marks, from small things like chewing gum to large items such as automobiles.
In an attempt to get their products to stand out from other undertakings, they
must make them distinctive and to do this some businesses have taken to
‘shock’ the public in an effort to get the public to associate the company name
with the product. Shocking the public can range from being erotic, morally
offensive, and vulgar or just in bad taste.
Undertakings must be extremely cautious when designing a trade mark intended
to ‘shock’ people as there are groups of society which may consider the trade
mark offensive. It is for this reason that there are laws in place allowing
undertakings to promote their products by registering their trade mark and
protecting members of the public from being offended at the same time.
Brief history of Trademarks
Merchants and craftsmen in the early ages wanted to be able to distinguish their
goods or services from others and in an effort to distinguish their goods they
began to mark their work. Later in the Middle Ages, France began to require
painters to register their mark in accordance with the 1426 Ordinance of the
Corporation of Painters of Bruges; whereby if they failed to register their mark, it
was considered a punishable offence. These marks were used to identify
substandard products, and as result of this the marks were considered a
liability 1.
1
Radler, D., The European “Community Trade Mark”: Is it worth the bother?, Marquette Intellectual
Property Law Review, 1997, vol. 1, issue 1 – Article 6
4
08020159, LLM Dissertation
The first recorded ‘trade mark infringement’ case was in 1440 in England. A
baker who made fresh bread outside of the London area marked his bread with
‘3 prikkys’ and proceeded to sell his break within the London area. The problem
which ensued was another baker, Mr. Hobold had been using the ‘3 prikkys’ to
mark his bread which was baked in his bakery on Clement Lane 2. At this time in
history, bakers were required to mark their products in order to distinguish their
bread from others. Mr. Hobold brought this ‘infringement’ because he did not
want his name to be associated with an inferior product. Mr. Hobold believed
person’s purchasing the ‘other’ bread would be under the assumption they were
purchasing Mr. Hobold’s bread; and did not want to be held liable for a
substandard product. Mr. Hobold was granted an injunction and the other baker
was prohibited from selling bread with the ‘3 prikky’s’ in the London area 3.
Later in the 15th Century, marks had become more recognizable by consumers
insomuch that linen which showed the mark of Osnabruck sold for a higher price
than linen not produced in Osnabruck4. This shows that even in the early
centuries people were associating marks with quality goods or services, over
those goods or services produced without marks.
Up until the Community Trade mark system began countries had the
responsibility of maintaining their own Trade mark Regulations which was
viewed as problematic since trade mark laws varied considerably between
countries that recognition of another country’s trade mark was difficult.
Although, even with the CTM system in place Member States continue to be
responsible for trade mark registration in their own State if the undertaking does
not wish to have the trade mark registered within a number of EU Member
States.
Under Article 4 of the Community Trade mark Regulation a trade mark is defined
as:
2
Radler, D., The European “Community Trade mark”: Is it worth the bother? Marquette Intellectual
Property Law Review, 1997, vol.1, Issue 1, Article 6
3
Ibid, no. 2
4
Ibid, no. 2
5
08020159, LLM Dissertation
“Any signs capable of being represented graphically, particularly words,
including personal names, designs, letters, numerals, the shape of goods
or of their packaging, provided that such signs are capable of
distinguishing the goods or services of one undertaking from those of
other undertakings 5.”
Focus of this paper
This paper will be focusing on the absolute ground of refusal of Article 7(1)(f)
Community Trade Mark Regulation, European concept. I have broken this topic
down into 8 chapters, which seek to answer questions which I have asked
myself whilst conducting the research for this topic.
Chapter 1 will consider why there is a need to protect society from Trade Marks
which are considered to be contrary to public order or morality. It will examine
the government’s responsibility to its citizens to keep them safe, and look at why
Bentham and Kant believed that a society needs protection. Also to be
examined will be case law which demonstrates the pressing need to ensure
Trade Mark applicants are aware of what is acceptable to be registered as a
trade Mark as far as Article 7(1)(f) CTMR and National Trade Mark Law is
concerned.
Chapter 2 will examine how public order and morality found its way into the
Community Trade Mark Regulation. This chapter will define whose set of
standards are to be applied in deciding if a trade mark is offensive. This will be
accomplished by breaking down case law into the relevant categories of
offensive marks.
Chapter 3 will delve into the religious aspect of trademarks such as how religion
has played a part in defining what an acceptable trade mark is and if religion has
had any influence on the registration of trade marks.
5
Article 4, Community Trade Mark Regulation
6
08020159, LLM Dissertation
Chapter 4 moves on to look at who determines if a trade mark application
breaches the public order and morality clause found in legislation. Chapter 5
considers if it would be better for all concerned with trade mark law to have a
centralized definition of public order and morality. Chapter 6 will be focusing on
if the trade mark applicant is likely to suffer any Human Rights violations by
having their trade mark refused on the grounds of public order or morality.
Chapter 7 will analyse if OHIM works in regards to preventing offensive material
from being trademarked, while Chapter 8 will look into whether or not public
order or morality will continue to be so important in the future of trade marks.
Chapter 1
Why is there a need to protect society from trade marks
Based on public order and morality?
A society is a fragile thing. Millions of people who are a mixture of ethnicities,
religions and cultures are attempting to live together harmoniously. With so
many differences it is sometimes difficult to not offend someone; some people
offend a certain group on purpose, but many times it can be by accident. Saying
or doing something which you consider to be funny may actually insult or cause
harm to someone nearby who accidently overhears or oversees the action. This
is a consequence of so many people living in close proximity to each other, and
as such people must know that there are rules which must be adhered to and if
broken what the consequences will be.
It is the government’s responsibility to protect all of its citizens equally. For this
reason a Member State must be able to determine its own moral values in
whatever form they see fit to meet the requirements and needs of its citizens
and to ensure public morality is maintained in their State 6. This is accomplished
by creating public policies and regulations, moreover, regulations are slow to
change where on the other hand public policies can change quickly to ensure
6
Henn and Darby (1979), Case 34/79
7
08020159, LLM Dissertation
the needs and requirements of a States’ population are met. Therefore, as a
society changes and evolves over time, so does public policy. The European
Court of Justice (ECJ) agrees with this concept as demonstrated in the Van
Duyn 7 where they commented “that public policy was a territorial concept that
may evolve over time 8,” and as such recognised that Member States could
change the content of their public policy as and when it is deemed necessary to
keep up with the evolution of the members of their societies and their activities.
To be recognised as public policy, rules must meet two criteria, the first being
that “it must address a real and severe enough danger and not just any violation
of a rule, and the second that the goal of the public policy rule must be to protect
a fundamental interest of the society concerned 9.”
Bentham and Kant believed that a society needs protection 10, however, each
hold a belief that morality has a place in the functioning of a cohesive society;
although to what degree cannot be decided. Bentham, a Utilitarianist, believed
in the principles of pleasure and pain whereby morality and legislation needed to
balance pleasure over pain 11. His thinking was, “if a majority if big enough and
their dislike is strong enough then the offending material should be banned,”
thereby establishing the ‘happiness’ principle 12. Bentham’s thinking appears to
have a flaw, it does not provide for the quality or moral significance of those
preferences. If you contrast Bentham’s belief with that of Kant who was under
the belief that morality means respecting the person as ends themselves and
not treating them as a means. Whereas, Aristotle believed that people are by
7
Yvonne Van Duyn v Home Office [1974] ECR, Case 41/74
Ibid, no. 7
9
Regina v Pierre Bouchereau Case 30/77, [1977] ECR, 1999
10
Warburton, N., Interview: Michael Sandel on Justice,
www.prospectmagazine.co.uk/magazine/interview-michael-sandel-on-justice-bbc4-justice-citizensguide/, accessed 15/5/2012
11
Ibid, no. 10
12
Ibid, no. 11
8
8
08020159, LLM Dissertation
nature political beings, and cannot live a “full human life except as members of a
political community13.”
Patrick Devlin believed that the State can claim to legislate on two grounds with
matters concerning morality, they are: the Platonic Ideal and the Alternative
Ground 14. The Platonic Ideal is said to consist of the idea that the State exists
only to promote value among its citizens and it is the right and duty of the State
to declare which standards of morality are to be observed as virtuous and must
make the laws as they see fit in order to meet those standards15. The
Alternative Ground bases its concept that society legislates to preserve itself 16.
Public order and morality also plays an important part in how trademarks are
determined to be considered as registerable or not. In trade mark law, public
order derives from the French term ‘Ordre Public’, which is believed to translate
into English as: “that which concerns fundaments from which one cannot
derogate with endangering the institutions of a given authority.” Morality is
defined by the Oxford dictionary as “a degree of conformity to moral principles
(especially good); that which includes the totality of the accepted norms which
are deeply rooted in a particular culture 17.”
Just as it is a government’s duty to protect its citizens, OHIM has the
responsibility to protect the citizens of the Member States from marks which are
considered ‘contrary to public policy or to the accepted principles of morality18’
and to ensure they are not confronted by trademarks which disturb, abuse, insult
or threaten them. It is hard to imagine that trade mark laws can prevent the
public from being threatened, however, when a mark is associated with terrorism
the public’s perception of the mark will be that the product may in some way be
13
Ibid, no. 12
Warburton, N., Interview: Michael Sandel on Justice,
www.prospectmagazine.co.uk/magazine/interview-michael-sandel-on-justice-bbc4-justice-citizensguide/, accessed 15/5/2012
15
Ibid, no. 14
16
Ibid, no. 15
17
The Concise Oxford Dictionary, p. 637
18
Article 7(1)(f) Community Trade mark Regulation
14
9
08020159, LLM Dissertation
associated with that group. This was the case when the name Bin Laden 19 was
applied for as a trade mark. As the applicants were a Saudi Arabian company
which had been conducting business in Europe for a number of years, this was
not disputed. What was disputed was the fact that after the events of
September 11, 2001 the name Bin Laden would only be associated with being
the leader of an Islamic extremist group. Therefore, the application was refused
since acts of terrorism are considered “absolutely contrary to the ethical and
moral principles recognized in the Member States of the EU and all civilized
nations 20.” Other names which are associated with terrorism have also been
refused by OHIM, such as eta and IRA.
There are times when a trade mark may incite the public to become violent,
even though the intention of the mark was not to encourage violent behaviour. It
therefore becomes imperative to protect the public from marks which appear to
have associations with known gang behaviour. Sporting Kicks Ltd 21 was
refused trade mark registration of the crossed hammer with the interCity logo;
the crossed hammer was very similar to that of the West Ham Football Club,
while the interCity logo was associated with a gang of football hooligans. This
gang used the interCity rail to travel to football matches where the West Ham
Football Club was playing; this gang had gained the reputation as hooligans
because of their violence and sometimes vicious behaviour to supporters of the
other team. The refusal was based on the fact that the trade mark could be
perceived by football fans as a threat that the gang had been reformed and their
antics for anti-social behaviour would return and cause harm or distress to the
public.
The public needs protection from the memories of the past deeds of the Nazi
regime; they do not need trademarks to remind them of the terrible times during
their reign. This appears to be a perfectly balanced reason for denying the
registration of a trade mark on the grounds of public order or morality. In the
19
Bin Laden Trade mark Application Number: 02223907, Case: R0176/2004-2
Ibid, no. 19
21
Sporting Kicks Ltd Trade mark Application [2007] ETMR 10
20
10
08020159, LLM Dissertation
Netherlands, the Benelux Bureau for Intellectual Property (BBIP), an application
for a figurative mark containing a gnome who was wearing a swastika on the
sleeve with the other hand raised in the all too familiar Nazi-salute was received;
the application was refused on the grounds of public order or morality. The
applicant then presented the application for a second time with one change, the
swastika on the arm band was changed to a question mark, however, the
gnome still depicted the Hitler-salute. This second application received trade
mark registration. It would appear that the Nazi-salute did not cause offence
which seems odd to this writer, since it is readily associated with the Nazi’s and
it is not considered to be politically correct to do this salute in the current
environment. It would seem that if the German people are trying to put the past
behind them, this Nazi salute would also have to be determined to be offensive
to the German people.
It has been established in this chapter, that without public order or morality as
the basis of laws, civilized societies could not exist. The government either on a
national or European level have the task to implement regulations and policies
to protect their citizens from harm, either real or perceived. We have seen that
protection can be changed as society evolves and the needs and requirements
of the citizens increase or decrease. As an extension to the government’s arm
of protection, trade mark laws were developed to ensure the public’s safety from
trademarks which would violate the established norms of society by violating
those rules already established.
Since society is so fragile, trade mark laws provide added protection to the
public to ensure peaceful co-existence between all persons in a society. To
enjoy this peaceful co-existence, certain precautions must be made to ensure
that the public is protected from being exposed to marks which have the
capacity of causing fear to people due to being associated with terrorist
11
08020159, LLM Dissertation
organizations or gang violence. Certain marks can also remind people of past
atrocities which others have been attempting to change the perception of 22.
Chapter 2:
How did public order and morality find its way into the
governing of trade marks on a national and community level?
The first international treaty for the protection of intellectual property rights was
the Paris Convention for the Protection of Industrial Property. The objective of
what is now known as just the Paris Convention was to harmonize trade mark
law and to set out rules with which all Member States need to follow. Article
6quinquies(b)(iii) of the Paris Convention states that a trade mark can be denied
registration by being declared contrary to public order or morality which will
invalidate the registration of the trade mark. The Paris Convention does not
carry any forcible requirements on a Member State until such a Member State
implements it into their national law.
The Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPs) was agreed in 1994 and it does not directly refer to public order or
morality as a ground for refusing trade marks in its principles. What it does do is
it gives Member States the authority to refuse trade mark registration based on
Article 15(1) of the TRIPS agreement, providing they adhere to the provisions
laid down by the Paris Convention. The TRIPs agreement does direct persons
to Article 6quinquies(B)(iii) of the Paris Convention which provides for trade
marks to be declared invalid based on public order or morality.
Prior to these legislations being implemented, if an undertaking wanted to
register a trade mark throughout the European Union (EU) applications would be
22
This is referring to the German people, who have been attempting to change attitudes of people which
were affected by the Nazi regime.
12
08020159, LLM Dissertation
required to go through “13 different registration systems in 11 different
languages 23,” thereby making trade mark registration difficult, expensive and
taking a considerable amount of time. In an effort to integrate trade mark laws
amongst Member States the European Council enacted Directive 89/104 in
1988, whereby harmonization of the Member States Trade mark laws was
proposed.
The Directive required all Member States of the EU to modify their trade mark
laws to conform to the new Directive. This requirement did not prevent
individual Member States from establishing their own procedures for the
registration of trade marks. The Directive continued to require applicants to file
applications in the same manner as before the Directive came into force. This
established a need to consolidate the application and registration process into a
single process. The Directive established the Community Trade mark Regulation
(CTMR) in 1994. The CTMR has been updated many times since 1996 with the
latest being in 2009, with Council Regulation (EC) No. 207/2009 and continues
to be referred to as CTMR. The CTMR applies to the registration of an
“individual trade mark, collective mark, or a guarantee or certification mark if the
mark is subject to registration in a Member State 24.”
Within the European Union (EU) Trade mark laws are governed by the
Community Trade mark Regulation (CTMR) and are designed to protect
consumers throughout the EU from marks which are “contrary to public policy
and the accepted principles of morality 25.” However, Member States within the
EU still maintain trade mark laws for the purpose of protecting consumers from
offensive trademarks which will not be registered within the entire EU. There
are no definitions provided for in either the Member States or the EU
Regulations for ‘public policy’ or ‘morality’. So how do undertakings know what
23
Radler, D., The European “Community Trade mark”: Is it worth the bother? Marquette Intellectual
Property Law Review, 1997, vol.1, Issue 1, Article 6
24
Radler, D., The European “Community Trade mark”: Is it worth the bother? Marquette Intellectual
Property Law Review, 1997, vol.1, Issue 1, Article 6
25
Article 7(1)(f) Community Trade mark Regulation
13
08020159, LLM Dissertation
will be accepted or rejected when applying for a trade mark? The answer is
simple, they don’t.
Both the Directive and the CTMR require only that marks which can be
graphically represented and capable of distinguishing the goods or services from
other goods or services 26. They also agree on the grounds which a trade mark
can be refused. There is however, a distinct difference between the Directive
and the CTMR; Member States are required to enact laws to be in line with the
Directive which will be effective only within the Member States’ Borders. The
CTMR provides universal trade mark protection throughout the EU. It does this
by establishing trade mark laws which enhance Member States current trade
mark laws, which are then enforceable throughout the EU27.
This new unitary trade mark system needed to be managed, whereby the Office
of Harmonisation in the Internal Market (OHIM) was established in 1996. The
OHIM office is situated in Alicante, Spain and it is their mission to manage the
Community Trade mark (CTM) and the Community Design Registration
System 28. OHIM carries out the “examination, registration, opposition and
cancellation procedures for CTMs 29.”
The above breakdown on the legislation in place which governs trademarks
provides a useful foundation to the understanding of how public order and
morality found its way into trade mark law. What also needs to be discussed is
the government’s responsibility to protect their citizens and why the EC
extended this protection of its community citizens to OHIM, whereby it is their
responsibility to ensure that the public is not confronted by trademarks which
appear to be ‘contrary to public order or the accepted principles of morality’. On
the European level this protection is found in Article 7(1)(f) CTMR, this authority
26
Directive 89/104, Art. 2., Regulation 40/94, Art. 4
Radler, D., The European “Community Trade mark”: Is it worth the bother? Marquette Intellectual
Property Law Review, 1997, vol.1, Issue 1, Article 6
28
www.OAMI.europa.eu/ows/rw/pages/OHIM/Institutional/institutional.en.do, accessed 17/6/2012
29
Ibid, no. 28
27
14
08020159, LLM Dissertation
applies to any undertaking seeking a trade mark to be registered in all or some
Member States and each Member State of the EU has in place Trade mark
Laws for those seeking registration only in one Member State.
These trade mark laws incorporate the wording found in the regulations which
govern their citizens. What all these trade mark laws have in common is the fact
that they are designed to ensure no one group of its citizens are offended by
undertakings seeking to ‘shock’ people with their trade marks. There was a
problem though. How many people would constitute an acceptable cross section
of the population which would perceive the trade mark as being offensive? This
was answered by the Court in Ghazilian’s 30 trade mark application where a
dividing line was drawn between that offence which amounts to distaste and that
which is possible to “justifiably cause outrage or would be the subject of
justifiable censure as being likely significantly to undermine current religious,
family or social values 31.” Thereby if a mark is deemed merely distasteful it will
not be enough to justify the mark being rejected as a registered trade mark 32.
But whose standards are to be used to determine if a trade mark is offensive? It
cannot be someone who is easily offended nor someone who is unshockable; it
is therefore necessary to look at the values and standards of the average person
who falls in the middle of the two extremes33. In my first year of law school, we
were taught about the ‘man on the Clapham bus’ in Tort class. This ‘man’ was
described to us as a reasonable person who is educated, intelligent and has an
average job. This ‘man’s’ conduct could act as a “yardstick” for determining if
the conduct of others is acceptable or not 34. Saying this, not all Member States
are familiar with the ‘man on the Clapham bus’, which is why the Grand Board in
Screw You 35 needed to be able to describe what they defined as a ‘reasonable
30
Ghazilian’s Trade mark Application [2002] ETMR 63
Ibid, no. 30, para. 30
32
Ibid, no. 31, para. 20
33
Jebaraj Kenneth Trading as ‘Screw You’, Case: R495/2005, [2007] ETMR 7
34
Ibid, no. 33
35
Ibid, no. 34
31
15
08020159, LLM Dissertation
person’, they then went on to say that they considered him to be a person with
“normal levels of sensitivity and tolerance 36.”
However, what may seem harmless to one group in the society may prove to
cause outrage to others, such as in the case of Couture 37, which was about the
registration of the symbols connected with the former USSR. These symbols
would be considered by a substantial amount of people who had been
previously subjected to the Soviet Regime as “contrary to public policy and the
accepted principles of morality 38.” Whereas, people not personally affected by
the Soviet Regime may not find it offensive at all. They may, however, just
recognise it as the former USSR emblem.
When a mark may be seen as interfering with economic relations between
countries a mark may be refused in order to maintain the relations built up
between countries. This is the case of the mark application Not made in
China 39 which was seen to be so offensive to the Chinese citizens living and
working in the EU and the entire Chinese country. 10,000 signatures were
collected when this mark was in the application stage claiming the mark had the
possibility of “damaging the commodity issue and benefits of the distinctive sign
‘made in china, and hurt the feelings of the Chinese people 40.” This mark would
be seen as casting an unpleasant slur on the reputation of Chinese
workmanship and therefore its registration would fly in the face of the goodwill
which is to be wished for in Sino-European relations41, for these reasons the
mark was refused.
It has been said that offensive marks can be placed into seven categories; these
categories can be broken down as follows: religious nexus, racial slurs or
epithets, profane matter, vulgar matter, sexuality, innuendo, and those
36
Humphreys, G., Deceit and Immorality in Trade Mark Matters: Does it pay to be bad? Journal of
Intellectual Property Law & Practice, 2007, vol. 2, no. 2
37
Couture Tech Limited, Case T-232/10, General Court of the European Union
38
Ibid, no. 37
39
Not made in China Trade mark Application Number: 04631305 and 04631966
40
Ibid, no. 39
41
Ibid, no. 40
16
08020159, LLM Dissertation
suggesting or promoting illegal activity 42. Moreover, Steven Pinker believes that
there are 5 spheres of morality which are universally known as: community,
purity, authority, harm, and fairness43.
Racial Slurs
A racial slur is defined as a “derogatory or disrespectful nickname for a racial
group 44”, and an epithet is defined as a disparaging or abusive word or
phrase 45.”
It has become more apparent in the last ten years or so that people are
becoming more aware of their need to ensure that the words spoken or written
either in public or private do not contain racial slurs against any group of society.
This is now referred to as being ‘politically correct’ (PC). There are, however,
people who do not believe in this new way of communication and as such there
are criminal laws in place to protect groups of society from being called
derogatory or insulting names. It was therefore only a matter of time before trade
mark law would be presented with applications containing racial slurs or
epithets. In 2003 the German word for racism ‘Rassismus 46’ was denied trade
mark registration, and more recently in 2011 the word ‘Paki 47’ was refused
registration; ‘Paki’ is the slang word for persons from Pakistan and is perceived
as being a racist word. The applicant claimed that the Pakistan community
refers to “food and various products originating from South Asia 48” as ‘paki’ and
therefore is should not be considered as being derogatory or insulting to the
Pakistani people. The Board did not see the reasoning supplied by the applicant
and thereby held the original decision to refuse the trade mark would stand.
42
Baird, S., Moral Intervention in the Trade mark Arena: Barring the Registration of Scandalous and
Immoral Trade marks (1993) 83 TMR 661
43
Pinker, S., The Moral Instinct, 2008, The New York Times,
http://nytimes.com/2008/01/13/magazine/13Psychology-t.html, accessed 10/7/2012
44
www.dictionary.reference.com/browse/racial+slur, accessed 10/02/2012
45
www.merriam-webster.com/dictionary/epithet, accessed 10/02/2012
46
Rassismus Trade mark Application Number: 2994499
47
PAKI Logistics GmbH v OHIM T-526/09, Trade mark Application, Case R1805/2007-1
48
Ibid, no. 47
17
08020159, LLM Dissertation
Profane and Vulgar Matter
CAUTION: This section contains language which is considered offensive. It is
not the intent of this writer to offend any reader, however, to get to the
importance of what is considered to be profane or vulgar matter in trade mark
law it is necessary to write the words as written on the trade mark application.
Profane and vulgar matters are closely related in the scheme of language which
is considered to be offensive in and out of the boundary of trade mark law.
Profane is defined as “treating someone or something disrespectfully, especially
someone or something sacred 49”, whereas vulgar is the lack of taste, culture,
delicacy or manners50.” Both of these terms are usually used in the context of
swear words, such as ‘shit’, ‘fuck’ and ‘screw you’.
It is said that the average person uses swear words around 60-90 times a day 51,
and as such swearing is seen as a common behaviour. Moreover, language
used in the public domain needs to be suitable for everyone from children to the
elderly, the same holds true for trademarks.
Although the following case was eventually allowed to be registered as a trade
mark, it serves as an excellent example of how undertakings will attempt to push
the boundaries of what is considered offensive under the current trade mark
laws. FCUK 52 has been described as: “probably one of the most controversial
trademarks of all time and it has also been an extremely successful mark53.”
The fact that it may offend, annoy or shock older or conservative members of
49
www.dictionary.cambridge.org/dictionary/british/profanity, accessed 10/02/2012
www.collinsdictionary.com/dictionary/english/vulgar, accessed 10/02/2012
51
Jay, T., Do Offensive Words Harm People? Psychology, Public Policy, and Law, 2009, vol. 15, no. 2, 81101
52
FCUK, Trade mark Application Number: 2184549, Case: 0-137-06
53
Davies, C., Davies, R., Fighting Controversy in the UK: Morality and a trade mark application, [2003]
Business Law Review, 137 at 137
50
18
08020159, LLM Dissertation
the community clearly adds a marvellous frisson to the mark in the minds of the
mark’s younger, groovier target market 54.
French Connection UK, attempted to register FCUK 55 in the UK, and opposition
was filed, it was claimed that FCUK violated S3(3)(a) of the Trade mark Act
1994 as a ‘sign contrary to public policy or the accepted principles of morality.’
French Connection argued that it was not associated with the swear word ‘fuck’
and insisted that it was the initials for French Connection UK, and nothing else.
At the hearing it was said that French Connection knew that FCUK would be
considered as word play when deciding to use these four letters as their trade
mark 56, and they considered it as a joke and thereby the brand “is not the word
‘fuck’57 and as such the word play is used in their advertising. The gentleman
bringing the opposition, Mr. Woodman countered the word play argument with
saying “that the eye has a natural ability to correct mistakes, and to sort out and
reorder letters 58.” This writer is in somewhat of an agreement with Mr.
Woodman’s argument, this is because dyslexic persons perceive words
differently and therefore could interpret FCUK as the word ‘fuck’. This writer
has first-hand experience with dyslexia and must admit that when my daughter
wore a shirt with FCUK, I did interpret them as ‘fuck’; and when she finally
calmed me down and explained what it meant, I thought it was clever
advertising, but not all dyslexics have a person under the age of 25 to explain to
the concept behind FCUK. The mark was allowed trade mark registration since
French Connection was not seeking to register ‘fuck’ but FCUK and traders have
been selling FCUK products with a limited amount of opposition from
consumers.
54
Loughlan, P., OH YUCK! The Registration of Scandalous Trade Marks, http://ssrn.com/abstract: 939948,
accessed 17/5/2012
55
Ibid, no. 54
56
FCUK, Trade mark Application Number: 2184549, Case: 0-137-06
57
Ibid, no. 56
58
Ibid, no. 57
19
08020159, LLM Dissertation
Between 2001-2012, OHIM has had over 16 trade mark applications submitted
with undertakings seeking to register trademarks with the word ‘fuck’59. Some of
the applications submitted contained the words: JUST FUCKING 60, FIT
FUCKERS 61, MACHOFUCKER 62, F_CKFACE 63, and Fuck of the Year 64, all
were refused on the grounds of ‘contrary to public order or the accepted
principles of morality’ found under Article 7(1)(f) CTMR 65.
A trade mark can be refused if it is so closely related to a swear word that when
pronounced it can be interpreted as a person using a swear word. This
happened in the FOOK 66 trade mark application. It was stated that when
pronounced in certain parts of the UK it would be pronounced as ‘fuck’, and
thereby was rejected due to the fact that the general use of the word was “likely
to cause justifiable outrage amongst a significant section of the public 67.”
After his application for FOOK 68 was rejected, the applicant submitted another
trade mark application, this time for “There ain’t no F in justice 69.” This seems
like an attempt to get one over on the trade mark system for refusing his prior
trade mark application. Saying this, the new trade mark application passed the
requirement of s3(3)(a) Trade mark Act 1994, however, it was rejected on the
grounds of s3(1)(b) Trade mark Act 1994, for the lack of distinctiveness
character. The refusal was based on the fact that the sign would not be seen as
a trade mark without educating the public that it was actually a trade mark and
what goods or services it would be associated with 70.
59
OHIM TM’s rejected
Just Fucking Trade mark Application Number: 08123961
61
Fit Fuckers Trade mark Application Number: 07497795
62
MachoFucker Trade mark Application Number: 09938119
63
F_ckface Trade mark Application Number: 08411787
64
Fuck of the Year Trade mark Application Number: 305399
65
Article 7(1)(f) Community Trade mark Regulation
66
Fook Trade mark Application O-182-05
67
Ibid, no. 66
68
Ibid, no. 67
69
There ain’t no F in justice trade mark application O-177-07
70
Ibid, no. 69
60
20
08020159, LLM Dissertation
OHIM was presented with a trade mark application for ‘Fucking Hell 71’ for goods
in the beers and alcoholic beverages class. In all accounts, by applying the
above words as being contrary to public order or morality, this application should
have been refused. The examiner did refuse the application; however, the
applicant appealed the examiner’s decision. Evidence was provided to show
that ‘Fucking’ was an actual village in Austria as well as a type of beer and in
German, ‘ein helles bier’ has the meaning of ‘pale beer’, thereby providing a
description of the product 72. The Board of Appeal determined on the evidence
provided that there was no valid reason to object to a beer which is named after
a village along with the indication of being ‘pale’. The words ‘Fucking Hell’ fails
to incite a particular act and is not considered as profanity, it is merely an
expression used to indicate condemnation, but fails to direct it to any one certain
person. For these reasons, the trade mark was allowed to be registered.
Screw you is another popular swear word, however, there are times when it will
not be considered as an automatic refusal, these are considered exceptional
circumstances and can be allowed for certain categories for goods or services,
yet refused for other classes. This is what happened in the Screw You 73 case,
where the applicant was seeking a Community Trade mark. The Examiner at
OHIM stated that the word ‘screw’ was equivalent to the swear word ‘fuck’, and
therefore the screw you expression was to be considered as profanity which is
commonly used to insult a person 74.
The applicant commented that the words screw you could be heard in the UK
TV show ‘Eastenders’, therefore the population of the UK did not perceive the
term screw you as profanity. The applicant’s argument was countered by the
fact that the language heard on British television programmes before the
watershed time of 9pm is not a decisive determination when considering how
offensive the public will perceive it to be, if only hearing it briefly once or twice in
71
Fucking Hell Trade mark Case: R0385/2008-4 OHIM Board of Appeal
Fucking Hell Trade mark Case: R0385/2008-4 OHIM Board of Appeal
73
Screw You R-495/2005-G
74
Ibid, no. 73
72
21
08020159, LLM Dissertation
a programme compared to the words ‘Screw You’ being seen every day in
advertisements. It is believed the level of offence would be greater in the latter,
since exposure is more constant and the public would not be able to switch
channels or turn off the advertisement as they can when watching a television
programme 75. It was considered therefore that Screw You was in fact viewed as
profanity, no matter the context in which it is used.
It must be remembered that children and the elderly will also be subjected to
advertisements as well as persons with “normal levels of sensitivity 76.” It was
considered that a “substantial portion of ordinary citizens in Britain and Ireland
whose values and standards are representative of society as a whole would find
the words Screw You offensive and objectionable 77.” This is especially true if
children and the elderly are exposed to the words Screw You in shops, on
televisions and clothing. The Board went on to decide that the term Screw You
could only be used for items sold exclusively in sex shops. This was decided on
the basis that person’s entering a sex shop are used to seeing or hearing “crude
and sexually charged language 78.” It was also decided that ‘artificial breasts’
and ‘breast pumps’ in class 10 may proceed only if the specification is
sufficiently modified to only cover ‘artificial breasts’ and ‘breast pumps’ which are
“normally sold exclusively in sex shops 79.”
This case demonstrates even though a trade mark application contains words
considered to be profanity, the mark may be approved, albeit with conditions
applied to it as to where the goods or services can be sold.
More recently a trade mark application was presented to the UKIPO seeking
registration for the word mark JACK SCHITT 80 for clothing. Opposition was filed
by Mr. Evans and his objection was on the grounds of Section 3(3)(a) and
5(2)(b) Trade mark Act 1994. Mr. Evans stated that in 2001 he attempted to
75
Screw You R-495/2005-G, para. 25
Screw You R-495/2005-G, para 26
77
Ibid, no. 76 para. 26
78
Ibid, no. 77, para 29
79
Ibid, no. 78, para 30
80
Jack Schitt Limited Trade mark Application Number: 251247, opposition thereto under No. 98836
76
22
08020159, LLM Dissertation
register the words JACK SCHITT and all variations were refused on the grounds
of offending public taste and morality. Although, Mr. Evans appealed the
original decision and was finally granted trade mark registration of JACQUES
SCHITTE. Mr. Evans stated that “since my original application, it is still the case
that many people find JACK SHITT to be more offensive than JACQUES
SCHITTE and therefore contrary to accepted principles of morality 81.” The
applicant countered Mr. Evans’ remarks by commenting that the difference
between the earlier mark and his mark is the fact that his (the applicant) is slang
while Mr. Evans’ would be considered a French person’s name.
It was commented that the term JACK SHIT, means ‘nothing’ and ‘shit’ is a
“commonly understood word: depending on its context it is used as an earthy
synonym for faeces, or something considered to be rubbish or useless. It is also
used as an expression of frustration. It is regularly used in films and television
programmes (although not on children’s programmes) being more prevalent
after the 9pm watershed than before it 82.”
It was further pointed out that the mark is JACK SCHITT 83 and the last name
SCHITT combined with Jack, the words could be considered a name with the
surname having a “Germanic feel as a result of the use of the letter ‘c’ between
the letters ‘s’ and ‘h 84’”.
The Registrar hearing the case noted that the mark JACK SCHITT 85 is likely to
be seen more than heard, since the class of goods is for clothing 86. If a mark
has the “potential to be offensive 87” through speech rather than sight, the
81
Ibid, no. 80, page 3
Jack Schitt Limited Trade mark Application Number: 251247, opposition thereto under No. 98836, para
24
83
Ibid, no. 82,
84
Ibid, no. 83, para. 24
85
Ibid, no. 84
86
Ibid, no. 85, para 26
87
Jack Schitt Limited Trade mark Application Number: 251247, opposition thereto under No. 988363,
para 26
82
23
08020159, LLM Dissertation
speech aspect will be considered as having significance over the sight
concept 88.
It was found that the words JACK SCHITT 89 should be subjected to the test set
out in Ghazilian’s 90 that “mere offence to a section of the public would consider
the mark distasteful, is not enough”: to be denied registration the mark has to be
“justifiably cause outrage or [would] be the subject of justifiable censure as being
likely to undermine current religious, family or social values 91.” Therefore JACK
SCHITT is a crude synonym for ‘nothing’ and is merely considered as a play on
words. It is for this reason, the opposition failed and JACK SCHITT 92 was
allowed registration under s3(3)(a) Trade mark Act 1994.
Trade marks relating to sexuality and innuendo
In 2000, a trade mark application was received at the OHIM office for the
registration of the words DICK & FANNY 93 for goods or services in a variety of
classes ranging from photography, recording and transmitting sounds and/or
images, paper including cardboard materials and clothing. Initially, the
application was refused on the grounds that the words were considered slang
for the male and female reproductive organs, and as a result it was determined
by the OHIM examiner that the words were ‘contrary to public order and the
accepted principles of morality, since a significant portion of persons who speak
English would be offended.
The applicant countered the examiner’s decision with the fact that the words
would be more recognised as the shortened names of ‘Richard’ and ‘Frances’
and not as the “course slang” as the examiner took the words to mean. The
applicant went on to comment that the words would be “considered more playful,
88
Ibid, no. 87, para. 26
Jack Schitt Limited Trade mark Application Number: 251247, opposition thereto under No. 988363
90
Ghazilian’s Trade mark Application [2002] ETMR 63
91
Jack Schitt Limited Trade mark Application Number: 251247, opposition thereto under No. 98836
92
Ibid, no. 91
93
Dick Lexic Limited’s Application (Dick& Fanny) Case: R111/2002-4, OHIM Board of Appeal
89
24
08020159, LLM Dissertation
and at most in poor taste 94.” The Board of Appeal at OHIM agreed with the
applicant’s argument, finding that although the words had sexual connotations,
the mark failed to transmit an offensive message which may not justify the
registration being denied on the grounds of contrary to public order or morality.
The Board went on to comment that word marks need assessed on the usage
“though not necessarily formal, that the public makes of a given language 95.”
This means that words that are considered slang may be considered offensive,
even if the normal meaning of the words do not have the same offensive
meaning as its slang term.
Although the two words are associated with sexual undertones, they should not
be considered ‘offensive’. The reasoned the following when coming to this
conclusion:
“firstly, these words merely designate things, but they do not transmit any
message; secondly the association of the two words does not necessarily
reinforce the connotation of the mark 96.”
On the first reasoning the Board opined that since the mark did not contain an
incitement of “convey an insult 97,” the mark is a matter of distaste only and not
contrary to public order or morality. The board did not agree that the two words
DICK & FANNY reinforced any sexual connotations, and were under the view
that if considered as forenames it could be referring to a ‘couple’, thereby
diminishing the sexual undertone. The Appeal was allowed and the mark DICK
& FANNY 98 received trade mark registration.
It is this writer’s opinion that persons who have the forenames ‘Richard’ and
‘Frances’ would be used to being referred to in some contexts as the slang DICK
& FANNY, and may find it amusing. However, saying this it may not be
politically correct to refer to the slang outside of their circle of family and friends.
94
Dick Lexic Limited’s Application (Dick& Fanny) Case: R111/2002-4, OHIM Board of Appeal
Ibid, no. 94
96
Dick Lexic Limited’s Application (Dick& Fanny) Case: R111/2002-4, OHIM Board of Appeal
97
Ibid, no. 96
98
Ibid, no. 97
95
25
08020159, LLM Dissertation
The decision in DICK & FANNY 99 can be seen to acknowledge that if marks are
slightly rude or have mild sexual undertones they may be capable of achieving
trade mark registration providing they do not contain any additional messages
such as incitement or insults, which would therefore make them offensive and
contrary to public order or morality, under Article 7(1)(f) CTMR.
Marks with strong sexual undertones will be refused trade mark registration as
being ‘contrary to public order or morality’; pursuant to Article 7(1)(f) CTMR. As
a result the following word marks have been refused trade mark registration by
OHIM: KUNT 100, FUCK & FUN 101 and CLITORIS ALLSORTS 102. Contrast this
with those marks which have mild sexual connotations or are considered as
smut, which have been allowed to obtain trade mark registration such as: NO
BULLSHIT, BOOB, SHIRT and PORNO.
A trade mark can also be a figurative mark, these marks are subject to the rules
found in the CTMR 103 and as such OHIM has allowed the following to be
trademarked: I Love My Penis, Big Cock and Organsmservice, even though they
have a smutty undertone. Although not considered smutty the following words
were considered to be obscene language: Te quiero puta 104 (bitch or whore in
Spanish) and Hijo de puta 105 (son of a bitch in Spanish) and therefore must be
refused on the grounds of being contrary to public order or morality.
Trade mark registration for the words TINY PENIS 106 was applied for in the UK.
The word mark was refused and appealed based on the fact that the mark was
contrary to the accepted principles of morality, being against public policy was
not a factor in the refusal. What needed to be considered in this application was
what degree of offence needed to be considered, it was then commented that
99
Ibid, no. 98
Kunt Trade mark Application Number: 04164431
101
Fuck & Fun Trade mark Application Number: 09220831 and 09247289, OHIM Board of Appeal
102
Clitoris Allsorts Trade mark Application: 04252821
103
Community Trade mark Regulation
104
Te quiero puta Trade mark Application Number: 08486755
105
Hijo de puta Trade mark Application Number: 06186274
106
Ghazilian’s Trade mark Application [2002] ETMR 63
100
26
08020159, LLM Dissertation
“s3(3)(a) Trade mark Act 1994 is not concerned with political correctness, it is
concerned with principles of morality a different and less readily invoked
standard 107.” It was concluded that ‘TINY PENIS 108’ would cause “greater
offence than mere distaste to a significant section of the public. This value lies
in the belief that the correct anatomical terms for parts of the genitalia should be
reserved for serious use and should not be debased by use as a smutty trade
mark for clothing109.”
If one were to contrast OHIM’s decisions to refuse trademarks based on strong
sexual undertones with the decisions from the Benelux Bureau for Intellectual
Property (BBIP) office in the Netherlands, one would see a striking contrast.
The BBIP has allowed the following word marks to be registered: DICK,
WIREDPUSSY, FUCK ME Dans la mousse and FUCK; they also allowed the
following figurative marks to be registered: pussy lounge, fuck me I am famous,
and lullig. However, Fist Fucker and Fuckingmachines were denied registration,
although not for being contrary to public order or morality but because the
lacked distinctiveness.
REVA 110 was refused trade mark registration by OHIM because it was the being
viewed as the Finnish word for female genitalia and was therefore considered to
be vulgar in nature. However, the applicant showed that REVA was the initials
for ‘Revolutionary Electric Vehicle Alternative’ and would be viewed as being an
electric vehicle by the public. The context in which it would be used is therefore
not being considered contrary to public order or morality under Article 7(1)(f)
CTMR, therefore the mark was granted with trade mark registration. There have
been other trade mark applications which sought the registration of REVA 111 and
failed. One application was for the goods or services connected to computer
software and hardware 112 and the other for goods or services connected with
107
Ghazilian’s Trade mark Application [2002] ETMR 63
Ghazilian’s Trade mark Application [2002] ETMR 63
109
Ghazilian’s Trade mark Application [2002] ETMR 63
110
Reva Case Number: R0558/2006-2
111
Ibid, no. 110
112
Ibid, no. 111
108
27
08020159, LLM Dissertation
seeds, natural plants and flowers, and real estate 113. These attempts failed on
the grounds of being contrary to public order or morality.
Promoting Illegal Activity
A trade mark can be refused if it is seen to suggest or promote a person to
commit an illegal activity. In France the application for EXTASY IF YOU TASTE
IT, YOU’LL BE ADDICT 114 for alcoholic beer and beverages was denied on the
grounds under the Industrial Property Law (No. 91-7), for being an expression
which leads to the consumption of illegal, toxic and harmful products for human
beings 115. The Court of Appeal of Paris stated that the trade mark was
suggesting it applied to products which contained an illegal substance (the drug
‘extasy’) 116.
In Latvia ‘LIVE LIGHT117’ was refused for class 34 (tobacco) as it contradicted
public policy and the socially accepted principles of morality regarding tobacco
and therefore smoking. However, for the advertising aspect, the trade mark was
allowed. The office made the decision on the basis that the public would
perceive the slogan as an encouragement to smoke 118.
The UK rejected the trade mark application of
www.standupifyouhatemanu.com 119 on the grounds of s3(3)(a) Trade mark
Act 1994, whereby the mark had the potential to increase the “incidence of
football violence or other offensive behaviour 120.” Another application refused
by the UKIPO on the grounds of being contrary to public policy or the accepted
principles of morality, pursuant to s3(3)(a) Trade mark Act 1994 was that of
113
Ibid, no. 1112
Extasy if you taste it, you’ll be addict trade mark application, France court of Appeal of Paris 2008
115
Ibid, no. 114
116
Ibid, no. 115
117
Live Light, Trade mark Application M-99-87
118
Ibid, no. 117
119
Manchester United Merchandising Ltd v CDW Graphic Design Ltd (BL O-464-02)
120
Ibid, no. 119
114
28
08020159, LLM Dissertation
TOKE 121 which was defined as “to take a draw on a cannabis cigarette 122,”
therefore could be seen as promoting the use of drugs and thereby an illegal
activity. However, previously the word TOKE 123 was accepted as a trade mark
for “starch, ironing aids, scale preventing and removing preparations124.”
Chapter 3
Religion
This chapter will not delve into specific religious issues or make assumption on
which belief system is the ‘right one’. It will focus on the public order and
morality aspect which provides the basis for all religions, to show that religion
has played and will continue to play a major role in determining what is immoral
or not. The two largest religions in the EU are Christianity (33%) and Islam
(21%), although these are the two major religions found in the EU, all religions
are to be considered when determining if a trade mark is offensive to the
religious beliefs of the population.
Religion has been an integral part in the way society has developed and
therefore the laws which govern the societies have developed to meet the needs
and requirements of the society. A majority of the world have moved away from
using religion as the guidance as to how they govern their people, although
there are some countries which continue to govern based on their religious
beliefs only.
Religion has deep roots in the development of the EU’s public morality. With
Christianity having such a major influence in the EU, it can have a major
121
Carboni, A., Bad Faith and Public Morality, http://assets.itma.org.uk/Anna_Carboni_presentation.pdf,
accessed 15/12/2011
122
Ibid, no. 121
123
Ibid, no. 122
124
Ibid, no. 123
29
08020159, LLM Dissertation
influence over public morality than other religions 125, this is not to diminish the
other religious influences that have play a part in forming the public morality of
the EU.
The religious influence in the EU can be seen in both the Constitutional Treaty
and the Lisbon Treaty, which govern the EU, whereby the following were
included in both treaties:
“Drawing inspiration from the cultural, religious and humanist inheritance
of Europe, from which have developed the universal values of the
inviolable and inalienable rights of the human person, freedom,
democracy, equality and the rule of law 126.”
Regarding this statement found in the treaties, members of a secularist
convention argued that:
“the wording of the preamble was already stretching the tolerance of nonChristians to the limit [and that] religion has not always been an
unqualified blessing for Europe 127.”
However, Rawls has argued that applying law or policy based on religion is
“inconsistent with a liberal constitutional order 128.”
In 1992, Religion and its EU influence were connected on a formal basis when
“A Soul for Europe” was established and its objective as described by the
Commission is “giving a spiritual and ethical dimension to the European
Union 129.” This ‘Soul for Europe’ was not established as a way of placating to
religious organisations but as a way to develop a civil society in the EU 130.
Even now in the 21st century there are religions that are considered to be
contrary to the public morality which is embraced by the EU, this being because
125
McRea, R., The Recognition of Religion within the Constitutional and Political Order of the European
Union, http://www2.lse.ac.uk/europeanInstitute/LEQS/LEQSPaper10.pdf, accessed 31/12/2011
126
McRea, R., The Recognition of Religion within the Constitutional and Political Order of the European
Union, http://www2.lse.ac.uk/europeanInstitute/LEQS/LEQSPaper10.pdf, accessed 31/12/2011, page 9
127
Ibid, no. 126
128
Ibid, no, 127, page. 14
129
Ibid, no. 128 page 15
130
Ibid, no. 129, page 15
30
08020159, LLM Dissertation
they have not accepted the humanist influence. As such they appear to be
struggling to achieve the influence that other faiths have achieved in the EU 131.
It is no wonder that to protect people and their religious beliefs from being
offended, religious influence would carry over to trade mark law. Not in the
sense of religious freedom but in the sense that religious symbols and names
are not used to advertise products or services which have no attachment to
religion, thereby creating offensive material to the people who have a strong
religious belief system. This can be seen by a few cases where trade mark
registration was refused due to the fact that it was ‘contrary to public order or the
accepted principles of morality,’ pursuant to Article 7(1)(f) CTMR.
The name Johannes Paul II 132, was refused trade mark registration for goods
and services in water, non-alcoholic drinks, alcoholic beverages, tobacco and
smoker’s articles. The name Johannes Paul II is well known for being the POPE
of the Catholic Church, therefore if allowed for the goods or services specified in
the application, it would have offended most if not all Catholic’s.
HALLELUJAH 133 was presented for registration, however, this trade mark fell
under the Legislation of the 1938 Trademarks Act in the UK. The Registrar’s
Hearing officer had to base the decision on section 11 of the 1938 Trademarks
Act, which read:
“It shall not be lawful to register as part of a trade mark any matter, the
use of which would… be contrary to law or morality, or any scandalous
design 134.”
Mr. Myall, the Registrar’s Hearing went to great lengths to mention how he had
to determine what standards of morality he was obligated to consider. He
commented:
131
McRea, R., The Recognition of Religion within the Constitutional and Political Order of the European
Union, http://www2.lse.ac.uk/europeanInstitute/LEQS/LEQSPaper10.pdf, accessed 31/12/2011
132
Johannes Paul II Trade mark Application Number: 958280
133
Hallelujah [1976] RPC 605
134
Ibid, no. 133
31
08020159, LLM Dissertation
“I conclude that the phrase “contrary to morality” falls to be considered by
the generally accepted standards of today and not by those of “1938”.
The difficulty is to be sure what those are, and more particularly, where
the line is to be drawn between marks whose registration is prohibited by
the section and those where it is not. When religious and moral standards
are changing, sometimes quite rapidly, it seems to me that the Registrar
should only follow where others have given a clear lead. While he must
not remain isolated from the day to day world, frozen in an out moded set
of moral principles, he must equally not presume to set the standard. He
must certainly not act as a censor or arbiter of morals, nor yet as a trend
setter. He must not lag so far behind the climate of the time that he
appears to be out of touch with reality, but he must at the same time not
be so insensitive to public opinion that he accepts the registration a mark
which many people would consider offensive 135.”
Mr. Myall went on to mention Evershed J.’s judgment in La Marquise Footwear
Inc.’s Application136 when he stated:
“I must wholeheartedly accept the proposition that it is the duty of the
Registrar (and it is my hope that he will always fearlessly exercise it) to
consider not merely the general taste of time, but also the susceptibilities
of persons, by no means few in number, who still may be regarded as old
fashioned and, if he is of opinion that the feelings or susceptibilities of
such people will be offended, he will probably consider refusal of the
registration. I should certainly hope, in taking, as I do in this case, a
different view from him, I am in no way debasing the standing which, as a
servant of the state, he should exercise and maintain in his
jurisdiction 137.”
Hallelujah was denied registration on the basis that people will be offended by
the trade mark, thus enforcing section 11 of the 1938 Trademarks Act.
The name JESUS 138 was sought to be registered as a trade mark in the UK by
Basic Trade mark SA, for various classes associated with clothing. The
application was rejected with the justification that there was not enough
evidence to show that a majority of the public would recognise JESUS as an
ordinary name, either as a forename or surname. A definition of the word
135
136
137
Hallelujah [1976] RPC 605
La Marquise Footwear Inc.’s Application [1946] 64 RPC 27
Ibid, no. 136
138
SA Trade mark Application Number: 689374
32
08020159, LLM Dissertation
JESUS was given from the Collins English Dictionary which was published in
2000 as:
“n.. Also called: Jesus Christ: Jesus of Nazareth ?4b.c. - ?29a.d. founder
of Christianity: born in Bethlehem and brought up in Nazareth as a Jew.
He is believed by Christians to be the Son of God and to have been
miraculously conceived by the Virgin Mary, wife of Joseph… … He is
believed by Christians to have risen from his tomb after three days,
appeared to his disciples several times and ascended to Heaven after 40
days 139.”
It was concluded that there are a substantial number of people in the UK who
are Christians and would therefore only associate the name JESUS with that
described by the definition above.
Mr. A. J. Pike commented that he must put aside his personal views and went
on to consider how the trade mark would be perceived by the right-thinking
members of the public. He used the reasoning found in the Tiny Penis 140
decision as to “would the public be outraged? Would they feel that the use
should properly be the subject of censure 141.” In his final reasoning of the trade
mark application, he commented that the trade mark would:
“cause greater offence than mere distaste to a significant section of the
general public. That offence is caused by the fact that an accepted social
and religious value is likely to be undermined to a significant extent 142.”
It was therefore deemed to be ‘contrary to public policy or the accepted
principles of morality’ and therefore did not meet the requirements of trade mark
registration under S3(3)(a) Trade mark Act 1994.
The applicant appealed to the Appointed Person whereby he argued that the
reason of religious significance was not a sufficient enough reason to deny a
trade mark as unregisterable under S3(3)(a) Trade mark Act 1994, he also
stated that there was no legal, moral or ethical imperative preventing registration
139
SA Trade mark Application Number: 689374
Ghazilian’s Trade mark Application [2002] ETMR 63
141
Ibid, no. 140, para 18, per Simon Thorley Q.C. Tiny Penis case
142
Ibid, no. 141, para 19
140
33
08020159, LLM Dissertation
of the word JESUS as a trade mark for use in the goods or services specified by
the Applicant and he ended his comments with the fact that the registrar had no
legitimate power to deny the registration of his trade mark application under the
Trade mark Act 1994 143.
No evidence was submitted to show that in most National Registries in the EU
no oppositions had been submitted for the name JESUS, on the grounds of
public order or morality144.
Q.C. Geoffrey Hobbs upheld that registrar’s decision to deny the trade mark
registration to the name JESUS, on the grounds of public interest in the
“prevention of disorder and protection of morals 145.”
However, the following names were allowed to be registered: Jesus 2000 and
Christ. It would be interesting to see how the Hallelujah 146 case would be
decided using the attitudes and perceptions of the religious population in 2012
and also is the trade mark examiners would interpret the case the same way
using s3(3)(a) Trade mark Act 1994.
It has become clear through examining the various trade mark registries of the
EU that the Benelux Bureau for Intellectual Property office (BBIP) is not as strict
when it comes to trade marking religious names as the UK and OHIM are, this is
seen by their (BBIP) allowing the registration of the word mark JESUS and the
figurative mark G.O.D. (GSUS Original Denim).
More recently in Switzerland a trade mark application for the name MADONNA
was refused registration by the Swiss Federal Supreme Court, and the name
BUDDHA-BAR was also denied trade mark registration by Switzerland.
143
SA Trade mark Application Number: 689374, Para. 16
Ibid, no. 143, para. 17
145
Ibid, no. 145, para. 26
146
Hallelujah [1976] RPC 605
144
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08020159, LLM Dissertation
In Germany, the following words were considered to be “offensive by a
considerable part of the public concerned 147” for using religious terms or names
and titles of religious leaders, they are: CORAN, MESSIAS, DALAILAMA, URBI
ET ORBI, BUDDHA and PONTIFEX, and as such they were deemed ‘contrary
to public policy and accepted principles of morality 148.
Trade mark examiners on the national level and at OHIM have the responsibility
of ensuring that a mark which may be considered offensive to members of a
certain group of society is not successfully registered as a trade mark. They
must therefore view the mark as objectively as possible; they cannot interject
their personal moral views into their decision.
Moreover, there are times when a mark is considered too offensive to be
registered as a trade mark, yet the mark may be used anyway. This is because
an undertaking is not required to register a trade mark, therefore if a mark has
been deemed unregisterable under Article 7(1)(f) CTMR, there is nothing to
prevent the undertaking from using the mark in a Member State as an
unregistered mark. The CTMR does not provide any stipulations which would
prevent an undertaking from using an unregistered mark in the Member States
where his goods or services are to be sold or distributed. The unregistered
mark will then become a matter for the laws of the Member State in which the
unregistered mark is being used. Under Article 106(2) CTMR, Member States
have been granted the right to prohibit an unregistered trade mark from being
used in their country if it violates their civil, criminal or administrative laws.
The same holds true to offensive trademarks. The examiners at OHIM have the
responsibility to ensure that a majority of the population of the EU will not be
offended by the words, sign, or design which is to be registered. With over
100,000 trademarks being registered in 2010, the numbers are very minute
147
Standing Committee on the Law of Trade marks, Industrial Designs and Geographical Indications,
Grounds for Refusal of All Types of Marks, WIPO, August 30, 2010,
http://www.wipo.int/sct/en/meetings/pdf/wipo_strad.inf_5.pdf
148
Ibid, no. 147
35
08020159, LLM Dissertation
when it comes to applications being refused on the grounds of public order and
morality.
Chapter 4
Who determines if a Trade mark application breaches the
public order and morality clause found in the Legislation
OHIM Trade mark Examiners
When an application is submitted to OHIM to be registered as trade mark
examiners are given the application to be processed. The examiner has the
responsibility to aid applicants in the registration process rather than put
obstacles in place to delay or refuse the application 149. Each application must
be considered on its own merits, all the while considering the circumstances
and the goods or services being applied. The examiner’s therefore must look at
the “trade concerned, the manner in which the goods or services are provided
and the relevant public 150” when examining an application for trade mark
registration; it is the responsibility of the examiner to ensure all applicants and
applications are treated equally 151. They also have to ensure that they are kept
abreast of the decisions made by their colleagues and the courts 152.
When considering applications which may fall foul under Article 7(1)(f) CTMR,
the words and description of the goods or services to the community must be
considered; the examiners then have the enormous task of having to consult 11
standard dictionaries in the languages of the EU, along with any “specialist
technical reference material 153” during the examination of the trade mark
application.
Moreover, if a trade mark has already been registered in a
Member State of the EU, it is unlikely to fall foul of Article 7(1)(f) CTMR as being
‘contrary to public order or the accepted principles of morality’.
149
Oami.europa.eu/ows/rw/pages/CTM/legalreferences/guidelines, para 2(2.1)
Ibid, no. 149, para 2(2.2)
151
Ibid, no. 150, para 2(2.2)
152
Ibid, no. 151, para 2(2.4)
153
Oami.europa.eu/ows/rw/pages/ctm/legalreferences/guidelines, para 8.1.2
150
36
08020159, LLM Dissertation
If a trade mark is found to be against Article 7(1)(f) CTMR within the community,
the examiner “must object 154”. Examiners must refuse trademarks which
contain “swear words, racially derogatory images or which are blasphemous155”.
If a mark is considered to be in mere distaste, the examiner cannot prevent it
from being registered on the grounds of Article 7(1)(f) CTMR. Under Article
66(1) CTMR, regulations which are determined to be discriminatory on the
grounds of sex, creed or race are considered to be contrary to public policy or
the accepted principles of morality, and are therefore deemed unacceptable 156.
The examiners must also be aware of whether or not there will likely be any
objections to the mark being registered in the EU. If an objection is raised it
must be raised within the time limit of 3 months of being published in the
Community Bulletin, exceptions to the 3 month rule are to be granted only in
exceptional cases157. After publishing the potential trade mark in the
Community Bulletin if any objections are brought to the attention of the
examiner, the applicant is invited by the examiner to submit any comments if
they have any. If the examiner feels the objections “raise serious doubts158”, the
applicant is advised and the Opposition Division is notified of the examiner’s
doubts.
UK Registry Examiner’s Guidelines
Examiners are directed not to apply the guide rigidly and must take into
consideration of the particular circumstances of each application; and if needed
the examiner may depart from practice if the circumstances of the case
warrant 159. In Henkel KGaA 160 which was an appeal where the registrar
refused protection with regards to an International Registration, Simon Thorley
Q.C., commented:
154
Oami.europa.eu/ows/rw/pages/ctm/legalreferences/guidelines, para 8.7
Ibid, no. 154, para 8.7
156
Ibid, no. 155, para 11.5.2
157
Ibid, no. 156, para. 2(2.4)
158
Ibid, no. 157, para. 2(2.4)
159
UK Trademark Examination Guidelines, Chapter 3
160
Henkel KGaA BL O/152/01
155
37
08020159, LLM Dissertation
“It must always be remembered that the Registry Practice is a guideline
and nothing more. It is helpful both to the Registry and to Practitioners,
but it cannot absolve the Registrar’s hearing officers, or me, on appeal,
from approaching each case on its own facts161.”
Examiners must look to previous court decisions for additional guidance in
deciding applications; moreover some decisions made by the courts are binding
on the UKIPO. European Court of Justice (ECJ) decisions are binding, whereas
the Court of First Instance (CFI) are also binding where the “facts of the case
are the same and are of persuasive value on cases where similar considerations
apply 162”, and decisions made by UK Courts are also binding on the UKIPO.
There are however, decisions which are not binding but can be persuasive on
the UKIPO, such as cases from the Advocate General’s Opinion, Appointed
Person Decisions and decisions of tribunals/courts in other Member States.
When it comes to offensive material, consideration must be given to S3(3)(a)
Trade mark Act 1994 which stipulates: “A trade mark shall not be registered if it
is contrary to public policy or to accepted principles of morality163.” Marks falling
into this section of the Act can be put into 3 categories: criminal connotations,
religious connotations and explicit/taboo signs 164.
When deciding if an application is to be registered or not, the applicant’s
freedom of expression must be considered. This will be discussed in more
detail in a later chapter dedicated to the Right to Freedom of Expression and
Trade mark Protection.
Examiners must be objective when considering a trade mark application,
therefore, an examiner cannot be a trend setter, nor be so out of touch with the
current trends and not be insensitive to public opinion.
If a trade mark application does not meet the requirements, a letter is sent to the
applicant listing any objections from the examiner. The applicant then has the
161
Henkel KGaA BL O/152/01, para. 12
UK Trademark Examination Guidelines, Chapter 3
163
Section 3(3)(a) Trade mark Act 1994
164
Ibid, no. 162
162
38
08020159, LLM Dissertation
opportunity to show the examiner why the objections are invalid or the applicant
can amend the application based on the examiners response to the applicants’
evidence. If all goes well, the application is published in the UK Trade mark
Journal and anyone can submit an opposition within 2 months of being
published in the Journal. If no objections are brought forward, the mark will be
registered 165.
Trade mark examiners are not the only ones responsible for ensuring
trademarks which appear to be contrary to public order or morality. Although
they are the front line defense in preventing those trade marks from gaining
registration; there are others who can ensure these types of marks are not
registered. I am referring to the appeals process.
Appeals
A party who feels they have been unduly affected by a decision of “examiners,
Opposition Division, the Administration of Trade Marks and Designs and Legal
Division, and the Cancellation Divisions at OHIM 166.” An appeal must be
brought within 2 months after the date of notification that an application has
been refused 167, the applicant then has another 2 months after the notification
date to submit a written statement stating the grounds on which they are
planning to appeal on must be submitted to OHIM 168.
The appeal goes back to the department which initially considered the
application, if warranted, the decision will be rectified 169. If someone other than
the applicant has filed grounds for an appeal, and if the department is
considering amending their decision, they must notify the other party of their
165
www.ipo.gov.uk/types/tm/t-applying/t-after/t-exam.htm, accessed 21/09/2012
8 (v) Article 291, Community Trade mark Regulation
167
Ibid, no. 166
168
Ibid, no. 167
169
8 (v) Article 292, Community Trade mark Regulation – if the appeal is brought by the party to the
proceedings only, there are other appeals processes which apply to those who are not a party to the
initial application
166
39
08020159, LLM Dissertation
intent to amend the decision. If the other party does not respond to the
notification within 2 months, the appeal is then sent to the Board of Appeal.
The EC Commission 216/96 lays down the procedural rules of the Board of
Appeal of OHIM. The Board of Appeal will re-examine the OHIM Department’s
decision, thereby establishing a continuity of function between OHIM and the
courts.
A party can appeal a decision made by the Board of Appeal to the European
Court of Justice (ECJ). Appeals can be brought to the ECJ
“on the grounds of lack of competence, infringement of an essential
procedural requirement, of the Community Trade mark Regulation or of
any rule of law relating to their application or misuse of power 170.”
Both the Court of First Instance (CFI) and the European Court of Justice have
the jurisdiction to annul or alter a contested decision. The Treaty Establishing
the European Community (EC Treaty) 171 established the CFI, under Article 5.
The procedural rules of the CFI have been amended to include provisions to
handle proceedings coming from OHIM by the addition of Articles 130-136 to the
EC Treaty172.
OHIM is required by the EC Council Regulation 40/94 Article 63(3) to take all
“necessary measures to comply with the judgment of the CFI or the ECJ 173.”
170
8 (v) Article 293 Community Trade mark Regulation
The EC Treaty is now repealed, and can now be found in the TFEU
172
8 (v) 294 Community Trade mark Regulation. Footnote 6, Halbury’s Laws of England, Thursday, Sept.
20, 2012, 1801 BST
173
EC Council Regulation 40/94, Article 63(3)
171
40
08020159, LLM Dissertation
Chapter 5
Should there be a centralized definition of both
public order and morality to provide guidance
with which the trade mark examiners can access when
dealing with questionable trademarks?
OHIM has been in discussion about this very subject, although at the present
time no decisions have been made 174. While having one definition of both public
order and morality would prove to be a benefit to the examiners it may not be
cost effective, since all the 27 Member States Trade mark Legislation must be
examined as well as how each Member State interpret public order and morality.
Laws are supposed to provide certainty, in that people are aware of the
consequences which their actions have. This certainty is not seen when
determining trade mark refusals based on the absolute grounds of public order
or morality. Applicants are often confused and can become frustrated by the
fact that so many court decisions appear to contradict each other when deciding
what constitutes an offensive trade mark pursuant to the absolute ground
mentioned above.
Ordre public, public order or public policy; which one to use? The first step to
establishing a single definition of public order is to determine which of the three
terms will be used. Although they are all considered to have the same meaning,
an examination of the Member States Trade mark Legislation shows that 12 of
the 27 Member States use Public Policy; 11 use Public Order; 2 use Contrary to
law; 1 uses Scandalous Matter, while 1 does not mention public order or public
policy.
If we look at other sources which have already established a central definition of
ordre public and morality 175, one could look to the European Patent Office
Guidelines for Examination of patents. The definitions are established as:
174
175
Per Gregor Schneider, OHIM Universities Network, 15 May 2012, Alicante, Spain
European Patent Office Decision T.356/93
41
08020159, LLM Dissertation
“Ordre Public: linked to security reasons, such as riot or public disorder,
and inventions that my lead to criminal or other generally offensive
behaviour 176.”
“Morality clause: The office has to establish whether an invention would
be so abhorrent for the public that its patenting would be inconceivable.
Morality includes the totality of the accepted norms which are deeply
rooted in a particular culture.”
These clauses are similar to the way trademarks are viewed when considering if
they are against public order or morality under the laws of the Community and
the national laws for trade mark regulation. However, it is not the object of this
chapter to determine a unified definition of either public order or morality, but to
show the difficulty which may be encountered in coming to one definition of
each. This can be accomplished by examining each Member States Trade Mark
Legislation as to what their law states about refusing trade marks for being
‘contrary to public order or the accepted principles of morality’ by doing this it will
show how each law varies.
Each Member States Legislation will be shown below to establish their current
trade mark law governing trademarks which can be refused on the absolute
grounds pursuant to their legislation.
Austria
Trade marks Act 1995, s42(a)(b)
a) The trade mark contains or consists of scandalous matter; or
b) Its use would be contrary to law
176
Part C, Chapter IV, 3.1 European Patent Office Guidelines for Examination,
http://iprsonline.org/unctadictsd/docs/RB2.5_Patents_2.5.3_update.pdf, accessed 15/07/2012
42
08020159, LLM Dissertation
Belgium
Benelux Trade mark Act
“Signs that are contrary to public order or moral principles of one of the
Benelux Member States or whose prohibition or invalidation is provided
by Article 6ter of the Paris Convention”
Brazil
Article 124(3)
Applications for registration may be refused if the trade mark contains
expressions, figures, drawings or any other sign contrary to morality and
decency or which offend the person’s honor or image of a person, or
which offend freedom of conscience, belief, religious cult or ideas and
feelings worthy of respect and veneration.
The examiner must verify if the words, expressions, figures, drawings are,
by themselves contrary to morality and decency, independent of the
goods or services they are associated to or they assume this condition
when associated to certain goods or services.
Bulgaria
Trade mark Law, Art 11(vi)
Marks which are contrary to public policy and the accepted principles of
morality.
Cyprus
The Trade mark Law, S12(3)(1)
Be contrary to law or morality, or any scandalous design
43
08020159, LLM Dissertation
Czech Republic
Trade mark Act No. 441/2003
A sign which is contrary to public policy and accepted principles of
morality
Denmark
Consolidate Act No. 109 of 24 January 2012, Art. 14(1)
Contrary to law, public order or morality
Estonia
Trade marks Act, S9(7)
Signs which are contrary to public policy and accepted principles of
morality
Finland
Trade marks Act 10.1.1964/7, Art.14(1)
Contrary to law and order or to morality
France
Industrial Property Law (No. 91-7)
An interference to the morality or the public order
Germany
Trade mark Law 1998, Art. 8(2) no.( 5)
Contrary to public policy or to accepted principles of morality
However, “public policy does not include every piece of German
Legislation. It must be a legal rule that is part of the essential principles
of German Law. First and foremost, immoral and religiously offensive
trademarks fall under this ground for refusal 177.”
In relation to public order the German Constitutional Court commented:
177
www.ipo.int/sct/en/comments/pdf/sct21/ref_germany.pdf, accessed 29/5/2012
44
08020159, LLM Dissertation
“Public order has to be regarded as a ‘general clause which needs to be
filled with values’; and with respect to which the legal meaning and
significance is influenced by fundamental rights standards178.”
The Constitutional values considered by the German Constitutional Court are:
“human dignity, right to life, and physical integrity, and the state of monopoly of
violence 179.”
Greece
Trade mark Law, Law No. 2239, Art. 3(f)
Trade marks which are contrary to public policy or to accepted principles
of morality
Under Art. 9(5) of the Trade mark Law, Law No. 2239, the following is
commented:
“Without prejudice to the provision in Article 3(3), the grounds for refusal
of trademarks shall be appraised on the basis of the Legislation in force
at the time of the hearing before the Administrative Trade mark
Committee 180.”
Ireland
Trade marks Act 1996, S. 8(3)(a)
Contrary to public policy or to accepted principles of morality
Italy
Trade mark Regulation, Art. 18
Contrary to the law, public policy, or accepted principles of morality
Trade marks can contravene public order if they are considered to be
contrary to ‘good morals’. As with any other morality issue it is the
perspective of society if the mark is considered against ‘good morals’.
178
Bundesverfassungsgericht Entscheidungen Band 7, 198 (215/216)
Ibid, no. 168
180
Trade mark Law, Law No. 2239, Article 9(5), Greece Trade mark Law
179
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08020159, LLM Dissertation
In the Italian legal system the principles of morality and good morals refer
to the “common sense of decency as perceived by the general public at a
specific time, as provided by Article 529 of the Criminal Code 181.”
Latvia
Trade mark Law 1999, Art. 6(6)
Contrary to public policy or to socially accepted principles of morality
Lithuania
Trade marks Law No. VIII-1981, Art. 6(6)
Contrary to accepted principles of morality or public policy, including
ethics of society and humanitarian principles
Luxemburg
Benelux Trade mark Act
Signs that are contrary to public order or moral principles of one of the
Benelux member states or whose prohibition or invalidation is provided by
article 6ter of the Paris Convention
Malta
Trade marks Act 2001, Art. 4(3)(a)
Contrary to public policy or to accepted principles of morality
Netherlands
Benelux Trade mark Act
Signs that are contrary to public order or moral principles of one of the
Benelux member states or whose prohibition or invalidation is provided by
article 6ter of the Paris Convention
Poland
Industrial Property Law 2007, Art. 131(1)(ii)
Contrary to law, public order or morality
181
Padovane, S., Principles of morality as absolute grounds for refusal, Jacobacci & Partners, Italy.
www.iam-magazine.com/reports/detail.aspx?g=d51b486c-f92b-4ela-b224-578df50fa00a
46
08020159, LLM Dissertation
Portugal
Industrial Property Code, Decree Law No. 143/2008/1 Oct. 2008 in Force, Art.
238(4)(c)
Expressions or figures that are contrary to the law, morals, public order
and morality
Romania
Trade mark Law No. 84, 1998, Art. 5(1)
Against public order or the good behaviour
Slovakia
Trade mark Act, Act No. 55/1997 Coll. On Trademarks as amended by the Act
No. 577/2001, Coll. and the Act No. 14/2004 Coll, Art. 2(1)(g)
Contrary to public order or principles of morality
Slovenia
Industrial Property Act of 23 May 2001, as last amended on 6 Feb. 2006, Art.
543(g)
Contrary to public order or morality
Spain
Trade mark Act 17/2001, Art. 5(f)
Contrary to the law, public policy or morality
Sweden
Trade mark Act of 2011 (SFS 2010:1877), S. 7(1)
Contrary to law or regulation or to morality or public order
United Kingdom
Trade mark Act 1994, S. 3(3)(a)
Contrary to public policy or to accepted principles of morality
One foreseeable problem of determining a unified definition of public order,
public policy or ordre public is that some Member States, such as the United
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08020159, LLM Dissertation
Kingdom have separate legislation in place which covers public order violations;
the UK has in force the Criminal Justice and Public Order Act 1994, which
states:
“precludes any writing, sign or other visible representation which is
threatening, abusive or insulting within the.. sight of a person likely to be
caused harassment, alarm or distress thereby182.”
While Ireland has the Criminal Justice (Public Order) Act, 1994 which states:
“It shall be an offence for any person in a public place to use or engage in
any threatening, abusive or insulting words or behaviour with intent to
provoke a breach of the peace or being reckless as to whether a breach
of the peace may be occasioned 183.”
Under the OHIM Examiner’s Guidelines, public policy is defined as: “the body of
all legal rules that are necessary for a functioning of a democratic society and a
State of Law184.” While accepted principles of morality is defined as: “those that
are absolutely necessary for the proper functioning of a society 185.” These
definitions are used when determining if a trade mark application for a CTM is
against art. 7(1)(f) CTMR, however, as mentioned previously undertakings are
not required to apply for a CTM if they do not want to have trade mark protection
in the entire EU. If an undertaking is seeking to use a mark in a single Member
State, the undertaking will be subjected to the trade mark laws of the Member
States where registration is sought.
The EC Treaty defines public policy as:
“in particular the prevention, investigation, detection and prosecution of
criminal offences, including the protection of minors and the fight against
any incitement to hatred on grounds of race, sex, religion, or nationality,
and violations of human dignity 186.”
182
Public Order Act 1986
Criminal Justice (Public Order) Act 1994, Part II, Article 6(1)
184
OHIM Examiner Guidelines, para 7.8.1
185
Ibid, no. 174
186
EC Treaty
183
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08020159, LLM Dissertation
Due to time constraints it has not been possible to analyse more Member States
Legislations which may be in place which govern Public Order and/or Public
Policy. Member States must also be given the opportunity to put forward their
requirements insofar as ‘morality’ is concerned and their interpretation of it, as it
applies to ensuring their citizen’s rights are taken into consideration.
National Trade mark Offices are not bound to the decision of OHIM and the
same holds true for OHIM not being bound by the National Trade mark Offices.
This proves difficult when each case is decided on its own facts which of course
different from each other. There must be some cooperation between OHIM and
the National Trade mark Offices when it comes to defining ‘public order’ and
‘morality’. With one uniform definition of both of these, it would provide
consistency in the examination guidelines, thereby ensuring applicants will be
aware of what constitutes an offensive mark under the public order or morality
ground for refusal.
This uniform definition will be made even more difficult with the language and
cultural differences found in each Member State. This can mean that marks
which may not be considered offensive in one Member State can be offensive in
another. This is why it is essential that all Member States and OHIM agree as to
what definition will be used for public order and morality, and include this
definition into the examination guidelines and ensure applicants are made fully
aware of the ‘new’ definitions. In the meantime, until a centralized definition can
be decided upon, there will remain inconsistencies in decisions.
It is the writer’s opinion that a centralized definition will not be possible. This is
evidenced by the many different variations of how the absolute ground is
provided for in each Member State, as shown in this chapter. If public order is
decided to be the central definition verses public policy, then those member
states such as the UK who have a separate Public Order Act will be forced to
change their legislation and vice versa if public policy is used, it may have the
same effect.
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08020159, LLM Dissertation
Only with consistency can we be sure of what the outcome will be.
Chapter 6
Does refusing a trade mark breach Article 10
of the European Convention on Human Rights?
To understand why the ECHR plays an important role in trademarks, it is
necessary to look at why it was originated and why Article 10 is now considered
when determining if a trade mark can be registered or not. A brief history of the
ECHR follows, it is not my intent to delve fully into the ECHR, but I felt it was
necessary to understand the relationship between the ECHR and Trade mark
Law.
The ECHR was created in 1950 and became effective in 1953. Its creation was
seen as a way to promote the Council of Europe’s basic purpose of:
“achieving a greater unity between its members for the purpose of
safeguarding and realizing the ideals and principles which are their
common heritage and facilitating their economic and social programs187.”
Many people are under the belief that Article 10 ECHR is an absolute right,
meaning they are free to say anything they want, this is not the case though.
Article 10 is known as a Restrictive Right, with being a restrictive right
restrictions are permitted on the basis of protecting the public interest. Under
Article 10 governments are able to restrict a person from exercising this right,
insomuch as it is accomplished lawfully and the restriction is seen as necessary
and does not cause an undue burden on an individual.
With the public’s perception that free speech is guaranteed and they are free to
say anything, it is no wonder people are frightened to confront others about their
use of offensive language. People appear to have become more hostile in
187
www.oup.com/uk/orc/bin/9780199289349/davis_chap02.pdf, accessed 31/12/2012
50
08020159, LLM Dissertation
defending their right to free speech and do not want people telling them their
language is not appropriate in certain circumstances. Persons are very
protective of their right to free speech and freedom of expression and feel they
can say anything and nothing can be done to them because they are choosing
to exercise these rights.
Protecting free speech and freedom of expression are not the only concerns of
people; another right which they are equally concerned with is the right to
protect their possessions, found under Protocol 1, Article 1 of the ECHR. This
right has not been dealt with in the Trade Mark Law arena much; however, one
decision has now allowed corporations to demand protection for the ‘trade mark’
possession. The case which brought this matter to the forefront of whether or
not a trade mark can be considered a possession was Anheuser-Busch 188. In
this case the European Court of Human Rights (ECtHR) decided that registered
trademarks and trade mark applications do fall within the protection of the
ECHR’s property rights clause 189. This case only refers to corporations seeking
protection of their property rights; it does not provide a clue if this decision will
be the same for individuals seeking the same protection of their registered trade
mark or application.
The feelings of protecting a person’s right to free speech and freedom of
expression is seen predominantly more in trade mark law, whereby it used to be
that an undertaking would only claim their Article 10 190 rights had been violated
was if their trade mark was infringed 191, as in the case of Miss World Ltd 192,
and Levi Strauss & Co and Levi Strauss (UK) Ltd 193. The relationship
between freedom of expression and trademarks has been limited, and will need
further investigation; the emphasis of this chapter will focus on case law
188
Anheuser-Busch Inc. v Portugal, Application number 73049/01, 44 Eur. H.R. Rep, 42
Ibid, no. 188, at [846]
190
Article 10 European Convention on Human Rights
191
Radler, D., The European “Community Trade mark”: Is it worth the bother? Marquette Intellectual
Property Law Review, 1997, vol.1, Issue 1, Article 6
192
Miss World Ltd v Channel 4 Television Corporation [2007] FSR 30
193
Levi Strauss & Co and Levi Strauss (UK) Ltd v Tesco Stores, Ltd. [2002] ETMR 95 [38]-[44]
189
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08020159, LLM Dissertation
regarding the absolute grounds of refusal on the basis of public policy or
morality.
Recent case law has begun to make the connection between trademarks and
freedom of expression, and has established that a refusal to grant a trade mark
on public policy and morality constitutes an “interference with the applicant’s
right to freedom of expression and therefore calls for justification under Article
10(2) European Convention on Human Rights (ECHR) 194.” Article 10 reads:
1. Everyone has the right to freedom of expression. This right shall include
freedom to hold opinions and to receive and impart information and ideas
without interference by public authority and regardless of frontiers. This
Article shall not prevent States from requiring the licensing of
broadcasting, television or cinema enterprises.
2. The exercise of these freedoms, since it carries with it duties and
responsibilities, may be subject to such formalities, conditions, restrictions
or penalties as are prescribed by law and are necessary in a democratic
society, in the interests of national security, territorial integrity or public
safety, for the prevention of disorder or crime, for the protection of health
or morals, for the protection of the reputation or rights of others, for
preventing the disclosure of information received in confidence, or for
maintaining the authority and impartiality of the judiciary.
Trade mark examiners must be careful not to violate an undertakings freedom of
expression by applying their trade mark laws too strictly. If applied too strictly,
an undertaking can claim his Article 10 rights have been violated. Moreover, if
applied too leniently the trade mark has the potential to cause “outrage and
moral indignation 195” to people. For this reason, a balancing act is required to
ensure that Article 10 rights are not violated and protecting the population from
trademarks which may appear offensive.
194
Radler, D., The European “Community Trade mark”: Is it worth the bother? Marquette Intellectual
Property Law Review, 1997, vol.1, Issue 1, Article 6
195
Humphreys, Gordon, Freedom of Speech and Trade marks, Gauging Public Sensitivities or Curtailing
civil Liberties, 13 March 2009
52
08020159, LLM Dissertation
An undertaking who believes that their trade mark refusal is a violation of the
Article 10 right to freedom of expression must satisfy the court that there has
been an “interference with expression 196”. It is then the responsibility of the
State to establish that the interference falls into one of three categories: 1)
prescribed by law, 2) has been imposed for one of the legitimate reasons listed
in Article 10(2) and 3) necessary in a democratic society.
OHIM is not in itself bound by the ECHR, however, as an “organ of the
community OHIM must interpret European trade mark law compatibly with the
ECHR”, thereby they are bound to ensure the applicant’s fundamental rights are
protected pursuant to the ECHR. It is not just OHIM which has to consider
Article 10 ECHR violations when deciding if a trade mark is contrary to public
policy or morality; all Member States of the EU must have agreed to be bound
by the ECHR. Therefore the Member States’ trade mark laws also have to
ensure that Article 10 rights are not violated when refusing a trade mark under
their relevant trade mark laws.
In the United Kingdom, there have been several cases which have identified the
relationship between Article 10 and refusing a trade mark on public policy or
morality. These cases are identified below, along with the decisions of the
judges hearing the case and how their perception of the relationship of s3(3)(a)
Trade mark Act 1994 and Article 10 ECHR.
Ghazilian’s 197 was the first UK case which addressed the issue of a violation of
the applicant’s freedom of expression right under the ECHR to register ‘TINY
PENIS 198.’ Simon Thorley, Q.C. was “sceptical about the relevance of the
right 199”, since even if refused trade mark registration the applicant would still be
able to use the mark (as an unregistered trade mark). He viewed the Trade
mark Act 1994 and Article 10 ECHR as being identical, whereby he commented:
196
Ibid, no. 194
Ghazilian’s Trade mark Application [2002] ETMR 63
198
Ibid, no. 197
199
Radler, D., The European “Community Trade mark”: Is it worth the bother? Marquette Intellectual
Property Law Review, 1997, vol.1, Issue 1, Article 6
197
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08020159, LLM Dissertation
“Section 3(3) indicated that the Registrar should refuse registration where
the mark is contrary to accepted principals of morality. To redefine this
as saying that he should only refuse registration where there is a pressing
social need to do so, is, to my mind, merely a matter of words. The same
principles are at work. There must be a clearly identified aspect of
morality which exists and which would be undermined by the
registration…This does not however assist in defining the dividing line
between cases where registration should be allowed or refused 200.”
With this comment he believed that his decision would have been the same
even if the ECHR was not in force at the time his decision was made, based on
the fact that there was no “distinction between the approach required under
Article 10 and that of s3(3)(a) Trade mark Act 1994 201.” There are some who
believe that s3(3)(a) Trade mark Act 1994 should be applied consistently with
the ECHR, more specifically Article 10 202. Geoffrey Hobbs, Q.C. commented on
this consistency by saying:
“Section 3(3)(a) seeks to prohibit registration in cases where it would be
legitimate for the ‘prevention of disorder’ or ‘protection of ..morals’ to
regard use of the trade mark in question as objectionable in accordance
with the criteria identified in Article 10 ECHR. It does so in terms which
disclose no intention to prohibit registration in cases where use of the
relevant trade mark would not be objectionable under Article 10 on either
or both of those bases203.
He goes on to comment that a person’s
“right to freedom of expression must always be taken into account without
discrimination under s3(3)(a) and any real doubt as to the applicability of
the objection must be resolved by upholding the right to freedom of
expression, hence acceptability for registration.”
This confirms that the UK courts have begun to recognize the need to ensure
that an applicant’s right to freedom of expression is considered when refusing a
200
Ghazilian’s Trade mark Application [2002] ETMR 63, [22]-[23]
Griffiths, J., Is There A Right to an Immoral Trade Mark? http://ssrn.com/abstract/1492117, accessed
17/07/2012
202
Basic Trade mark SA’s Application [2006] ETMR 24, [3]
203
Ibid, no. 202, para [6]
201
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08020159, LLM Dissertation
trade mark registration under s3(3)(a) Trade mark Act 1994. It has been
established through case law following the decision in Basic Trade mark SA’s
Application 204, that the Article 10 right to freedom of expression played an
equal role in the decisions to either refuse or accept trade mark registration
under s3(3)(a) Trade mark Act 1994 205.
On the Community Trade mark level, the role of Article 10 was brought to the
forefront of the European Trade mark Registration in the case of Screw You206.
In deciding the case of Screw You207 the Grand Board took the UK’s decisions
regarding an applicant’s Article 10 rights and expanded on them, whereby the
commented:
“While it is true to say that a refusal to register does not amount to a
gross intrusion on the right to freedom, since traders can still use
trademarks without registering them, it does represent a restriction on
freedom of expression in the sense that businesses may be unwilling to
invest in large-scale promotional campaigns for trademarks which do not
enjoy protection through registration because the Office regards them as
immoral or offensive in the eyes of the public 208.”
The Grand Board went on to comment:
“freedom of artistic expression is regarded as a higher priority than
freedom of commercial expression and consequently it is more fiercely
protected. The use of profanities in the name of art and literature is
circumscribed with great reluctance in democratic and open societies.
The same is true in relation to expressing opinions. A militant atheist may
write an article for public consumption ridiculing religion, for example, and
the State will not intervene. But a trade mark mocking, or exploiting the
name of, the founder of a major world religion might nonetheless be kept
off the register 209.”
204
Ibid, no. 203
Scranage’s Trade mark Application ‘FOOK’ Trade mark Application Number: 2309350 O-133-04 and
FCUK Trade mark Application Number: 2184549 O-137-06
206
Screw You R495/2005, [2007] ETMR 7
207
Ibid, no. 206
208
Ibid, no. 207
209
Ibid, no. 208 para 24
205
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As we have seen, there a fine line between determining if a trademark is to be
registered or not without violating an undertakings freedom to his/her
possession or freedom of expression. The future of trade mark registration or
lack thereof of the non-registration of a trade mark and human rights violations is
still a matter for the courts to decide.
I believe that the human rights issue will continue, until undertakings realise that
their right to freedom of expression has to be weighed against the government’s
responsibility to protect its citizens from being subjected to offensive material.
However, as mentioned earlier, even if a trademark is used but not registered,
the public still has the right not to be offended and can take action with the
Advertising Standards Authority of their respective country, in an attempt to have
the mark removed from the public’s view.
Chapter 7
Does OHIM Work?
This chapter will focus on the function of OHIM which is to “manage and
promote Community Trademarks within the EU 210” and examine if the creation
of OHIM has improved the registration process of trademarks which may not fall
in line with Article 7(1)(f) CTMR as being “contrary to public order or the
accepted principles of morality 211.”
OHIM was established by the Community Trade mark Regulation (40/94) and
became active on 1 April 1996. It was estimated that the initial influx of
community trademarks seeking to be registered would be 15,000 212 within the
first year. However, the actual number of trade mark applications received was
210
Musson, V., Finding is feet: 10 years of OHIM practice, September/October 2006, www.worldtrade
markreview.com, accessed 10/07/12
211
Article 7(1)(f) Community Trade mark Regulation
212
Musson, V., Finding its feet: 10 years of OHIM practice, September/October 2006, www.worldtrade
markreview.com
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08020159, LLM Dissertation
43,698 213. This number has increased substantially over the years and now has
exceeded 1 million applications in total214.
In 2012, there were 63,944 trademarks registered with 11,415 oppositions
received by the OHIM office. Moreover these figures do not break down
oppositions based on the respective Article of the CTMR on which the
opposition was filed. To find these figures one must conduct a search of the
OHIM online databases and do a search based on Article 7(1)(f) CTMR and see
the number of applications which appear on the results page. This search is
time consuming but worth the effort, but it is this writer’s opinion that it should be
placed in the search databases, as additional search criteria available without
having to search the entire OHIM website for the respective area where the
search is available.
From 1998 to 12 September 2012, there have been 79 215 trade mark
applications refused based on being contrary to public order or the accepted
principles of morality under Article 7(1)(f) CTMR. These refusals equate to less
than 1% of the trade marks applied for on the community level, this percentage
does not represent the number of refusals which were later allowed to be
registered after going through the appeals process.
OHIM processes applications in 5 different languages (English, French,
German, Italian and Spanish)216. Having applications received in 5 different
languages can cause problems when it comes to interpretation. To prevent such
problems from occurring, applications are examined on the language of the
application. The application then proceeds to a language check which is
accomplished by individual examiners whose primary language is that of their
home country. This check allows for any applications to be flagged for any
213
Ibid, no. 212
www.oami.europa.eu/ows/rw/resource/documents/OHIM/statistics/ssc009statistics_of_community_trade_marks_2012.pdf, accessed 16/09/12
214
215
www.oami.europa.eu/search/legaldocs/la/EN=Refused_search_cfm?CFID=9008045&CPTOKEN=3000457
9, accessed 14/9/12
216
Ibid, no. 215
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08020159, LLM Dissertation
language which may be questionable as meeting the provision of Article 7(1)(f)
CTMR. This examination of the applications may appear to be excessive and
time consuming. This system also appears on the surface to be effective since
the number of refusals at the examination level is below 1% of all applications
received at OHIM.
As OHIM has grown, so have the search capabilities which are available to
persons seeking to trade mark their products. It is therefore easier to identify
what will be accepted or rejected as a registered trade mark. Also, with case law
being widely published on the internet, it is now possible to establish what the
courts consider as contrary to public order or the accepted principles of morality
pursuant to the CTMR 217. With this available information there are no valid
reasons for a prospective trade mark applicant to knowingly submit an
application to OHIM that will violate Article 7(1)(f) CTMR.
It can therefore be established that although OHIM trade mark examiners are
responsible for noticing applications which do not meet the criteria under Article
7(1)(f) CTMR, it must be realised that it is a combined effort between the
companies which exist to assist applicants to submit their applications to OHIM
on their behalf, and the trade mark applicants themselves who register directly
with OHIM.
OHIM will continue to succeed as long as cooperation is maintained with the
aforementioned parties and technological advancements are continued to be
made to the OHIMs databases in order to ensure current information on refused
trademarks is readily made available to the public.
Should examiners be moral arbitrators? Most if not all countries, have an
agency which governs the advertising of products, would it not be better to let
the advertising agency be the final determination of what is offensive or not
when it comes to trade marks? These types of agencies have extensive
knowledge when it comes to advertising and how the public perceives certain
217
See cases in Chapter 1 for specific names
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08020159, LLM Dissertation
material 218, and seem to be the most in touch with what the public wishes to see
and not to see. Suggestion: OHIM could work with these advertising agencies in
the respective countries in which the trademarks are being sought registration
in, and share the responsibility in determining what is considered offensive or
not. This is a suggestion, although I am not stating that this type of co-operation
will work, but it has the possibility of success, how much would have to be
determined by OHIM and if they are willing to invest in researching this. It is a
matter of waiting and seeing what will happen.
Chapter 8
Will public order and morality cease to be so
important in the future of trademarks?
To answer this question one, would need to look into a crystal ball or have
access to a fortune teller. One way to answer this is by looking at the past and
how public order and morality, were viewed and how those views have changed
to accommodate the social changes in the present. Once this is accomplished
then we can move onto speculating how the future of trade mark law, public
order and morality is likely to change. Since we cannot predict the future, all we
can go by is our past experiences and apply them to how we think changes will
happen. Some call it guesswork, others call it forward thinking; whatever you
want to call it, it is still trying to predict the future and nothing is certain.
It is important to remind ourselves that what was considered contrary to public
order or morality 50 years ago may have change substantially over time to
where now they have become less important and have been replaced with more
pressing issues. This movement has been a slow process and has been
adapted over the decades as societies needs and requirements have changed.
218
This can be seen by surveys which have been undertaken in an effort to understand how the public
perceive advertising and if there should be certain groups who are automatically protected from
offensive advertisements.
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08020159, LLM Dissertation
One of the most noticeable changes is that of the everyday language, words or
phrases used today compared to even 20 years ago has substantially changed.
Words or phrases that were used in 1950 are now considered ‘old fashioned’
and the youth of today would not be caught ‘dead’ using language which is not
considered current, thereby considering anyone over the age of 25 as ‘old’ and
not up with the times. The youth of today want the older generations to use their
slang words and phrases to communicate with them, but this writer believes that
they should use the correct words when speaking to their ‘elders’. When I say
correct words, it’s not meaning to be politically correct, its means bearing in
mind whom you are talking to and communicating effectively with them.
Language is the key element when considering whether or not to accept a trade
mark application for registration, this is because everyone recognizes language
and that is what makes us human, the ability to communicate. Whether we do it
effectively without causing offense to people is another matter. As societies
change, so do their perceptions of what constitutes offensive language. This can
be seen in two articles which have brought offensive language concerns to the
forefront of people’s minds.
In 2011, Mr. Justice Bean, UK High Court Judge made a comment which
appears to upset the balance between acceptable and unacceptable language
when he commented in a case that the word “‘fuck’ is not necessarily
offensive 219”. To understand this comment and the context in which it was
made, it is necessary to look at the facts of the case: A young man was being
searched by the police for drugs, whereby the suspect repeatedly hurled the ‘F’
word at the police during and after the search. Upon hearing this, the Magistrate
at Thames Court found the suspect guilty on the grounds that the suspect’s
explicatives were spoken in a public area with a group of teenagers looking on
to see what was happening. The Magistrate decided that “there were people
219
Wardrop, M., Swearing at Police is not a crime, Judge rules, The Telegraph,
http://www.telegraph.co.uk/news/uknews/law-and-order/8902770/Swearing-at-police-is-not-a-crimejudge-rules.html, accessed 06/12/2012
60
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around who don’t need to hear frightening and abusive words issuing from
young men 220.”
The suspect appealed, the case was heard by Mr. Justice Bean. Mr. Justice
Bean did not appear to be concerned about the bystanders hearing the ‘F’ word
since they “may have been sympathetic with the suspect 221.” In other words, the
bystanders were probably accustomed to the language used by the suspect and
hearing those words would not cause them alarm or distress 222.
This decision has caused problems with the Metropolitan Police because they
now feel that since the court has basically said that people are now allowed to
swear at the police, “everyone is going to start doing it 223.” Moreover, the
Metropolitan Police Guidance instructs police not to arrest people based on the
swearing at police officers, the Directive states “the courts do not accept that
police officers are caused harassment, alarm or distress by words such as
______, ___, ____ or _____ 224.”
On 5 September 2012, Brussels instituted a new fine system whereby a person
can now be fined between 76 Euros and 250 Euros for using offensive language
on the public streets 225.” The Mayor of Brussels commented: “any form of insult
is from now on punishable whether it be racist, homophobic or otherwise 226.”
What the above shows is that people are still divided as to what constitutes
offensive language. Although I agree somewhat with Mr. Justice Bean’s
comments, that the bystanders were probably use to hearing the language the
suspect was using, but to use this as the basis that police officers are used to
220
Ibid, no. 219
Ibid, no. 220
222
Wardrop, M., Swearing at Police is not a crime, Judge rules, The Telegraph,
http://www.telegraph.co.uk/news/uknews/law-and-order/8902770/Swearing-at-police-is-not-a-crimejudge-rules.html, accessed 06/12/2012
223
Ibid, no. 222
224
Ibid, no. 223, this is how the article wrote the quote
225
Clifton, L., Brussels, Belgium passes law against using ‘offensive language’,
http://examiner.com/articles/brussels-belgium-passes-law-against-using-offensive-language, accessed
15/09/2012
226
Ibid, no. 225
221
61
08020159, LLM Dissertation
hearing that sort of language. Nevertheless, I am under the belief that it is not
right that hurling offensive language at police just because they are used to it.
My concern is what if there is a new police officer just out of training and has not
built up the hardened shell to protect themselves from being affected by verbal
abuse. I feel they are likely to be offended, and are being told not to be
offended because of their job. It is my opinion no matter who you are or what
job you have it is not acceptable to be verbally abused.
Public order/Public policy decisions are altered and instituted as needed to meet
the requirements of its citizens as determined by the governments. It is for this
reason, that to speculate what the future holds is a difficult task. It can only be
hoped that the needs and requirements of a society are correctly interpreted by
those making the public order/public policy decisions and that they do not place
additional limits on a person’s freedom of expression when deciding on a trade
mark to represent their goods or services.
A person’s view of what is moral and immoral is not likely to fluctuate over time.
Their belief system instils in them the sense of right and wrong from an early
age and they carry that belief with them throughout their life. By examining past
trade mark refusals it is easy to see why examiners have a hard time
determining what is ‘immoral’ when there are so many different perceptions of
moral and immoral.
As the world’s population grows, this perception can become more or less
important, depending on the way belief systems are viewed in years to come.
As always, what is considered immoral today in 2012, may not even break the
surface of being immoral in 10 or even 20 years. Watch this space…
62
08020159, LLM Dissertation
Definitions
All of these definitions have been taken from Black’s Law Dictionary, 8th Edition,
2004, Saint Paul, MN
Morality: Conformity with recognised rules of correct conduct; a system of
duties; ethics.
Obscene: Extremely offensive under contemporary community standards of
morality and decency: grossly repugnant to the generally accepted notions of
what is appropriate.
Obscenity: The characteristics or state of being morally abhorrent or socially
taboo, esp. as a result of referring to or depicting sexual or excretory functions.
Offensive: Causing displeasure, anger or resentment: especially – repugnant
to the prevailing sense of what is decent or moral.
Public Morality: The ideals or general moral beliefs of a society; The ideals or
actions of an individual to the extent that they affect others.
Public Policy: Broadly, principles and standards regarded by the Legislature or
by the Courts as being of fundament concern to the state and the whole of
society. Courts sometimes use the term to justify their decisions by declaring it
is ‘contrary to public policy’.
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08020159, LLM Dissertation
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08020159, LLM Dissertation
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08020159, LLM Dissertation
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70