I'm Offended! - Advocate General Bobeck Opines on When a TM is Contrary to Morality or Public Policy

Morality seems to be the topic of the day on this blog, having recently written about the US Supreme Court case relating to the registration of immoral trademarks. While this writer will is not by any means the 'morality police', it is an important topic to discuss, albeit unusually so in connection with intellectual property. Similarly to US legislation, many other jurisdictions prevent the registration of trademarks that contravenes morality, including in Europe. In the light of this, what makes a trademark contrary to morality, and when can the courts reject those marks? Luckily the CJEU is facing this very question, and Advocate General Bobeck gave his take on the matter very recently.

The case of Constantin Film Produktion GmbH v EUIPO concerned the registration of the name "Fack Ju Göhte" (EUTM 13971163) by the film company, which is a very successful German comedy. The company, naturally, wanted to register the mark due to this success, but the application was rejected by the EUIPO due to it being contrary to "accepted principles of morality". Constantin then appealed the rejection, which ended up going all the way to the CJEU.

A trademark application can be rejected under Article 7(1)(f) of the CTM Regulation if it is "...contrary to public policy or to accepted principles of morality". The Advocate General therefore had to opine on when a trade mark application is contrary to public policy or to accepted principles of morality, and what the relevant test is in determining that.

The first thing considered by the AG was the relationship between trademarks and the freedom of expression. The AG set out that, even though the registration of trademarks is a commercial activity by nature, it by no means limits the applicability of the freedom of expression to trademarks, and is further codified by the Regulation as a part of trademark law. He further set out that "…although freedom of expression, as well as other fundamental rights potentially at stake, must be taken into account in the overall balancing exercise, the protection of freedom of expression is not the primary goal of trade mark protection". One can agree with this, since trademarks, while clearly an important expression of a particular brand, are primarily focused on showcasing the quality of a product and ensuring its origin to the consumer; not to make statements for the sake of it.

The AG then moved onto consider the relationship between public policy and accepted principles of morality. In practice, the terms have been considered both interchangeably and separately, which leaves the option open for the CJEU to determine how exactly they should be considered.

In defining public policy, the AG set out that it means "…a normative vision of values and goals, defined by the relevant public authority, to be pursued now and in the future", i.e. the legislature's attempt to solidify the normative values of society at that time. Accepted principles of morality, however, are "…values and convictions currently adhered to by a given society, set and enforced by the prevailing social consensus within that society at a given time", which contrasts as a less guided sense of what is right, but how society at large feels about issues. The distinction therefore is a top-down v bottom-up approach to public morality, with the former being a more objective measure, and the latter a subjective one.

When relying on either one of the above grounds, the AG considered that the EUIPO must therefore establish, with references to the prevailing perception among the relevant public, why they believe that a given sign would offend those principles.

The AG considered that the public relevant to the matter at hand would be a general and German-speaking one, and that any public policy or morality considerations would have to be made in the light of that fact. Vulgarity in one language, here English, would not therefore necessarily be considered such by non-English speakers. Additionally, any assessment by the EUIPO cannot be made solely and exclusively looking at the word sign, in isolation from the broader societal perception and context, if any evidence for such exists.

In this matter the name "Fack Ju Göhte" was fully authorized to screen with the name by the German authorities with no age restrictions. They clearly therefore considered the name to not be vulgar; contrary to the findings of the EUIPO. This national context is important, which should be taken into account by the EUIPO. If the EUIPO wants to depart from this the standard of proof is raised, and in this case they failed to prove otherwise. The first ground of appeal consequently failed according to the AG.

The AG also criticized the EUIPO for a lack of consistency in its decision-making, and for failing to explain why this application's outcome was different to previous decisions (including in Die Wanderhure).

The opinion is very thorough and convincing, and it is very likely that the CJEU will follow the AG's well-reasoned view on the matter. Any rejections by the EUIPO over a contravention of morality should be consistent in their approach, and the CJEU's clarification will hopefully bring them to this outcome. This writer will wait for the CJEU's ultimate decision patiently.

That's Just Offensive - US Supreme Court Allows for the Registration of 'Immoral' Trademarks

The notion of morality is deeply embedded in human society, coloring most facets of it in some ways. Whether it is laws prohibiting deplorable actions, or simply stopping you from saying hateful things (in some jurisdictions), morality is an important part of the legislative framework. In the world of IP you rarely deal with issues of morality, but sometimes they do crop up. In the last few years, the registration of 'disparaging' trademarks has been a hot topic in the US (discussed more here and here), but what about marks that one could class as immoral? The Supreme Court were therefore tasked with deciding this part of trademark law, and handed down their judgment very recently.

The case of Iancu v Brunetti concerned an application to register the mark "FUCT", which was the brand of Mr Brunetti's clothing line. Under examination by the USPTO, the application was rejected due to it being immoral due to vulgarity under 15 USC 1052(a). Mr Brunetti subsequently appealed the decision, arguing that it infringes on his First Amendment right to free speech, with the case ultimately landing on the Supreme Court's desk.

As decided in the Tam case, preventing the registration of 'disparaging' trademarks violated the First Amendment as it "...discriminate[d] against ideas that offend". The grounds for rejecting trademarks that are 'immoral' falls within the same provision of US legislation as rejecting the registration of 'disparaging' ones.

Justice Kagan, handing down the majority's judgment, swiftly determined that the provision similarly violates the First Amendment. The Government argued that the prohibition was a viewpoint-neutral one, and would only be restricted to certain kinds of immorality, therefore being somewhat restricted. The Court didn't buy this argument, and saw that "...It covers the universe of immoral or scandalous—or (to use some PTO synonyms) offensive or disreputable—material". This means that almost anything that fits that criteria could therefore be rejected by the USPTO.

The Court honed matters down further, noting that the provision aims to suppress certain views, albeit 'immoral' ones, and would violate free speech., even if allegedly captured through the use of "viewpoint-neutral" legislative language.

Justice Kagan wrapped matters up by drawing a line in the sand: "There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all. It therefore violates the First Amendment".

While most Supreme Court decisions are incredibly important, the decision in this case is in no way revolutionary. The Court has clearly put an end to the limitation on registering negative trademarks, no matter how offensive or immoral. Applicants can therefore rejoice over the possibility to go ham on registering ever-more offensive marks to their hearts' content...

Walking the Dotted Line - CJEU Decides on what Dotted Lines mean in Trademark Applications

The Devil is often in the details, especially when applying to register trademarks and/or patents. Sometimes the smallest of 'mistakes' or strategic choices could lead to the revocation or devaluation of your IP, so it is important to be sure you have set out the exact parameters in the best way possible to avoid potential issues. One such matter is how trademarks are presented in graphical form, including dotted lines (the Trunki case being a good example of when the illustration of a mark really mattered). With this in mind, how does the inclusion of dotted lines in trademark applications impact the mark, and can they be excluded as being simply illustrative?

The case of Deichmann SE v EUIPO concerned the registration of a trademark involving a cross design on the side of a shoe, where the shoe itself was marked using dotted lines to illustrate the position of the mark (EUTM 2923852). Infringement proceedings involving the mark were initiated by Deichmann 6 years after the registration of the mark, and the other party, Munich SL, counterclaimed for revocation and invalidity. The matter then ultimately ended with the CJEU for determination.

The crux of the matter is whether the mark can be revoked under Article 51 of the EU Trade Mark Regulation for a lack of genuine use in the EU. What the Court also had to consider was whether the mark was a figurative or a position mark, and whether that was an irrelevant fact for the determination of genuine use.

Does it really count if I signed on a dotted line?

The Court considered that "…it [is] irrelevant whether the mark at issue should be regarded as a position mark or a figurative mark". The General Court had previously determined that the mark was a figurative mark at the same time as being a position mark – which the Court agreed with. They further noted that "…‘position marks’ are similar to the categories of figurative and three-dimensional marks as they related to the application of three-dimensional elements to the surface of a product", and the distinction between a figurative and a position mark in the light of distinctiveness is irrelevant.

Similarly it was irrelevant to the assessment of genuine use. The Court emphasised that the acquisition of genuine use is analogous to that of distinctiveness, therefore rendering the distinction between a figurative and a position mark unnecessary for genuine use.

The Court then looked at the mark itself, which they saw consisted of "…broken or ‘dotted’ lines, which represent the appearance of the product covered by that mark, and two solid lines, representing an affixed cross". The dotted line therefore clearly denotes the location of the mark itself, rather than forming a part of the mark, i.e. making it a position mark.

The mark had been registered as a figurative mark, and even though the above sets it out as a position mark, this ultimately does not matter in the light of the mark's registration.

The case is by no means revolutionary, but does draw a line in the law in the light of dotted lines. Most of the time common sense prevails, and applicants can let out a sigh of relief in their world of dotted outlines.