Brands, trade marks and morality

A trade mark registration is a powerful commercial right. Because of this, a trade mark must meet certain thresholds before registration is granted. During the registration process an application may encounter objections that it does not meet one or more of these defined thresholds.

One such ground for refusal is that a trade mark must not be contrary to public policy or to accepted principles of morality. Whilst most other grounds of refusal are based on commercial considerations, the rationale behind this ground is the need to uphold certain societal values and principles. Trade marks that are immoral or offensive should not be legitimised such that a trader can reap the commercial benefits and exclusive rights and privileges afforded by trade mark registration.

The concepts of public policy and morality are not easy to define or interpret, however, particularly where morality is concerned. What is offensive or immoral to one person might, to another, simply be bad taste. What is deemed immoral might depend on where you live, the prevailing societal views on immorality at any particular time and also current events.  It is hard to imagine anyone now being offended by the trade mark OOMPHIES being used for shoes but, in the 1940s, this mark was initially refused protection because of the sexual connotations associated with the word OOMPH in American English. The word OOMPHIES was considered salacious and the UK Intellectual Property Office took the view that it had a duty to protect those members of the public that would be offended by this word. Applications to register the trade mark JE SUIS CHARLIE would not have raised eyebrows prior to the tragic events of 2015 at the French satirical newspaper Charlie Hebdo but, post these events, they must be viewed as distasteful at the very least.

Some more recent trade marks that have been refused on the grounds of immorality or being contrary to public policy are the words PABLO ESCOBAR and this logo;

How would you feel if you saw goods being commercialised under either of these brands? Maybe that would depend on your particular circumstances, e.g. where you live and – in the case of the logo mark – your individual experience of the Covid pandemic. These are some of issues that IP offices and courts grapple with when considering these types of trade marks.

There will always be some people who are easily offended or shocked and others whose tolerance for offence is very high. In view of this, the starting point for assessing offensive marks is the perception of a reasonable person with average thresholds of sensitivity and tolerance, taking into account the context in which the mark may be encountered.

In the case of PABLO ESCOBAR, the company that manages the IP rights of the Escobar family, Escobar Inc, applied to register PABLO ESCOBAR as a European Trade Mark for a wide range of goods and services covering 33 classes. The application was refused by the European Union Intellectual Property Office (EUIPO) as contrary to public policy and accepted principles of morality.

Escobar Inc appealed the decision to the General Court (of the Court of Justice of the European Union). Despite some creative arguments by Escobar Inc, e.g. that Pablo Escobar had became a mythical figure known as the “Robin Hood of Colombia” because of his many good deeds for the poor in Colombia, the Court sided with the EUIPO. It agreed that a non-negligible part of the relevant public would associate PABLO ESCOBAR “with the crimes committed by the Medellín cartel or directly attributed to Pablo Escobar, which were unacceptable in modern democratic societies, as they were absolutely contrary to the recognised ethical and moral principles”.

The mark would be perceived as “highly offensive or shocking, as an apology of crime and a trivialisation of the suffering caused to thousands of people killed or injured by the Medellín cartel, of which Pablo Escobar was the presumed leader”. It further concluded that this suffering was not in any way erased or offset by any actions in favour of the poor that might be attributed to Pablo Escobar.

The mark sought protection for various goods including computer gaming software; board games and toys. The application was refused as being contrary to public policy or accepted principles of morality because it;

• was derogatory to people who objected to the pandemic measures implemented by governments,
• trivialised the virus,
• allowed the applicant to make an unjustified profit from the pandemic as a free rider,
• could potentially incite a breach of public pandemic measures.

The applicant appealed the refusal and the appeal was decided by the Grand Board of the EUIPO because of the importance of the case and the degree of legal complexity involved. The Grand Board upheld the refusal, agreeing that the mark did indeed trivialise and ridicule one of the deadliest and most destructive pandemics ever. In the context of the decision, the Board also considered the applicant’s fundamental right to freedom of expression. It concluded that, whilst a refusal to register a trade mark does interfere with this fundamental right, the right to freedom of expression is not unlimited. After an in-depth review of the relevant case law, the Board decided that a limitation was justified in this case, particularly as the refusal to register a trade mark has no impact on the actual use of the mark.

In light of an increased number of applications to register offensive marks, the EUIPO earlier this year released its “Common Communication CP14”. This document provides guidance on how to assess trade marks that might be contrary to public policy or to accepted principles of morality as well as common understandings of the concepts of public policy, accepted principles of morality and other related concepts. It illustrates how the assessment of potentially offensive marks is nuanced and impacted by various factors.  For example:

• The above mark would not be acceptable for the “organisation of entertainment services” in class 41. This is because it would be perceived as trivialising the Fukushima tragedy and therefore offensive to its victims. Moreover, the services applied for indicate the applicant seeks to obtain commercial benefit from and take advantage of this shocking event.
• On the other hand the below mark is acceptable in the context of “museums”  in class 41. This is because the services applied for are intended to educate consumers and raise their awareness. Accordingly, the sign “has a symbolic and neutral connotation without any offensive or shocking message”.

CP14 provides welcome guidance where potentially offensive marks are concerned. However, as the moral values and standards of society constantly shift and change and are impacted by events, every case will need to be carefully considered on an individual basis.