A trademark application for « Je suis Charlie », the phrase popularized in the wake of the recent terrorist attacks in Paris, has been filed with the Benelux Officer for Intellectual Property. The publication of the application occurred on January 12, 2015, so that the time limit to file an opposition runs until March 12, 2015.
In other countries, such as the United States or Australia, applications for « Je suis Charlie » have also been filed and are therefore likely to be subject to the assessment, under local law, of whether or not such a wording can be registered as a trademark in these countries.
In France, the Trademark Office declared that it has rejected over 50 trademark applications for « Je suis Charlie » since the terrorist attacks in France. The ground for such a refusal is that the applications do not meet the criterion of the distinctive character, insofar as it is widely used by the community. The fact that such a commercial use could affect the moral standard is also referred to, by practitioners, to explain this decision.
On January 16, 2015, the Office for the Harmonization in the Internal Market (OHIM) confirmed this approach, insofar as it considered that "according to OHIM's Guidelines for Examination on Community Trade Marks (Part B, Section 4), 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, 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 Article 7(1)(b) as being devoid of distinctive character."
This reasoning is also the one recently adopted by the French High Court1 when it pronounced the nullity of the trademarks « I Paris » and « J' Paris », challenged by a defending party to a trademark opposition. In its decision, the High Court (which confirmed the decision rendered by the Court of appeal of Paris) applied the criterion of the distinctiveness.
Indeed, according to the High Court, the trademarks « I Paris » and « J' Paris » can be considered, by the average consumer (an individual who wants to keep a memory of his/her trip in Paris), who is familiar with such type of sign since the creation of the famous slogan "I New York" in 1977, as a sign expressing the enthusiasm for a specific character or location, and not as a guarantee of the origin of a product and so, irrespective of the fact that this sign would be featured on a labeling.
The use of the criterion of the distinctiveness by the French trademark agency or by the French High Court fits the purpose of the principle, applicable in trademark law, according to which a trademark aims at ensuring the origin of a product; this general rule therefore leads to refuse the protection, as a trademark, to a sign which does not allow, for an identified public, to guarantee the origin of a product.
This interpretation by the French High Court and by the French Trademark Office conveniently helps to solve the potential risk of painful events used for controversial purposes.
1 Cour de cassation, January 6, 2015
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