In general, most, if not all, trademark authorities around the world will not allow marks of an immoral nature on their registers. In the U.S., for example, if a “substantial composite of the general public” would perceive the mark, in context, to have a vulgar meaning, then the mark as a whole consists of scandalous matter and is not registerable. In the EU, the test under Article 7(1)(f) of the Community Trademark Regulation (207/2009) is whether the mark is “contrary to public policy or to accepted principles of morality”.
In Verlagsgruppe Droemer Knaur GmbH & Co. KG, Iny Klocke and Elmar Wolrath v Office for Harmonisation in the Internal Market (OHIM) (Case R2889/2014-4), the Fourth Board of Appeal of OHIM was faced precisely with this issue when it heard the appeal of the mark DIE WANDERHURE, and ultimately found that the mark should be allowed for registration.
On May 28, 2014 the publisher of the popular German novel and her authors filed an application to register the word mark DIE WANDERHURE. During examination, the examiner decided that the trademark was not eligible for registration pursuant to Article 7(1)(f), and argued that the word “HURE” is a coarse term used in the German language to refer to prostitute. Thus the mark as a whole embodies a vulgar and indecent expression and an offensive swearword, and must be rejected.
The applicants appealed this decision. Large parts of the submitted evidence consisted of media coverage which reported on the success of the novel and the film promoted under the term “DIE WANDERHURE”. The applicants argued that it is precisely this fact that precludes the applied sign from being perceived as “contrary to public policy or to accepted principles of morality“. In addition, they referred to the German Prostitution Law of December 20, 2001 and an Austrian court decision dating from 2012 according to which the term “prostitute”, including the activity related thereto, is no longer considered immoral in the legal sense.
According to the evidence, the term “WANDERHURE” describes a rather young female who offers and provides her services on the way to and at the Council of Constance to the relevant public, which took place between 1414 and 1418. The reader of the novel and film is thus faced with the proposition that the traveling woman pursues a private profession, or more accurately, belongs to a specialized group of female service providers.
While the non-registrability pursuant Article 7(1)(f) must be based on the semantic content of the mark as a whole, the Board of Appeal held that the examiner had confined itself to the assessment of the second word element, without commenting on its first two components, namely the definite article “DIE”, equivalent to the English word “the”, and the term “WANDER”, describing the act of changing a location on foot. The Board of Appeal continued that the success of the book and the film shows that the public takes neither offense in the content of the book nor in its title; rather the sign describes a social phenomenon that no longer exists. Therefore, the mark refers to the lost world of the Middle Ages, about which we know so little that one can fantasize about them even better, the Board of Appeal said.
The Board of Appeal further stated that the contested decision had confused the descriptive word of a phenomenon with the phenomenon itself. Assuming the examiner was correct, e.g. any thriller containing the word “murder” in its title had to be banned because killings are a crime, and there is nothing more immoral than those who commit it.
The Board also iterated the legal principle that a judicious application of Article 7(1)(f) necessarily entails balancing the right of traders to freely employ words in the signs they wish to register as trademarks against the right of the public not to be confronted with disturbing, abusive, insulting and even threatening trademarks. Thus, a trademark is “contrary to public policy or to accepted principles of morality” if the addressee of the goods marked with the trademark will be insulted or degraded, or when individuals or groups are exposed to discrimination or ridicule by such use. The decisive factor is the objective understanding of the addressee. The purpose of Article 7(1)(f) is not to identify or filter out signs whose use in commerce must at all costs be prevented; rather the rationale of the provision is that the privilege of trademark registration should not be granted in favor of signs that include dubious language. Applied to the present case, the definite article “THE” as well as “HURE” refers to an unknown, ultimately fictitious person and not to the addressee of the goods; the term “WANDER” in combination with the word “HURE” refers to a phenomenon that no longer meets today’s mobility of this profession. Thus, the applied mark contains no semantic statement that the addressed person or group could think is meant to refer to itself.
For all these reasons, the Board of Appeal found that the traveling female should be allowed for registration.
The dispute is interesting in that it provides some insight to the legal consequences a company may face if it tries to register a trademark that includes a term of juicy meaning.
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The phenomenon of the “traveling female” was also subject of a satirical story written by Honoré de Balzac titled “La belle Impéria”. The story itself, though, is primarily about the Catholic clergy’s morals at the Council of Constance, when the City was packed with clergymen, noblemen, and about 700 “traveling females”, which arguably had the power over them all. In commemoration of these females, the German artist Peter Lenk created the statue IMPERIA, which is now placed at the entrance of the harbor of the City of Constance in Germany. The IMPERIA holds in its hands two men, one of which resembles Pope Martin V and the other Emperor Sigismund. The former was elected during the Council of Constance while the latter was the king who called the Church Council. Both figures are shown naked except for their respective symbols of power, namely the crown and papal tiara. Since its erection, the statue has become a major tourist attraction.