A recent EU trade mark application for the word mark, PUT PUTIN IN, has been refused by the European Union Intellectual Property Office on the grounds of being contrary to public policy or to accepted principles of morality. While a fairly straightforward decision, this is a timely reminder to applicants to ensure their trade mark applications are unlikely to cause serious offence, particularly in light of the Russia-Ukraine war.
PUT PUTIN IN trade mark application
EU application 018843822 PUT PUTIN IN was filed in class 25 in relation to "clothing; headgear". The examiner refused the mark, citing Article 7.1(f) of Regulation (EU) 2017/1001 – trade marks which are contrary to public policy or to accepted principles of morality shall not be registered. The examiner noted in their decision that the target audience is the English-speaking public who would perceive the mark as being a reference to imprisoning Russian President, Vladimir Putin.1
Further, the examiner viewed the mark as taking advantage of a tragedy (Russia's invasion of Ukraine) for commercial purposes. For these reasons, the mark was refused.2 The examiner did note, however, that some might view a reference to imprisoning Vladimir Putin positively. This point, ultimately, did not sway the examiner.
Identical to Article 7.1(f) of Regulation (EU) 2017/1001 is section 3(3)(a) of the Trade Marks Act 1994. This states that a trade mark shall not be registered if it is contrary to public policy or to accepted principles of morality.
Guidance by the UK Intellectual Property Office (IPO) identifies that marks which may be 'contrary to public policy' are those that encourage some kind of illegal activity or offensive behaviour, or make references to illegal drugs.3
The test for whether a mark is contrary to 'accepted principles of morality' is if the use of the mark would cause not just offence, but outrage to an identifiable sector of the public. This could include marks that have racist connotations, include offensive language, undermine family values, or misuse religious symbols.
By way of example, the following marks have been considered objectionable under section 3(3)(a):
- FOOK: considered to be phonetically identical to (when spoken in some regional English accents), and visually similar to, the expletive.
- COUNTERFEIT DELIGHTS: considered to be contrary to public policy as it promotes counterfeiting.
The following marks have been accepted under section 3(3)(a):
- START YA BASTARD: considered to be reasonably inoffensive in the context of chemical engine starter.
- BONK: considered to be a mild slang word.
While not filed in the UK, the refusal of the PUT PUTIN IN mark is a timely reminder for UK applicants to ensure their trade mark applications to the IPO are unlikely to cause serious offence.
2. Interestingly, some commentators have noted that the mark could have been refused on the grounds of being undistinctive, rather than on the grounds of being contrary to public policy or to accepted principles of morality.
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