What's the issue?
Trade marks are not registrable in the UK if they are contrary to public policy or accepted principles of morality. The same is true for EUTMs and national EU member state marks.
It is easy for trade marks to fall foul of these provisions especially when applied for in the EU (where marks might have different connotations in local languages). While the provisions only restrict the registration, not use, of marks, brand owners will want to ensure that their brands are registrable and do not carry any negative connotations in local languages.
Here, we consider the key issues brand owners and their marketing teams should keep in mind when deciding on - and applying to register - their marks.
What's the test?
The legislation gives no guidance on the meaning of contrary to public policy or accepted principles of morality or on the standard to be applied. This must be gleaned from the case law and relevant guidance. The following are the key points:
- As a basic rule, trade marks are generally refused registration on the ground of public policy if they reference criminal or offensive behaviours and on the ground of morality if they go against the basic "norms" of society.
- The bar is set fairly high. The fact that a mark is in bad taste is not sufficient; there must be something more such as offence which would justifiably cause outrage for an identifiable section of the public or would be the subject of justifiable censure as being likely significantly to undermine current religious, family or social values. However, what is acceptable may well change over time.
- The assessment is made from the view point of a reasonable person with average levels of sensitivity and tolerance, taking into account the context in which the mark might be encountered.
- The motivations of the trade mark applicant and how the mark is intended to be used are both irrelevant.
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Relevant factors include legislation, administrative practices, public opinion and, where appropriate, the way in which the relevant public has reacted in the past to the mark or similar marks.
What marks have been accepted and rejected?
Examples of marks held to be contrary to accepted principles of morality include FUCK of the YEAR, JESUS and BIN LADIN. Conversely, marks held not to breach this provision include FCUK (the well-known fashion brand) and Fack Ju Göhte (Fuck You, Jack – a comedy film), both of which had been widely used apparently without causing widespread offence.
Examples of marks held to be contrary to public policy include various marks containing the word 'cannabis', although there is no absolute prohibition on the registration of such marks. Indeed, there are currently over one hundred UK trade mark registrations for or containing this word including LIFE CANNABIS, CATALEYA CANNABIS KOSMETIK, Cannabis Clinic, COCAINE COWBOYS and NO COCAINE HERE.
Conversely, an EUTM application for CANNABIS STORE AMSTERDAM for confectionary and soft drinks was refused due to the reference to Amsterdam and the presence of a cannabis leaf in the mark which indicated higher levels of certain psychoactive ingredients. The fact that, in many EU member states, certain products derived from cannabis are regarded as illegal narcotics was also relevant.
What does this mean for you?
- It is important to check the linguistic and other connotations of proposed marks in local languages. An EUTM might be refused or invalidated if it is contrary to public policy or accepted principles of morality in one or part of one EU member state since there are differences in how signs will be perceived based on linguistic, social, cultural and other factors.
- A mark which might seem uncontroversial can still fall foul of this provision. For example, a number of EUTM applications containing the word CURVE have been refused registration on the basis that the term is derogatory of women in certain EU member states.
- Specific advice should be sought where there is a desire to use and/or register a mark which might fall foul of this provision even if the mark seems like a potentially harmless play on words.
