article
There ain't no 'f' in morality
6 March 2009
The development of trade mark law with regard to public policy and morality
In November 2008 the UK Intellectual Property Office (UKIPO)
caused a certain amount of unrest by allowing the marks ASSHOLE and
QRGASM to proceed to publication.
A number of practitioners felt that these marks ought to have
been refused registration under s.3(3)(a) Trade Marks Act 1994
which provides that:
“A trade mark shall not be registered if it is… contrary to
public policy or to accepted principles of morality…”
European practitioners will recognise this provision as Article
3(1)(f) of the Trade Marks Directive (Directive 89/104/EEC).
The publication and subsequent registration of these marks
raises questions about the current status of these absolute grounds
for refusal both in the UK and in the Community. Indeed, one
commentator has remarked that there is ostensibly no such thing as
a mark which is offensive across all of the classes against which
trademarks can be registered.
The so-called decline in moral standards in society has been a
popular media topic in the last few years. Now is therefore a good
moment to consider whether the accepted principles of public policy
and/or accepted principles of morality have changed and therefore
whether the threshold for objection to a trade mark registration on
these grounds has changed or indeed should change.
The UK
It is important to remember that there are basically two
“immorality” grounds for refusing a trade mark application. The
first is where the application is “contrary to public policy”. The
second ground is where the application is contrary to “accepted
principles of morality”. In both cases the emphasis is upon the
mark’s effect, not the intention. However, it is clear from the
various decisions given by the UKIPO and on appeal by the Appointed
Person (a senior lawyer appointed to hear appeals from UKIPO
decisions) that the intention of the mark has bearing upon the
success or otherwise of the application, particularly with regard
to the second ground.
The Trade Mark Registry’s work manual helpfully splits marks
offending s.3(3)(a) into three types:
- Those with criminal connotations;
- Those with religious connotations; and
- Explicit / taboo signs.
It might broadly be said that types 1 and 2 relate to the public
policy ground of objection, whilst type 3 relates to accepted
principles of morality.
The law and practice with regard to types 1 and 2 above is
reasonably well settled. On the basis of previous decisions, it is
difficult to envisage a situation where a mark with criminal or
religious connotations will proceed to registration at the UKIPO,
as shown by the “INTER CITY FIRM” application. In this matter, the
UK Trade Marks Registry refused to register a figurative mark
bearing the words “Inter City Firm” because the Inter City Firm was
associated with football hooliganism.
The UKIPO’s approach is similarly consistent with marks that
relate to substance abuse. In 2006 an application for the word mark
“TOKE” was refused on the grounds that the dictionary definition is
“To take a draw on a cannabis cigarette.”
Cases involving religious connotations are sparse but in 2005,
Geoffrey Hobbs QC (sitting as the Appointed Person) refused to
allow the appeal from the hearing officer’s refusal to register the
word mark “JESUS”.
The difficulties seem to arise in respect of the less specific
“explicit / taboo” signs, where the history is somewhat more
chequered. Christopher Ghazilian’s application in 2001 for “TINY
PENIS” in respect of clothing and other items in Class 25 did
little to impress the hearing officer. Similarly, an application
for “SNUFF MOVIES” and “BOLLOX” was also refused. At one level,
these decisions now seem somewhat incompatible with the recent
decision to accept an application for ASSHOLE. However, it must
also be noted that such marks as “RAATZ PIZS”, “KRAP”, “BREWERS
DROOP” and “BONK” have all been accepted in recent years. This
suggests that the ‘accepted principles of morality’ which trade
marks must not be contrary to are highly subjective, dependent upon
the examiner, and not subject to genuine measurable moral
standards.
UK practitioners will be familiar with Dennis Woodman’s attempt
to have the famous FCUK mark revoked as being contrary to
s.3(3)(a). Such was the importance of this case to the subject that
the then president of the Institute of Trade Mark Attorneys issued
a press release supporting the judge’s decision to reject Mr
Woodman’s petition. Richard Arnold (sitting as the Appointed
Person) rejected the appeal because he felt that FCUK was not a
swear word, even though it can and had been used to evoke one.
The line between what is and is not a swear word must be a fine
one, as the FCUK decision followed hot on the heels of the decision
to reject the application for “FOOK” by a Mr Kevin Scranage. FOOK
is the phonetic spelling of the way in which the actual swear word
is pronounced in a number of UK dialects.
Mr Scranage however, is not a man easily deterred and in 2008
was again before the Appointed Person (Professor Ruth Anand) in
respect of his application for “THERE AIN’T NO F IN JUSTICE”. In
this case, the UKIPO waived the objection under s.3(3)(a) during
the course of the proceedings. In her judgement, Professor Anand
stated that one of the things rendering the mark registerable was
the “element of irony in its double entendre”, which suggests that
the mark’s offensive nature added to its distinctiveness and helped
it move from the status of an unregistrable slogan.
The Community
The issue of public policy and morality has been looked at less
frequently at a European level. The only cases the Office of
Harmonization for the Internal Market (OHIM) have considered
regarding criminal connotations are “INTERTOPS” and “BIN LADIN”. In
INTERTOPS the European Court of First Instance ruled that not
having a licence to run a bookmaker would not prevent a company
from registering a bookmaking trademark; it is the intrinsic
qualities of the mark, and not the conduct of the person applying
for the mark that should be assessed. In BIN LADIN, the trademark
was refused as it appeared to glorify terrorism.
OHIM has historically seemed to be a little more conservative
about explicit/taboo signs than the UKIPO and offices in other
jurisdictions. For example, it refused to allow “I AM WHORE HEAR ME
ROAR” which claimed priority from an earlier successful USA
application.
In the application for “SCREW YOU”, the Grand Board of Appeal
would only allow the application to proceed in respect of goods
which would ordinarily be sold in a sex shop in Class 10, rather
than the wider specification for clothing and other items
originally claimed. The Board reasoned that someone visiting a sex
shop would be unlikely to be offended by a mark which contains
“crude, sexually charged language.” In the FCUK revocation
proceedings, Richard Arnold noted that is not possible for the
registry to control how a mark is used once granted. Perhaps OHIM
thinks, to some limited extent, that it can. However, it is also
important to bear in mind that a trade mark is not in itself a
right to use a mark, it is simply a right to prevent others from
doing so.
Conclusions
The case law on this issue is naturally somewhat contradictory.
The case law surrounding objections to registrations that might be
deemed contrary to public policy are relatively consistent. The
UKIPO had maintained a firmly strong line in refusing such
applications, which perhaps reflects the reasonably authoritarian
approach of the UK Government to this issue in recent years.
Decisions based upon the imposition of some hypothetical moral
standard are naturally less consistent because no uniform moral
standard exists. It is interesting that applications such as
ASSHOLE and QRGASM made it through the application process. Perhaps
this does mean that UK society has tolerance levels that are higher
than they used to be and that we are less easily offended. If so,
then it is only natural that UKIPO examiners’ decisions will
reflect that. It is of course much harder to generalise at a
European level and therefore it is probably more difficult for OHIM
examiners to make a decision on these grounds. This may explain why
OHIM examiners have tended to be more cautious in refusing marks
than other jurisdictions may have allowed.
However, the various decisions on this subject both at a UK and
European level have shown two interesting features. The first is
that registrability on the basis of a moral standard is somehow
dependent on the class of goods that it is registered for.
Actually, this makes little sense. Any objection to a trade mark
application must be an objection to the effect that mark will have
in principle, rather than in the context of its actual use. The
question should really be whether its entry upon the register will
cause offense.
The second feature is that a certain amount of “taboo” can
increase a mark’s distinctiveness. This is unarguable, as the
success of the notorious FCUK mark shows. However, it is surely a
somewhat strange and uncomfortable conclusion that pushing a mark
closer to the threshold of moral objection without allowing it over
the edge can give the mark a greater chance of registration.
Ultimately, and importantly, it is clear from the above
examination that – whether or not there has been a shift in
standards leading to more liberal interpretations of the law – the
law itself has remained consistent.
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