FCUK Trade Mark - not invalid

The fashion retail group, French Connection Limited, saw its right to register its Trade Mark ‘FCUK’ upheld when an appeal to the Appointed Person was rejected on 17 May 2006.

Mr Woodman appealed a decision made on 20 December 2005 to the UK Trade Marks Registry granting French Connection Limited the right to retain the registration of their controversial trade mark "FCUK" on the basis that it was not ‘contrary to … accepted principles of morality’ under Section 3(3)(a) of the Trade Marks Act 1994.

The Appeal was on the grounds that the acronym was offensive not because, as the Hearing Officer had interpreted, that ‘through wordplay, mistake or misconstruing of the letters’ it might be seen as the swear word "f**k", but because it essentially was the swear word. It was so obviously intended to be the swear word that everyone would interpret it as such and therefore was contrary to ‘accepted principles of morality’.

This line of reasoning was rejected by the Appointed Person, Richard Arnold QC on the basis that the word was neither phonetically nor visually identical to the swear word "f**k" and therefore did not fall within Section 3(3)(a).

The ruling highlights the fine line between a mark that merely offends a section of society and a mark that contravenes generally accepted moral principles. Furthermore, it ensures that French Connection Limited can continue to enjoy the benefits of trade mark registration for the notorious "FCUK" trade mark.

French Connection Limited previously won their case to retain the registration of their controversial "FCUK" Trade Mark at the UK Trade Marks Registry on 20 December 2005. The hearing officer rejected retired businessman Mr Dennis Woodman’s application for a declaration that the Trade Mark should be declared invalid on the grounds that the mark was ‘contrary to public policy or to accepted principles of morality’. This complaint being based on Section 3(3)(a) of the Trade Marks Act 1994 which provides that a trade mark cannot be registered if it is ‘contrary to public policy or to accepted principles of morality’.

Mr Woodman appealed the decision to the Appointed Person on the grounds that the acronym was offensive. The appeal was on the basis that the Hearing Officer had wrongly interpreted, that ‘through wordplay, mistake or misconstruing of the letters’ it might be seen as the swear word "f**k", because, Mr Woodman contended, it essentially was the swear word. It was so obviously intended to be the swear word that everyone would interpret it as such and therefore was obviously contrary to ‘accepted principles of morality’.

This line of reasoning was rejected by the Appointed Person, Richard Arnold QC.

Section 3(3)(a) of the Trade Marks Act 1994 did not preclude the mark "FCUK" from registration. Whether a trade mark was, ‘contrary to … accepted principles of morality’ was dependant on a range of factors including whether there is a generally accepted moral principle which the mark would plainly contravene, (as opposed to cause offence to a section of the public); and whether the mark would justifiably cause outrage or censure amongst an identifiable section of the public in a way so as to undermine social, family or religious values. The moral principle should be identified and the Appointed Person recognised that the prohibition on the use of swear words, in particular where children might be exposed to them was a generally accepted moral principle.

The intrinsic qualities of the mark (and not conduct of the applicant) should also be considered, along with Article 10 of the European Convention of Human Rights as to whether there is a pressing social need to refuse registration that is proportionate to the legitimate aim pursued. In the case of a word mark, the way in which the public use the word should be considered.

The Appointed Person rejected Mr Woodman’s argument that the wording "FCUK" essentially amounted to the word "f**k" because "FCUK" was neither identical phonetically or visually to the swear word. It might be interpreted as the swear word depending on the circumstances and way in which it is used but it was not the swear word itself.

This case was distinguished from the "FOOK" case, Scranage’s Trade Mark Application 0/182/05, where it was held that the word "FOOK" could be phonetically identical to the word "f**k" and therefore the application was rejected.

It was held that the mark did not, in every circumstance, bring to mind the swear word and did also suggest itself as an acronym for French Connection UK. Therefore, the intrinsic quality of the mark was not purely to offend and as the mark was not itself a swear word it could not be said to contravene the accepted moral principle prohibiting the use of swear words.

Interestingly, in the previous hearing before the Hearing Officer, Mr Woodward pointed out that the Advertising Standards Authority (ASA) had upheld a number of complaints against the trade mark. However, the Hearing Officer distinguished these complaints as ones in which the trade mark appeared as part of a sentence or phrase where it was more likely to be mis-interpreted. The mark alone did not constitute a swear word. French Connection Limited has in fact since scaled back its use of the trade mark where it appears in phrases.

The ruling highlights the fine line between a mark that merely offends a section of society and a mark that contravenes generally accepted moral principles. Furthermore, it ensures that French Connection Limited can continue to enjoy the benefits of trade mark registration for the notorious "FCUK" trade mark.

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq

The original publication date for this article was 10/07/2006.