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Monday, 26 December 2016

Swedish Patent and Registration Office refuses registration of figurative mark because contrary to morality and public order

The applicant's sign
Is a figurative sign representing a hand with a raised middle finger contrary to morality and public order?

This is the question that the Swedish Patent and Registration Office (PRV) had to address in an interesting application concerning a sign of this kind [see also here for another commentary on this case]

Katfriend Nedim Malovic (Sandart & Partners) explains how things went.

Here's what Nedim writes:

"Mr Daza (the applicant) had submitted an application to the Patent- och Registreringsverket (PRV) to have a figurative mark registered for goods and services in Class 35 (information regarding consumer demand, commercial trade and consumer information; consumer goods; products for consumers) of the Nice Classification.

The figurative sign reproduced features and colours somewhat similar to that of a Facebook “like” button. However, instead of a “thumbs up”, it portrayed a hand with a raised middle finger [see above, on the right].

The applicant argued that it was not evident or defined that it was actually the middle finger pointing up and that just showing the middle finger does not violate any law.  Either way, showing the middle finger cannot be regarded as intended to offend, but rather something to express dissatisfaction. Denying the mark registration would be contrary to freedom of expression.

The assessment 

Chapter 2-7§ of the Swedish Trade Mark Act states that a mark cannot be registered if it is contrary to morality or public order.  Chapter 2-18§  of the same Act states that an application should be rejected if an obstacle to registration subsists, either before or after the applicant has submitted his/her application. 

The figurative mark in question contains a hand where a middle finger is raised. Such gesture was said to be immediately perceived by the general public as offensive: the PRV therefore held that registering this would be contrary to morality and public order.

Offensive Kat
A couple of observations

Je suis Charlie

Despite the applicant seeking to convey a message of dissatisfaction through that figurative mark, the decision of the PRV is not really surprising, and is in line with existing office practices and case law on absolute grounds for refusal relating to morality/public order.

In relation to morality/public order it may be worth recalling the recent discussion – also reported on this blog (see here and here– regarding the “Je suis Charlie” mark and whether that mark could be considered ineligible for registration on such grounds.  In January 2016 the EUIPO (at the time still OHIM) issued a statement concerning speculative trade mark applications for the phrase Je suis Charlie”. There the Office stated that: 

“An application which consisted of or which contained the phrase "Je suis Charlie" would probably be subject to an objection under Article 7 (1) (f) of the Community Trade Mark Regulation [now EU Trade Mark Regulation], due to the fact that the registration of such a trade mark could be considered "contrary to public policy or to accepted principles of morality" and also on the basis of Artice 7(1)(b) as being devoid of distinctive character.”

Overlooking the fact that “Je suis Charlie” may be devoid of distinctive character and focusing instead on the actual notion of morality and public order it would appear that such notions depend on the specific circumstances at hand and are conditional on what at the time of the relevant application appears to be appropriate. The question one could raise is whether the “Je suis Charlie” word mark could be regarded as being contrary to morality and public order many years after the tragic events that took place in Paris in 2015.    

The "Screw you" application
Does public morality and order change over time?

The question whether morality and public orders are notions that change over time is not an academic one, and offices (including the UK Intellectual Property Office and EUIPO) have been asked to address it a number of times.

A notorious example is the one concerning the phrase "Screw you".

In 2006 Mr Kenneth failed to register the term “Screw you” as a Community trade mark (now EU trade mark) because of its offensive nature. The trade mark had been initially designated for a wide variety of goods and services. The OHIM examiner turned down the original application on the basis that it did not comply with principles of morality. The examiner in question also stated that the word “screw” equated to the word “f**k” and was therefore insulting.

The OHIM Grand Board of Appeal later stated that the term was not equally offensive, but confirmed that it was a profanity. Public swearing was more acceptable then than it had been 30 years before, but that the liberties extended to artistic expression were not necessarily to be extended to commercial expression. It did however permit registration in relation to some of the goods encompassed by the original application, eg goods sold in sex shops such as sex toys and condoms.

Finally

The PRV rejected ‘finger’ application at the application stage, but it might be interesting to consider what would have happened should have the office allowed publication of the application. It is hardly conceivable that registration of the sign at hand would have eventually been obtained, also considering its apparent similarities with the signs of other, better-known undertakings, and also the fact that in trade mark law parodies do not really have a place, at least in Europe [see here instead for a different outcome in the recent US litigation between Louis Vuitton and My Other Bag]"

Thanks Nedim for this interesting analysis! 

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