Most people can remember what they were doing or where they were on 11 September 2001. I was on a train, travelling from Long Island to New York City. It was in my former life as a scientific researcher – I was registered to attend a conference. On the 11th, I was on a train in view of New York when the first of the Twin Towers of the World Trade Center was hit. Thankfully, I didn’t make it to the city. By the time I was on a train travelling in an opposite direction, both Towers had collapsed and disappeared from view. My aversion of the tragedy was uppermost in my mind.
But, unlike me who was just glad to escape unscathed, it is a sad but undeniable truth that there are people who seek to capitalise on such misery and misfortune. Significant tragic events, such as the World Trade Centre attacks, or the attack at the headquarters of the satirical magazine Charlie Hebdo in France, even the killing of Cecil, a lion that lived in Hwange National Park in Zimbabwe are cases in point. After each of these events occurred, applications to register related trade marks were filed.
A number of countries, including the US, Europe and Australia, have trade mark laws which prohibit the registration of marks that are considered scandalous and offensive. However, whether marks are considered scandalous or merely distasteful will depend on context.
When is distaste prevented by trade mark law?
Those seeking to capitalise on the events of September 11 were out in force, selling T-shirts and other memorabilia a few days after the event. While I personally found it distasteful, the items were actually selling. Years later, in my guise as a Trade Marks Attorney, I learnt (from conducting a Google search), that there were those who had attempted to register trade marks associated with the events of September 11. An immediate thought to most is that to capitalise on such a tragedy by filing a trade mark application is in bad taste. However, this would depend on context. For example, the National September 11 Memorial & Museum has been successful in obtaining several trade mark registrations for a logo containing ‘9/11 MEMORIAL’ covering museum services and memorabilia. This being said, others have had their applications for marks containing or related to 9/11 rejected.
As a colleague has mentioned elsewhere in relation to the now cancelled registrations owned by the Washington Redskins football team, US trade mark law contains a provision that prohibits the registration of a trade mark considered ‘scandalous’ in nature. Australian and European1 trade mark laws contain similar provisions. However, at least in Australia, the threshold for a mark to be considered ‘scandalous’ is quite high given registrations have been obtained for marks such as ‘NUCKIN FUTS’ (Registration No. 1408134) and ‘POMMIEBASHER’ (Registration No. 1267253).
Fast forward to 2015, and there are those who sought to capitalise on the tragic events in France by applying to register ‘JE SUIS CHARLIE’. Apparently, the French Trade Mark Office rejected at least 50 applications to register ‘JE SUIS CHARLIE’ – but on descriptiveness grounds, albeit that French Trade Mark law also contains a provision that prohibits the registration of marks considered ‘contrary to public order or morality’.
An application to register ‘JE SUIS CHARLIE’ was filed in the US in respect of charitable services but has been rejected on the ground that the public will not perceive the slogan as a trade mark that identifies the source of applicant’s service. According to the US trade mark examiner, use of the slogan has become ubiquitous with respect to the Charlie Hebdo magazine attack as well as in connection with consumer merchandise produced by other parties.
In Australia applications to register ‘JESUISCHARLIE’ (Application No. 1668521) in respect of publishing services (including publishing by electronic means), and ‘CHARLIE HEBDO’ (Application No. 1668519) in respect of fabrics and apparel (clothing, footwear and headgear), were filed but have since been withdrawn, perhaps on the basis negative publicity.
Lastly, several companies have recently applied to register marks containing CECIL in the US including i-Star Entertainment which has applied to register CECIL THE LION in respect of toys and gifts (US Serial No. 86709523), a Canadian individual by the name of Colette Ledoux, who has applied to register JE SUIS CECIL in respect of charitable and online retail services (US Serial No. 86713998), and Ty Inc., which has applied to register CECIL in respect of stuffed toys (US Serial No. 86709963). Ty Inc. has also applied to register a corresponding trade mark application for CECIL in Australia (Application No. 1711585).
As mentioned above, the threshold for ‘scandalous’ under Australian trade mark law is quite high. So, while some may see these applications for CECIL containing marks as distasteful, distaste does not generally constitute a prohibition to obtaining a registered trade mark. At least in the US and Australia, trade mark applications undergo substantive examination which includes an assessment of inherent registrability (ie. whether the mark can actually function as a trade mark) and a comparison with earlier filed or registered trade marks. Provided that a trade mark is not descriptive or confusingly similar to an earlier filed or registered trade mark, registration is likely.
Who is the rightful trade mark owner?
In ‘first to use’ jurisdictions, ownership of a trade mark is generally determined by priority of use in the course of trade, whereas in ‘first to file’ jurisdictions rights are provided to the first person who files an application to register a trade mark.
With respect to the recent events in France, it is perhaps unsurprising that the French Trade Mark Office was flooded with applications to register ‘JE SUIS CHARLIE’ given the ‘first in, best dressed’ first to file nature of that country’s law. Even in trade mark offices of ‘first to use’ jurisdictions, it is common to observe a proliferation of trade mark applications subsequent to there being a significant and tragic public event. When applicants of applications for ‘CHARLIE HEBDO’, ‘CECIL’ or parties associated with the World Trade Center are not the originators of the trade mark, but are first to file trade mark applications, the laws of a ‘first to use’ jurisdiction at least provide some protection against misuse – rights stemming from the first legitimate use of a trade mark would be afforded some protection.
There was a significant increase in demand for the Charlie Hebdo magazine in Australia after the headquarters of Charlie Hebdo was attacked. Could this have been the basis for the owners of the Charlie Hebdo magazine to have challenged the Australian applications for ‘CHARLIE HEBDO’ and ‘JESUISCHARLIE’ to prevent their registration? Perhaps.
The Australian application filed for ‘CHARLIE HEBDO’, may have been subject to successful challenge on the basis that the Australian applicant was not the owner of the mark.2 However, the success of that challenge to ownership would depend on whether there was evidence of prior use of ‘CHARLIE HEBDO’ in Australia by the French magazine company. As there was a significant increase in demand for the Charlie Hebdo magazine, evidence of a significant number of Australian visitors to the website of Charlie Hebdo might have constituted sufficient proof. Alternatively, it might have been possible to establish that ‘CHARLIE HEBDO’ was significantly well known and had acquired a reputation3 in Australia prior to the date upon which the Australian application for ‘CHARLIE HEBDO’ was filed, and thus because of that reputation, the use of the ‘CHARLIE HEBDO’ by the Australian applicant would deceive or cause confusion. In this context the relevance of reputation is irrespective of whether the mark has been used in Australia, and the nature of the goods and/or services normally associated with the mark. The owners of the French magazine could also have challenged the application for ‘CHARLIE HEBDO’ on the ground that it was filed in bad faith.4 However, this might have been difficult to prove.
With respect to ‘JESUISCHARLIE’, the application may have been rejected under the provision which prohibits the registration of scandalous marks. The provision also gives basis for preventing the registration of a mark if its use would be contrary to law. Notably, Australian Consumer Law prohibits misleading and deceptive conduct5 in trade and commerce. Thus, one possible point of challenge might have been that use of ‘JESUISCHARLIE’ in respect of publishing services might mislead and deceive because it suggests an affiliation with Charlie Hebdo.
Where there is a will, there should be a way
In a market-based economy, trade mark owners are generally free to choose trade marks with which they will associate their goods and/or services. Ultimately, choosing wisely will aid in building strong brand recognition and capturing market share.
Trade mark laws in most jurisdictions recognise this ‘freedom’ to choose, within reason. Whether a mark might be considered scandalous or merely in bad taste will depend on the context of use, but also perhaps what is socially acceptable at that time.