Fri 13th Jan 2017
Can a brand that some might consider immoral or offensive be protected by a trade mark registration in the UK and EU?
When launching or promoting any brand it can be a challenge to get noticed in the market place, and some companies choose to take a controversial approach via the use of shock advertising - an approach which ‘deliberately, rather than inadvertently, startles and offends its audience by violating norms for social values and personal ideals’. Other companies might find themselves offending groups of people inadvertently due to differing cultural norms and differences arising from use of language and translation.
In either situation, it is important to consider whether the potential offensiveness of a brand will have an impact on your ability to secure protection with a trade mark registration. Brands that are contrary to public policy or accepted principles of morality may be refused by Intellectual Property Offices in the UK and EU.
A trade mark may be contrary to public policy if, for example, it conflicts with principles of equality, democracy, the rule of law, human dignity, freedom or solidarity. Symbols of totalitarianism and unconstitutional parties or organisations may be unacceptable in certain EU countries. This is particularly relevant when seeking EU wide rights. Please note that if a symbol is objectionable in one part of the EU this can be sufficient for refusal of the EU wide trade mark, however, it may be possible to protect it on a national basis in other EU states.
For example, an application was filed in the EU for a sign containing the red star symbol representing the Soviet Coat of Arms. The court confirmed that it was appropriate to refuse this as an EU trade mark as its use was prohibited in one part of the EU. The offices do not wish to help people further their business activities by using signs that may offend basic values. The use of a red star may be perfectly acceptable in other jurisdictions of the EU.
Signs must also not be immoral. This is likely to cover certain insults and racist, blasphemous or discriminatory comments. The offices will consider the context and goods involved and the fact that, in some business sectors, some sexual connotations may be considered normal practice.
If a sign causes offence for religious, spiritual or political reasons this can be fatal. For example, ATATURK was not registrable as this is a national symbol of value to people of Turkish origin.
Intellectual property offices in the UK and EU will also apply an objective assessment based upon reasonable consumers with an average sensitivity and tolerance thresholds, rather than the most sensitive members of society.
As in the case of public policy issues, there may be morality issues applicable to some EU states only. This can lead to the unexpected refusal of marks that would be acceptable in the UK by the EU Office.
For example, a trade mark for ‘Curve’ had been refused in the EU office, as it is vulgar in Romanian. When one of our clients wished to register “Body Curve” for nappies, this was initially also refused on the basis of Romanian language issues. We were able to overcome the objection, not least on the basis that the mark had an English prefix ‘Body’, so consumers would perceive it as being an English term as a whole and so not likely to cause offence.
Issues of morality change over time and each trade mark has different circumstances and so needs to be assessed on a case-by-case basis. For advice on specific cases, contact us at email@example.com.
This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis and answer any questions you receive from others about Brexit. Please note that the law may have changed since the date this was first published in January 2017.