Trademark moralities: “Fucking hell” is alright but the scythe and hammer is not?

Morality is: the mediocre are worth more than the exceptions?
— Friedrich Nietzsche

Contemplating on morale, ethics, law and their relations towards each other is as ancient as those categories themselves and the literature on them could easily fill several libraries. Which is superior, which prevails, which one must we abide when there is a conflict between them is the main topic in Antigone, and the issue was examined by philosophers such as St. Thomas, Niccolo Machiavelli, Thomas Hobbes, Immanuel Kant and Hans Kelsen just to mention the most important ones.

 St. Thomas

St. Thomas

From strictly a legal point of view it is strongly advised not to refer to morality in legal texts since it would stand against the criteria of legal certainty. What is the exact substance behind that vague concept can never be decided, especially morale is exposed to tremendous changes from place to place and from time to time. However, drafters of law so far could not achieve to remove reference to public morale as a result of including this concept to legal texts is simply very convenient.

The most relevant application of this category is in the field of enforcing court decisions rendered by a foreign forum. Denial of the execution of a judgment is possible when this would be against the public order which is very similar to public morale. However in that case there is a consistent practice that this section can only be applied when the judgment endangers the very substance of a legal system (e.g: acknowledging a second marriage).

 Morality vs legislation

Morality vs legislation

This practice was affirmed by the European Court of Justice in a recent intellectual property related decision Diageo Brands BV v Simiramida. Diageo Brands owner of Johnnie Walker European trademarks successfully asked for a seizure for potential infringing Johnnie Walker products shipped to the port of Varna (Bulgaria) from Georgia. That order was subsequently overturned for formal reasons and the seizure was lifted. Diageo also failed at first instance in its substantive claim for infringement of its mark since according to the Bulgarian Court the import of the goods to Bulgaria from a third country where the goods were distributed with the consent of the trademark did not constitute as trademark infringement. This reasoning is not valid though. Article 13, (1) of the Community Trademark Regulation provides that the exhaustion of the rights applies only if his consent was given to distribute the goods inside the European Union. Parallel import is still illegal from third countries even if the Georgian company was the rightful distributor of Johnnie Walker in its country.

Diageo did not appeal against the decision thus it became final. Simiramida filed a suit in Netherlands (home of Diageo’s headquarters) against Diageo to compensate itself for the losses suffered as a result of the seizure. Diageo claimed that the judgment refusing the seizure and also the decision in the main proceedings are contrary to EU law and thus cannot be recognized in the Netherlands as they are against public order.

johnny-walker.jpg

However, the European Court of Justice deciding in the preliminary hearing case held that the “the public order clause” must be interpreted in a narrower sense.Clearly the Bulgarian decision was erroneous, but that does not justify that judgment’s not being recognised in another Member State on the grounds that it infringes public policy. In that latter State where the error of law relied on does not constitute a manifest breach of a rule of law regarded as essential in the EU legal system which would be a necessary legal basis for denying recognition.

In intellectual property, more closely trademark matters public morale is referred to much more often and the practice can be deemed inconsistent.

According to the OHIM’s practice, whether or not a mark is contrary to public policy or accepted principles of morality must be determined by the intrinsic qualities of the mark applied for and not by the circumstances relating to the conduct of the person applying for the European trademark.

The legislation and administrative practice of certain member states can also be taken into account in this context (i.e. for assessing subjective values), not because of their normative value, but as evidence of facts which make it possible to assess the perception of the relevant public in those member states.

In the “Fucking Hell” case the examiner rejected the application as the sign used sexuality in order to express contempt and violent anger. However the board of appeal allowed the CTM registration to come through based on the following reasons.

 The “Fucking hell” trademark

The “Fucking hell” trademark

The semantic indication does not suggest that the reader should go to hell. The fact that Fucking is a village in Austria leads to the conclusion that a reference to a place cannot be forbidden, merely because this may have an ambiguous meaning in other languages.

The following sign was rejected by the OHIM and the European Court of Justice as well. The reasoning claimed that in certain member states such as Estonia, Latvia and Hungary, the use of such sign is sanctioned by the national criminal code. Moreover, a considerable number of consumers would feel outraged for obvious historical reasons. The absolute ground of refusal must be applied if it stands only in one of the member states.

 The famous hammer scythe with the red star

The famous hammer scythe with the red star

An interesting decision came up recently at the Hungarian Intellectual Property Office. The international trademark “Fasziobalance” was sought to designate Hungary. Unfortunately for the applicant “fasz” means male genitalia in Hungarian in a very vulgar form. Though the examiner cited that “fasz” means sexual intercourse, though it actually does not, the decision is likely to be upheld by the Hungarian courts as well. (Some outrageous bad faith mistakes by the Hungarian Intellectual Property Office can be found here.) The applicant might have indented to refer his quality service since fazio means good worker in Italian but failed to check the potential semantic implications if this sign in the necessary languages. This is a typical mistake that an applicant can make.

As an experienced IP firm we would suggest not to risk applying for marks that can be reasonably assumed to go against public morale since this category is open to wide interpretation by the authorities.

If you want to know how to avoid mistakes during a trademark application and how to choose a long lasting and killer brand name read our article on that topic.

Pintz & Partners LLC