Uniformity in non-uniformity

In June 2024, the European Union Intellectual Property Office (EUIPO) rejected a trade mark on the grounds that it was contrary to accepted principles of morality. The subject matter was the trademark application for the mark 

for tobacco products and electronic cigarettes in class 34. While some of us think of well-behaved women's shoes with straps called "Mary Janes" when we hear this name, others immediately recognise the American slang for "marijuana". The decision is interesting because it shows once again that the absolute grounds for refusal under Article 7(2) EUTMR already apply if they only exist in parts of the Union.

Short Summary of the decision

The EUIPO refused the application for the European Union trade mark   (application number: 018964516) for tobacco products and electronic cigarettes in class 34, arguing that the sign would be understood by the English-speaking public as an allusion to "marijuana" and thus violate accepted moral principles. As the applicant did not raise any objections, the refusal of the trade mark was upheld.

Article 7 EUTMR and "good morals"

The decision is based on Article 7(1)(f) and Article 7(2) of the EU Trade Mark Regulation (EUTMR). Article 7 EUTMR sets out the absolute grounds for refusal of EU trade marks. In particular, according to Article 7(1)(f) EUTMR, trade marks may not be registered if they are contrary to public policy or to accepted principles of morality. The prerequisite for exclusion under this point is that the sign is perceived by the relevant public as being incompatible with the fundamental moral concepts and standards prevailing in society at that time (see ECJ, judgment of 27 February 2020 - C-240/19, - Fack Ju Göhte).

The definition of what is to be considered "good morals" is subject to an ongoing, flexible and dynamic process in the course of which the general moral and cultural standards of a society are reflected. In this context, it is crucial that a trade mark is to be refused under paragraph 2 even if the absolute ground for refusal exists only in one part of the Union or only in one or more EU Member States. Furthermore, it is not necessary for the obstacle to exist in the entire territory of at least one Member State. The aforementioned criterion is also not bound to the national borders of the Member States. It is sufficient if there is an absolute ground for refusal under Article 7 EUTMR in a region that is not entirely subordinate in territorial terms, which may be characterised by language and culture and may include territories of different countries as well as of one country.

Understanding the term "Mary Jane"

The EUIPO is of the opinion that the term "Mary Jane" is associated with marijuana by the English-speaking public. The term, which originally emerged in the USA in the 1950s, was widely used in jazz and hippie culture and established itself as a colloquial term for cannabis. The phonetic similarity to the Mexican term "marihuana" further strengthened this association.

However, this historical development does not form the basis of the Office's reasoning. Rather, the EUIPO merely cited a definition from the "Collins" dictionary, in which "Mary Jane" is named as a synonym for marijuana. Furthermore, the office refers to an article in "Malta Today" to explain that this understanding of the term is also used on the market. The article reports that the Maltese police confiscated a cannabis plant after a private individual named Mr Camilleri posted a photo of himself and the plant on Facebook. Mr Camilleri had affectionately named the plant "Mary Jane" and described its positive effects on his well-being in a Facebook post:

"She gives me blissful happiness when I am depressed, relief from pain when I am over-tired, friendly when I am pissed off, something to do when I am bored, and an overall goodness and a healthier life."

The EUIPO therefore bases its decision on newspaper articles from small Member States as evidence of a perception of the relevant public in the European Union.

The EUIPO then finds, without any evidence, that the trade mark could be perceived as glorifying or at least advocating drug use. The EUIPO's ruling clarifies that the variance in moral standards within European society concerning drug use, specifically marijuana, is not pertinent to this case. While some EU countries such as Germany and the Netherlands have seen a relaxation of legal regulations and increasing social acceptance, dealing with the promotion of drug use remains a sensitive issue in many parts of Europe. Nevertheless, it remains the case that, according to Art. 7 para. 2 EUTMR, it is sufficient if the trade mark offends against moral principles in a Member State alone.

Practical note

What constitutes an offence against public morality varies considerably in the European Union depending on the country and cultural context. Trade mark applicants should therefore bear in mind that a sign that is acceptable in one country may be considered offensive in another. It is therefore important to thoroughly check the cultural and legal norms in all relevant markets before filing a trade mark. This is demonstrated by the fact that the Office is prepared to pursue an offence against public morals based on a single press article from one country.