In the European Union (EU), the test under Article 7(1)(f) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community Trade Mark (CTMR) is whether the mark is "contrary to public policy or to accepted principles of morality".
The concept of morality in Article 7(1)(f) CTMR is not concerned with bad taste or the protection of individuals' feelings. In order to fall foul of the provision, a trade mark must be perceived by the relevant public, or at least a significant part of it, as going directly against the basic moral norms of society.
There is no need to establish that the applicant wants to shock or insult the public concerned; the objective fact that the CTM applied for might be seen as such a shock or insult is sufficient.
Rejection of the application for DIE WANDERHURE
In this case, the Office for Harmonisation in the Internal Market (OHIM) had to consider an application for the mark DIE WANDERHURE. In German the word 'Hure' is a term used to refer to a prostitute. OHIM rejected the application initially on the basis that the mark as a whole was considered to embody a vulgar and indecent expression and an offensive swearword.
Evidence for die Wanderhure as a novel and film
The applicants appealed to the Board of Appeal, filing a substantial amount of evidence showing media coverage which reported on the success of a novel and film promoted under the title "Die Wanderhure".
They argued that the mark was not contrary to public policy or to accepted principles of morality. Further they referred to the German Prostitution Law of 20 December 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.
The Board of Appeal held that the examiner had confined itself to the assessment of the second word element, in particular HURE, 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 (as in English, also to 'wander').
The Board of Appeal held that the success of the book and the film showed that the public took offense to neither the content of the book nor to its title; rather the sign described a social phenomenon that no longer exists.
The Board of Appeal found that the OHIM decision had confused the descriptive word of a phenomenon with the phenomenon itself.
If the OHIM examiner was correct, any thriller containing the word 'murder' in its title had to be banned because killings are a crime, and it was noted that there is nothing more immoral than those who commit it.
Accordingly, the Board of Appeal overturned the OHIM decision, allowing the registration of the mark.
OHIM's refusal of other offensive marks
OHIM has previously refused an application for CURVE which means 'whores' in Romanian and was therefore considered by OHIM to be offensive. It has also refused applications for marks such as BIN LADIN and SCREW YOU on the same basis.
Earlier in 2015, the intellectual property issues surrounding the registration of JE SUIS CHARLIE were considered to be of overriding public interest by OHIM such that it held that the mark would not be registrable.
Case details at a glance
- Jurisdiction: European Union
- Decision level: OHIM Board of Appeal
- Parties: Verlagsgruppe Droemer Knaur GmbH & Co KG, Iny Klocke and Elmar Wolrath v OHIM
- Citation: R 2889/2014-4
- Date: 28 May 2015
- Full decision: dycip.com/wanderhure280515