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Profanities in trade marks

Written by Aasim Durrani on 03 December 2013

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Article 7(1)(f) of the Community Trade Mark Regulation prevents the registration of "trade marks which are contrary to public policy or to accepted principles of morality." Refusals under this head are relatively rare, although they frequently make for interesting (and colourful) reading.

In 2010 a stylised form of the words "FUCKING HELL" was rejected under Article 7(1)(f) by the OHIM Board of Appeal in case R 0385/2004-4. The applicant had sought to register the mark for clothing, footwear and headgear, in addition to a range of beverages. The applicant's argument that the mark referred to the Austrian village of Fucking, which had a population of 93 at the time the case was heard, was also rejected. It was noted that many people would not have heard of the Austrian village and would not therefore associate it with the applicant's mark.

In PAKI Logistics GmbH v OHIM (case T526/09), the General Court refused to register the word "PAKI", deeming it contrary to Article 7. It held that the word was widely regarded as a racial slur and that any other non-derogatory use of the word was clearly secondary to its use as an offensive term. The OHIM's stance was supported in particular by the UK government. The General Court highlighted as a fundamental value of the EU the protection against any discrimination. It cited Articles 2 and 3, paragraph 3 of the EU Treaty, Articles 9 and 10 of the Treaty on the Functioning of the European Union, and Article.21 of the Charter of Fundamental Rights of the European Union.

A figurative mark containing the phrase Hijoputa (Spanish for "son of a bitch") was denied registration in Federico Cortés del Valle v OHIM (case T417/10). The phrase, which causes greater offence in Spanish than its English equivalent, led to the OHIM rejecting the applicant's argument that it would be used in a laudatory and non-offensive manner.

The OHIM further noted that the phrase was a dominant element, given that the accompanying non-offensive wording was smaller and positioned in a way which clearly made it secondary to the wording in question. The applicant's argument that the denial of trade mark protection constituted a breach of his human right to free expression under Article 10 of the European Convention Human Rights was also rejected on the basis that he was still free to market his goods, albeit without trade mark protection.

In contrast, Bastardsuicker ("bastard sugar") was entered as a name in the register of traditional specialities by virtue of Regulation (EU) No 1151/2012 on quality schemes for agricultural products and food­stuffs. The sugar is a by-product formed in sugar refineries and is therefore deemed to be a bastard grade of white sugar.

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