Several recent tragic events around the world have been followed by trade mark applications apparently seeking to take commercial advantage. Trade mark rules in many jurisdictions have exclusions for scandalous, immoral and/or offensive marks. Here we review the situations in four jurisdictions: the UK, Europe, Australia and Canada.
The UK Trade Marks Act and Community Trade Marks Regulation contain almost identical grounds for refusal on this issue: a trade mark will not be registered in the UK or Europe if it is contrary to public policy or to accepted principles of morality. Section 42(a) of the Australian Trade Marks Act provides that an application for the registration of a trade mark will be refused if it contains or consists of “scandalous matter”. In Canada, marks that consist of, or so nearly resemble as to be likely to be mistaken for, any scandalous, obscene or immoral word or device are prohibited under section 9(1)(j) of the Trade-marks Act.
Not surprisingly, given the subjective nature of what is considered scandalous, immoral or offensive, individual offices have experienced difficulty in determining what falls into these categories and therefore what marks to refuse.
Both the UK IPO and OHIM accept that “public policy” is different to “morality”. Public policy denies protection of marks which could induce public disorder, or increase the likelihood of offensive behaviour: for example words or symbols associated with terrorist organisations. Principles of morality deny protection for marks which could cause public outrage (mere distaste is insufficient), or undermine social, family or religious values. Assessment for such cases must necessarily involve consideration of the relevant consumer in the light of the goods or services covered. For example, OHIM considered the mark SCREW YOU as likely to offend consumers of goods such as sunglasses, but unlikely to offend consumers of sex products.
With very limited recent judicial commentary on the subject, Canadian trade mark examiners rely on an old UK case. OOMPHIES for shoes was refused on the basis that “oomph” was an American term denoting sex appeal. The judge described a duty to “fearlessly exercise” not simply the general taste of the time but the susceptibilities of people who might be regarded as old fashioned. This conservative approach has been applied by the Canadian Trade-marks Office, and indeed the courts, since.
In Australia, although the test remains broad and somewhat vague, the Registrar will generally consider whether the use of the particular trade mark is likely to offend either ordinary people generally or a particular group within the community. The “offence” must be reasonably based on the tenets of the group rather than simply being “sentimental”. Due regard is also given to the context and the circumstances at the relevant point in time.
Consequently, many parties have been keen to follow the course of applications for trade marks related to recent tragic events, including MH370 (the flight that disappeared between Kuala Lumpur and Beijing in March 2014) and JE SUIS CHARLIE (the slogan adopted by many supporters of free speech and press freedom following shootings at the offices Charlie Hebdo in Paris in January 2015).
How the UKIPO and OHIM view marks referring to public tragedies calls for speculation, as neither office has yet issued a decision – two pending Applications for JE SUIS CHARLIE at OHIM were withdrawn before examination. However, it seems likely that moral objections would have arisen against such a blatant reference to an act of terrorism. Whilst it is possible that OHIM could construe an application for MH370 as simply an alphanumeric string, unrecognisable in isolation as being linked to the Malaysian Airlines tragedy, an existing pending application for the mark MH370 in conjunction with the device of a plane is likely to make that link in the mind of the public, and as such, is likely to attract objection.
In Australia, an application for MH370 was refused on the basis that the particular letter/numeral combination was not inherently adapted to distinguish the claimed services; however, it is clear from the decision that the Registrar was also willing to reject the application on the basis that the mark was scandalous. In the case of the attempted registration of the phrases CHARLIE HEBDO and JE SUIS CHARLIE for services in class 41 including “electronic desktop publishing; magazine publishing …” five days after the terrorist attack, the applications were withdrawn prior to examination, although it is expected that they too would have been refused on the basis of offending section 42(a).
There seems to be no trend in Canada to seek protection for terms associated with tragic events. No applications exist for JE SUIS CHARLIE or MH370. Given the Registrar’s current conservative treatment of scandalous, obscene or immoral terms, it seems unlikely such marks would be successfully prosecuted through to Opposition. However, if an applicant did accomplish the feat of raising at least sufficient doubt to justify publication, one might expect the Board to adopt the approach favoured by the USPTO in holding that such marks cannot function as a trade mark since, through common use, these are not specific to one source but rather convey an informational message. Terms such as JE SUIS CHARLIE or MH370 have faced objection from USPTO Examiners. However, an application for MH370 in the name of Malaysian Airways did not receive such objections.
Whilst freedom of speech, along with the shifting morality of the public at large, must be taken into consideration, it seems apparent that most members of the public would struggle to experience only mere distaste at the attempt to gain commercial advantage from a public tragedy, and the various registries have a duty to ensure that trade marks are not used as a platform to aid such gain. Morality aside, one questions whether such marks can ever function as an indication of origin, and perhaps where registries are uncomfortable with taking a decision on the moral issues, such applications should nevertheless be rejected as lacking in essential function.