What do the cannabis industry, Black Lives Matter movement and French Connection UK have in common? They have all faced trade mark challenges on the grounds of morality. For brand owners, it’s important to understand how this objection works and what you need to show in order to secure registrations for potentially ‘edgy’ or ‘controversial’ trade marks. Here, Alison Cole, an expert in registering unusual and unconventional trade marks, explores how moral objections are used by the UK Intellectual Property Office (UKIPO).
What is a moral objection to a trade mark?
Section 3(3)(a) of the UK Trade Marks Act 1994 (the Act) provides that “a trade mark shall not be registered if it is contrary to public policy or to accepted principles of morality”. This Section isn’t often used to object to trade mark registrations — but when it is, the scandalous nature of the trade marks involved often means it’s headline-catching.
When an ‘edgy’ mark is filed, the barometer of what is considered an ‘acceptable trade mark’ is scrutinised according to current norms. Such cases provide a rare and important opportunity to re-evaluate what is and isn’t considered ‘offensive’.
Why do some brands use morally dubious trade marks?
Trade marks and brands are the consumer-facing aspect of IP. Plays on words and images are often cleverly used to capture and monetise societal movements or events. Sailing close to the wind is likely to have the desired effect of attracting attention — however, overstep the mark and in addition to negative publicity, you could be refused protection for your trade mark, allowing the floodgates of competition to be flung wide open. When applying the Section, the UKIPO must tread the fine line between preventing offence and allowing freedom of expression.
Changing morals: Richard Branson’s VIRGIN
Back in the 1970s, in the early stages of building his empire, Richard Branson struggled to get protection for his VIRGIN trade mark. It took four attempts — on the first three, it was refused under the moral objection Section for being too rude. On the final attempt, either Mr Branson’s powers of persuasion were finally successful (since ‘virgin’ can also mean ‘pure’ the objection was potentially contradictory), or the morals of the time had moved on and the word no longer provoked such outrage.
Principles of morality: the FCUK controversy
In 1997, French Connection UK Limited controversially changed its trading name to FCUK — and the term was successfully registered as a trade mark. In 2006, the registration was challenged by a shocked member of the public, and the issue of decency had to be considered anew.
The principles set out in that decision still apply:
- The issue of what is acceptable is subjective and will change over time.
- Refusal of an application under this ground doesn’t prevent a trader from using the mark, but denies them exclusivity, which would be afforded by a registration.
- A distinction must be made between what is distasteful and what is outrageous. The former is acceptable, the latter is not.
- The outrage must be amongst an identifiable section of the public.
- A higher degree of outrage amongst a small section of the community will suffice, as will lesser outrage amongst a more widespread section of the public.
- Marks which undermine current religious, family or social values; encourage or promote drugs, counterfeiting, pornography or criminal activity (etc.) would be refused.
- Words or images which are offensive, such as swear words, racially derogatory images or blasphemy aren’t acceptable.
- It isn’t an issue of political correctness, but principles of morality.
Underlying the test to be applied when deciding whether a mark should be rejected under Section 3(3)(a) is the basic right to freedom of expression. In the FCUK case, it was stated that:
“It follows that registration should be refused only where it is justified by a pressing social need and is proportionate to the legitimate aim pursued. Furthermore, any real doubt as to the applicability of the objection should be resolved by upholding the right to freedom of expression and thus by permitting the registration…”
Based on these criteria, while the UKIPO acknowledged that the associated expletive could be contrary to the principles of morality, it also accepted that the anagram was sufficiently different to avoid the objection.
Objections raised under the other subsections of Section 3 can be overcome by demonstrating with evidence of use/distinctiveness that a mark should be accepted. However, the proviso doesn’t apply to Section 3(3)(a). Despite this, the fact that French Connection could provide evidence that millions of people had bought products bearing the FCUK mark was helpful in showing that any outrage was minimal.
Retrospective invalidations: Washington Redskins
As mentioned in the first of the FCUK principles, what is considered ‘acceptable’ is often transient. We aren’t always moving towards becoming a more permissive society. Although some level of bad language is now tolerated by most of us, racist, sexist and homophobic language is considered to be even more shocking and unacceptable today than ever before.
The principles of public policy and morality can’t be applied retrospectively. The recent WASHINGTON REDSKINS name change is a perfect illustration of this. Native American groups have argued for years that the team name is racist, resulting in the recent change to Washington Football Team. However, the registrations will remain on the UK trade mark register, at least until their next renewal date, unless someone seeks to challenge them.
An invalidity challenge could only be based on Section 3(3)(a) if it could be shown that the term was offensive at the date of filing among an identifiable section of the public. Whether the level of outrage (in what was then presumably a small section of the community) would have been enough to have the registration cancelled ab initio will be difficult to prove and the onus of proof will fall on the applicant for cancellation. This leaves the possibility that there may be little that can be done procedurally by third parties to remove older marks which are now considered offensive from the register. The only option may be to try to make the mark commercially unattractive to the owner so that they cease to use it. Since the key function of a trade mark is to encourage trade, having a portfolio that includes a damaging brand may be an unattractive prospect for the owner. Alternatively, if it remains unused for five years, the registration may become vulnerable to revocation.
Public policy invalidations: the cannabis industry
Last year, Addicted Original Ltd had its registered logo mark cancelled following an invalidation action by Adidas. Not only did the sportswear brand succeed in arguing that the mark took unfair advantage and was detrimental to its trefoil device, the UKIPO also agreed that:
“there will be an identifiable significant section of the public who will recognise the mark as including a representation of a marijuana leaf. For those consumers, the mark will convey a clear message relating to addiction to illegal drugs. The registration of the mark, therefore, undermines principles of accepted social values. The fact that the proprietor suggests that they are involved with the movement to seek legalisation of cannabis or the use of cannabis for medical purposes does not alter my view on this… the use of the word ADDICTED in the proprietor’s mark goes beyond the suggestion of recreational or medical use of the drug but to a social issue of dependency upon drugs. I, therefore, consider that the proprietor’s mark is contrary to public policy and/or accepted principles of morality”.
Addicted Original Ltd tried to argue that, due to the momentum of the campaign to legalise cannabis, the depiction of a cannabis leaf was no longer against public policy and/or accepted principles of morality. However, since at the time of the decision cannabis was still illegal, the UKIPO refused to accept this point.
A similar case arose with our client Mjardin. The equivalent Article from the CTMR, Article 7(f), was used to object to its logo mark registration in respect of class 34 goods. The mark was accepted for medicinal herbs in class 05 and “management and operation of agricultural facilities for others” in class 35, but in respect of smoking articles it was considered to be promoting illegal drug use, largely due to the laudatory word ‘premium’ in the logo.
On this occasion, clear evidence that the applicants are a legitimate company was insufficient to persuade the Examiner to accept the mark. The test used by the EUIPO is whether a “reasonable person with normal levels of sensitivity and tolerance” would be offended. The lead case relates to an application for the mark SCREW YOU in respect of a variety of goods. The applicants argued that the term would not offend the UK public, however the EUIPO took the view that “the organs of government and public administration should not positively assist people who wish to further their business aims by means of trade marks that offend against certain basic values of civilised society”.
Preventing controversial and immoral registrations: Black Lives Matter
Although the mark BLACK LIVES MATTER is a US registered trade mark belonging to the US-based civil rights movement Black Lives Matter Global Network Foundation, Inc, it had not been registered in the UK.
Seizing the moment earlier this year, UK citizen Georgios Demetriou filed (and then withdrew) UK trade mark applications for I CAN’T BREATHE and BLACK LIVES MATTER. Mr Demetriou originally filed the two applications at the UKIPO on 6 June 2020 in respect of various clothing and non-profit goods. Even if Mr Demetriou’s intentions were honourable, the fact that he suggested that he may charge “a royalty” to organisations that want to use either of the terms provoked national outrage.
Had he not withdrawn the applications, applying the FCUK principles, it would have been interesting to see whether the UKIPO would have applied Section 3(3)(a) to prevent the registrations for the goods filed.
Pay attention to specifications
The word “it” in Section 3(3)(a) seems to refer to the mark itself, but could it be used to object to words in a specification that are against public policy or morality? In the UK, cannabis itself hasn’t yet been legalised. CBD oil is only legal in the UK if it’s made from certain approved strains which contain less than 0.2% tetrahydrocannabinol in the growing plant. Since UK applicants are obliged to confirm their intention to use a mark, the illegality of goods and services could perhaps prompt an objection under this Section. Ultimately, it would be against public policy to allow a registration for a mark in respect of some cannabis products.
Since CBD supplements are different to a lot of medical cannabis products, a class 05 registration might be hard to obtain, unless it’s restricted to CBD. This could also apply to, for example, food additives, cleaning products or medicines which contain ingredients that aren’t permitted for use in the UK, but only if the list of goods specifically mentions a banned substance.
Under EU law, there is no such requirement regarding intention to use. This argument was used in the MJARDIN case, but wasn’t commented on by the Examiner. Furthermore, medical cannabis is legal in at least eight member states and recreational cannabis in two. There are therefore many registrations on the EUTM register which include the term in their specification of goods. It remains to be seen whether their UK clones will be considered valid under UK law post-Brexit.
Using unregistered trade marks
The refusal to register a trade mark does not prevent its use. Provided that no other rights are infringed, traders will still be free to use the term. As a result, the refusal is unlikely to amount to a huge restriction on the right of freedom of expression, but it might mean that businesses may be unwilling to invest in large-scale promotional campaigns for trade marks which aren’t protected.
In the UK, common law rights in a trade mark can be accrued through use if goodwill and reputation can be proven. This could still provide a trader with some protection, however it takes time for those rights to be built up and there is a high risk of the mark being used by others in the intervening period. Furthermore, if the mark isn’t registered, rather than being under the exclusive control of one trader, it could potentially be used by many others, thus causing more offense and having the opposite effect to what was intended.
Ultimately, although a careful line has to be trodden to make sure that Section 3(3)(a) isn’t used as a form of censorship, it does provide a form of attack that is worth bearing in mind.
For brand owners, it’s important to be aware of moral objections and understand what types of trade marks might be considered morally dubious. If you’re looking to register a mark in a ‘controversial’ new industry like the cannabis industry, or if your mark could be considered in any way ‘edgy’, make sure that you seek the advice of an experienced trade mark attorney as early as possible to weigh up your options and guide you through this tricky process.