As our readers might know, for a sign to be registered as a trade mark, it has to meet several requirements, for instance to be distinctive and non-descriptive, and comply with certain limitations, known as absolute grounds for refusal.
These absolute grounds exist in European and international trade mark law as regards certain signs that cannot be registered as trade marks, as they are considered to be contrary to public policy or accepted principles of morality. The legal framework consists of article 6quinquies of the Paris Convention, article 7.1.f), 7.2 and 59.1.a) of the European Union Trade Mark Regulation (EUTMR), and the EUIPO Guidelines (Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 7).
If this absolute ground for refusal applies, pursuant to article 7.1.f) EUTMR, registration may be denied for a trade mark application. More precisely, this article states that trade marks which are contrary to public policy or to accepted principles of morality shall not be registered. Furthermore, this article will be applicable regardless of the non-registrability obtained in only part of the European Union. From its side, article 59.1.a) foresees the possibility of declaring the invalidity of a EUTM for the same reason.
However, by denying registration of such signs, there is a risk to limit the fundamental right of freedom of expression and freedom of speech. The fundamental right of freedom of expression is recognised, among others, in Recital 21 of the Preamble of the EUTMR, in the Charter of Fundamental Rights of the European Union (CFR) and in the European Convention on Human Rights (ECHR). The CFR is a legally binding treaty at the top of the EU legal texts, meaning that all the decisions taken by the European institutions and other subordinate legal texts shall comply with the provisions of this Charter. For this reason, the provisions of the EUTMR and the decisions of the EUIPO or the Court of Justice of the European Union, shall respect this fundamental right.
Nevertheless, as settled by the GC, it is now accepted case law that freedom of expression or freedom to conduct a business would not be limited if a trade mark application is refused pursuant to article 7.1.f) EUTMR, as the refusal does not prevent the applicant from using the sign in the course of trade. In other words, as it is not necessary to register a trade mark in order to commercialise the goods or services, the refusal to register a trade mark on those grounds does not constitute a breach of the CFR.
At a European level, the concept of trade mark considered immoral or contrary to public order has been further developed by the decisions of the Boards of Appeal (BoA) of the EUIPO, the General Court of the European Union (GC) and the Court of Justice of the European Union (CJEU). The practice of the BoA has been consistent with the case law of the CJEU, with regard to trade mark applications that are considered immoral or contrary to public order if “recipient of the goods, when reading the sign applied for on or in connection with the offer and marketing of these goods, is insulted, discriminated against or held up to ridicule or if his sexual self- determination is violated”. Notwithstanding, both the BoA and the GC have a strict practice when it comes to decide on the refusal of a trade mark application based on this absolute ground, in order to comply with the standards of protection of fundamental rights.
Both principles “public policy” and “accepted principles of morality” can be used independently or combined, as they are used in different situations. In order to consider that a mark is contrary to public policy or accepted principles of morality, an assessment shall be made from different perspectives. In fact, in relation to the relevant public, it has to be taken into account that the meaning and perception of the sign by the public is different depending on the country, the language, their history, sense of humour, etc. Moreover, this has to be constantly updated due to the language’s evolution. In addition to this, as a consequence of the unitary character of EUTMs, it is enough that in one or in a bunch of Member States the mark is considered against the public policy to deny registration.
As regards “accepted principles of morality”, these refer to an assessment based on subjective values. In this sense, registration cannot be granted to trade marks consisting or containing racist, blasphemous or insulting words. However, this assessment must be made taking into account how the relevant public will perceive the sign in relation to the goods and services sought at a certain point in time, taking into account the moral values and standards and the existing social context, which are likely to vary over time. In this case, the relevant consumer is understood as a “reasonable person with an average level of sensitivity and tolerance that cannot be easily offended”. Therefore it is considered that the rights involved are not only the ones of the relevant public, but the ones of the general public, as they can encounter the mark incidentally and therefore, their rights need to be safeguarded.
According to the “Fack Ju Göhte” decision, the accepted principles of morality can be understood as the “fundamental moral values and standards to which a society adheres to at a given time. Those values and norms, which are likely to change over time and vary in space, should be determined according to the social consensus prevailing in that society at the time of the assessment. In making that determination, due account is to be taken of the social context, including, where appropriate, the cultural, religious or philosophical diversities that characterise it, in order to assess objectively what that society considers to be morally acceptable at that time”.
The “public policy” ground for refusal refers to an assessment based on objective criteria. This prohibition is based on laws, treaties and secondary EU legislation, that are aimed to protect basic principles and universal values of the civil society. Therefore, registration is prohibited for trade marks that can threaten those basic principles and fundamental values on which the European Union is based, for instance human dignity, rule of law or democracy. This means that registration shall not be granted to signs that encourage, promote or at least trivialise an infringement of a fundamental interest of Member States.
This category includes trade marks containing references to terrorist organisations, as confirmed in recent case law from the CJEU, for instance in case “La Mafia se sienta a la mesa”. The BoA and at a later stage the General Court, rejected the application of the contested sign “La Mafia se sienta a la mesa”, which was sought for restaurant services. The Court ruled that the term “Mafia” was understood worldwide as a criminal organisation originating from Italy, that resorted to intimidation or physical violence to perform illegal activities such as drugs trafficking, arms trafficking or corruption. Those activities threatened fundamental rights recognised in the CFR, like human dignity and freedom, and were against the values of the EU. Thus, the sought sign could not convey a positive image of the term “Mafia” as this would trivialise the criminal activities carried out by this organisation. As a result, apart from the victims of this criminal organisation, any person with an average sensitivity could be offended by the contested sign and for this reason, registration as a EUTM cannot be granted.
Signs promoting the use of illegal drugs fall also under this prohibition, as drugs are banned in most Member States and therefore against the basic principles of morality. In order for this provision to be applicable, the terms used and the additional elements should be taken into account, meaning not only the word element (like cannabis, weed, marijuana), but also figurative elements, in relation to the goods and services designated in the application.
For instance, registration was sought for the sign Cannabis Store Amsterdam, for food and beverage products. In this case, the General Court considered that the word “Cannabis” and the cannabis leaf in the background of the sign, made reference to the illegal substance “marijuana”, thus the sign could be perceived by the public as making reference to a recreational use of the substance, which is likely not only to be smoked but also to be eaten. Therefore, the GC concluded that signs consisting of or including reference to marijuana are contrary to public policy, as they could clash with the fundamental values of some Member States, where the consumption of drugs is not allowed and could jeopardise the efforts done against drug trafficking.
However, according to the recent case-law regarding cannabis-related trade marks , the EUIPO has clarified that no objections can be raised if, generally speaking, the sign makes reference to a drug for medical use. In such cases the registration could be accepted, but if it merely refers to “hemp”, which is a variety of cannabis grown for medical uses.
To conclude, we have seen that both principles “public policy” and “accepted principles of morality”, can be applied jointly, but it is preferrable to identify the most suitable beforehand. As mentioned above, “public policy” refers to an objective assessment in relation to laws, while “accepted principles of morality” is a subjective assessment that depends on the social context at a certain moment in time.
Moreover, the sign must constitute an offense to the general public with an average degree of sensitivity, and not only for the specific public that could come into contact with the offensive sign, due to the designated goods and services.
Furthermore, the application of the absolute ground of article 7.1.f) does not limit the fundamental right of freedom of expression, as the applicant can use it in the course of trade, although it cannot be eligible for registration as a EUTM.
- Publication date
- 31 October 2022
- European Innovation Council and SMEs Executive Agency