Trade marks contrary to public policy and accepted principles of morality

The European Union Intellectual Property Network (‘EUIPN’) aims to achieve a unified trade mark system in the EU by developing common practices. These common practices aim to guide EU Member States in the application of relevant principles of trade mark law. The Benelux Office for Intellectual Property (‘BOIP’) is one of the offices that takes part in the EUIPN as well. 

In my previous insight on these common practices, I already discussed the recent common practice on bad faith in trade mark applications. In this article I will further explore common practice (‘CP14’) which deals with trade marks contrary to public policy and / or accepted principles of morality. The assessment should be performed on a case-by-case basis, considering the normal level of sensitivity and tolerance of the relevant public in the jurisdiction concerned, as well as all the circumstances specific to the EU Member State(s) and the particular case. CP14 establishes common criteria for the assessment, aiming to provide a common understanding and clarifying the relationship and the differences between the two concepts ‘public policy’ and ‘accepted principles of morality’. For the Benelux, CP14 was published on 19 April 2024 and has meanwhile entered into force.

The concept ‘public policy’ is defined by CP14 as “a set of fundamental norms, principles and values of societies in the European Union at a given point in time. It includes, in particular, the universal values of the European Union, such as human dignity, freedom, equality and solidarity, and the principles of democracy and the rule of law (...)”.  The ‘accepted principles of morality’ concept is being defined as “the fundamental moral values and standards accepted by a society in the European Union at a given time (...)”. 

Trade mark applications that are contrary to public policy or to accepted principles of morality can be refused. Signs that could fall under this absolute ground for refusal are for example signs including or relating to (1) illicit substances; (2) public safety risks; (3) a religious or sacred nexus; (4) vulgar elements (swear words, offensive gestures, etc.); (5) obscenity, sexuality and innuendo; (6) signs disparaging or slurring a particular group; (7) criminal activities, crimes against humanity, racist and totalitarian and extremist regimes, organizations and movements; (8) well-known tragic events; (9) historical figures, national/EU symbols and/or personalities held in high esteem.

Freedom of expression must also be taken into account when analyzing whether a sign is contrary to public policy or morality. Furthermore, it is important to note that bad taste and morality are different concepts. As mentioned by the Court of Justice in the Fack Ju Göhte case it is not sufficient for the sign concerned to be regarded as being in bad taste. It must be perceived by the relevant public as being contrary to the fundamental moral values and standards of society as they exist at that time. 

Recent case law about this topic can for example be found in the Judgment of the General Court (‘GC’) in the Pablo Escobar case, in which it was decided that the word mark PABLO ESCOBAR filed for goods and services in multiple classes may not be registered as an EU trade mark, since Pablo Escobar, even though he was never criminally convicted, is publicly perceived in Spain as a symbol of organized crime. The GC therefore upholds the EUIPO’s refusal to register the mark PABLO ESCOBAR on the ground that the mark was contrary to public policy and to accepted principles of morality. 

The case on JUST FUCKING GOOD WINE illustrates that the assessment outcome can differ per EU Member State. Here, the Benelux application got accepted, whereas the EU application was refused for registration by the EUIPO due to its inclusion of vulgar and offensive wording. Although the applicant argued that it never experienced anyone being offended by the sign and that the wine in question is one of its best sold wines, the Board of Appeal ruled that the examiner correctly focused on the relevant English-speaking public and a very significant part of this public, in particular the native English-speaking part, that will consider the use of this word in a trade mark morally unacceptable. Notably, this judgement was from before CP14 was being published, and it will be interesting to see how future applications will be assessed in light of CP14.

To conclude

CP14 is intended to serve as a guideline on assessing whether a trade mark is contrary to public policy or to accepted principles of morality. The entire text of CP14 can be found here in English, Dutch and French.

Besides this absolute ground for refusal based on public order and / or morality, there are more grounds which could lead to a trade mark application being refused, such as lack of distinctive character or a descriptive sign.