In this article, we discuss two recent 'morality' trade mark decisions; one that was handed down by the Grand Board of the European Union IP Office (“EUIPO”), the other by the Australian Registry.
EUIPO - COVIDIOT
Matthias Zimsack applied to register the trade mark COVIDIOT (stylised, see below) as an EU trade mark in three classes:
- class 6 for metal clips,
- class 9 for computer gaming software and mobile applications, and
- class 28 for board games and toys.
Refusal
The application was refused on the grounds that the trade mark violates accepted principles of morality, as per Article 7(1)(f) of the EU Trade Mark Regulation (“EUTMR”). The objection was that the trade mark would offend the sense of decency of the fair and just-minded, and discredit people who do not believe that the pandemic measures implemented by governments (like lockdown and masking) are proportionate or necessary.
The Grand Board
The case was referred to the Grand Board, which made a number of findings:
Contrary to morality
Article 7(1)(f) of the EUTMR, which deals with trade marks that are contrary to principles of morality or public order, is limited to cases where a mark ‘crosses the boundary to being seriously abusive and likely to cause deep offence.'
Limited to the mark
The objection must refer to the trade mark itself, not other surrounding circumstances such as the legality of the goods sold under the trade mark.
Reasonable person
The test to be applied is the perception of a reasonable person with average thresholds of sensitivity and tolerance, taking the context of the trade mark into account.
Relevant public
The relevant public will be those consumers to whom the goods are directed, or those who may come across the mark in their daily lives.
Relevant date
The relevant date for assessing principles of morality is the date of filing of the application.
Covidiot
The term ‘Covidiot' will be understood in many EU countries - it appears in dictionaries and can mean someone who annoys others by refusing to obey social distancing rules, someone who behaves in a stupid way and thereby risks spreading COVID 19, and someone who ignores warnings regarding public health.
Trivialising
The trade mark applied for ‘trivialises a well-known tragedy'.
Human dignity
The trade mark application appears to be contrary to human dignity and principles of morality.
Political expression
In the EU, commercial expression is considered inferior to political expression – ‘an expression containing a commercial message may be subject to different restrictions that a political speech.'
Trivialising a pandemic
The trade mark application must be refused because ‘when used as a trade mark for the contested goods, such as games and similar products, it would trivialise one of the deadliest pandemics ever, in a way that it contrary to human dignity and hence accepted principles of morality.'
The Grand Board further said that ‘by ridiculing COVID-19 in the trade mark applied for…people have the impression that COVID-19 is not so bad after all and that the rules and regulations.. can even be laughed about in trade…. (the) mark is therefore likely to shock or offend….any person who, on EU territory, encounters that mark and has average sensitivity and tolerance thresholds.'
Not an indicator of source
The application must be refused for lack of distinctive character - given the considerable understanding that there is of the term Covidiot, this term will not be perceived as ‘indicating an undertaking'.
Result
The appeal was dismissed, and the trade application was refused.
Australia - ZROFUX
We'll end with something a little lighter from Australia. An individual, Kristopher Preston, applied to register a trade mark in Australia for clothing, footwear and headgear. Nothing unusual about that, but the mark here was an eye-catcher - ZRO FUX. In case your brain is tired, the mark ZRO FUX is ‘phonetically identical to, and clearly references the phrase ZERO F****.'
Section 42(2) of the Australian legislation deals with scandalous marks, although there is no definition of the term. The hearing officer, Robert Wilson, said that in Australia the offensiveness bar is high and the mark must cause a ‘significant degree of disgrace, shock or outrage which goes beyond merely giving offence.'
Wilson went on to say that expressions like PHAR QUE and FAR KEW are now generally acceptable. He made the point that marks like FARKOFF, FARKUT and FORK'N have been accepted as trade marks in Australia. But even in Australia there are limits - Wilson made mention of the Kunstreetwear case, where some joker applied to register KUNT – unsurprisingly this was held to be ‘highly offensive in normal society'.
ZRO FUX was, of course, held to be registrable. FARKEN ORSUM!
Reviewed by Ilse du Plessis, an Executive in ENS' IP Practice.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
