Brands, morality and public policy: some reflections on the ban on registration of controversial trademarks.

• Author: Bonadio, Enrico

INTRODUCTION A Look at Some Cases United Kingdom European Union United States Australia The Right and Duty of Public Authorities to Have a Say THE "PARADOX" AND THE "LACK OF INCENTIVE" CHANGES IN MORAL STANDARDS REFUSAL OF REGISTRATION AND FREEDOM OF SPEECH CONCLUSION INTRODUCTION

Commercial enterprises in several industries are increasingly using aggressive marketing strategies to attract and keep customers. Amongst these strategies, the choice of the "right" brand is obviously key. Brands are indeed the main tool used by companies to comunicate to their current and potential customers. As they are continuously shown on TVs, streets, billboards, and at social, cultural and sporting events, trademarks are often compulsory viewing and constitute a permanent image that viewers cannot avoid. (1)

Brands are also sometimes chosen that aim at shocking existing and potential customers, especially youngsters. Not rarely, companies adopt debatable trademarks for "shock value" in order to win consumers' attention and eventually increase their market share. (2) In other terms, enterprises may be attracted by the commercial success they can gain from edgy and controversial brands or borderline trademarks, which make the latter more memorable, more discussed, and accordingly more appealing and valuable to consumers. (3) In short, in some circumstances, being rude or immoral may be commercially viable. (4)

Yet, attempts at registering controversial trademarks are likely to encounter legislative obstacles. Indeed, several international, regional, and national legislations prohibit the registration of a variety of debatable signs. Terminology varies depending on the jurisdiction. The European Union (EU) Trademark Directive (5) and Regulation, (6) as well as the United Kingdom (U.K.) Trade Mark Act, (7) ban the registration of trademarks that are "contrary to public policy or to accepted principles of morality." Similar language had been adopted by the Paris Convention, which prohibits the registration of signs "contrary to morality or public order." (8) The United States (U.S.) Lanham Act provides that no trademark shall be refused registration unless it consists of or comprises immoral, scandalous, or disparaging matter. (9) An analogous provision is contained in the Australian Trade Marks Act according to which a trade mark will not be registered if it "contains or consists of scandalous matter." (10)

Thus, in many jurisdictions, registration cannot be offered to signs that contravene the state of law or are perceived as morally unacceptable. (11) As U.S. Judge Lenroot stressed in the old case Riverbank Canning, "[t]he field is almost limitless from which to select words for use as trade-marks, and one who uses debatable marks does so at the peril that his mark may not be entitled to registration." (12)

A Look at Some Cases

In the following pages, I will briefly analyse several decisions concerning refusal of registration on morality and public policy grounds. I will mostly (but not exclusively) refer to decisions that have denied registration or confirmed unregistrability on said grounds. Such signs have been refused registration because they conveyed messages that governments deem unacceptable and therefore do not want to encourage; for example, sexually explicit messages, coarse language, incitement to violence, and other unlawful behaviours including consumption of illegal drugs, support of authoritarian political regimes or terroristic organizations, as well as messages that offended religious beliefs or disparaged ethnic and other minorities.

United Kingdom

In 2011, the sign "Tiny Penis" was refused registration because it was considered contrary to current principles of morality (the products were articles of clothing). The "Appointed Person" (13) held that a distinction should be drawn between offence that amounts only to distaste and offence that would justifiably provoke outrage or would be the subject of justifiable censure as being likely to undermine current religious, family, or social values. (14) Similarly, the sign "Fook" was refused registration in 2005 because it has, at least in oral use, the same ability to cause offence and outrage as the word "Fuck," which is a swear word and deeply offensive and insulting to many people and therefore capable to undermine current religious, family, or social values. (15) On the contrary, the sign "FCUK"--the acronym for the U.K. clothing company French Connection--was granted registration, and the registration was confirmed. Although it is arguable that the word in question is capable of being seen as a swear word, on the other hand it does not always evoke such a word in consumers' minds. It was also noted that the reason why a different conclusion was reached in the case regarding the sign "Fook" was that such word is phonetically identical to "Fuck"--and the same is not true of the sign "FCUK." (16)

Registration has also been denied to signs that encourage violence, especially in the context of sporting events such as football matches. For instance, the sign "standupifyouhatemanu.com" was refused registration in connection with a range of products including polo shirts, baseball caps, and scarves because such combination of words is capable of leading to criminal or other offensive behaviour. Indeed, the connection between football and violent behaviour of some fans is well known and, according to the Registrar, the trademark in question conveyed a clearly violent message; for example, an invitation to people, in particular--football fans, to actively express their hatred of a football team (in this case Manchester United). (17) Similarly, the sign "Inter City Firm," in connection with clothing and footware, was refused registration since the sign was the name chosen by a well-known English football hooligan group mainly active in the 1970s, 1980s, and early 1990s, and it was associated with the football team West Ham United. As noted by the Registrar, a Chelsea football fan seeing a West Ham fan wearing a shirt bearing the sign in question could easily be provoked into violence. (18) This trademark, it was therefore held, constitutes a form of anti-social branding and is likely to cause alarm or distress. These two decisions are consistent with the U.K. Registrar Work Manual that recommend that signs which encourage or promote criminal activities should not be registered. (19)

Signs which offend religions have also been denied registration. For example, the mark "Jesus," in connection with clothing products, has been considered to cause greater offence to a large sector of the public than mere distaste, and therefore it has been denied registration. The very idea that the word "Jesus" should be appropriated for commercial purposes, as stressed by the Appointed Person, is anathema to believers as well as to people who believe in the need to respect the religious sensibilities of others. (20)

European Union

Several community trademarks have also been refused registrations on grounds of public policy or morality. For example, the application for the sign "Screw You" was rejected in connection with several ordinary items such as clothing, footware, and sunglasses. Yet, the registration was granted in relation to certain products sold in sex shops. (21) This does not come as a surprise. Indeed, sex shops' clients are unlikely to be shocked by that trademark. Another case concerned the application for the words "Fucking Freezing." The applicant tried to convince the examiner that the term "fucking" used together with an adjective is, nowadays, considered a synonym of "very" or "particularly." The Board of Appeals of the Office of Harmonization for the Internal Market (OHIM) did not accept that argument and considered that the sign had, in fact, a vulgar and offensive meaning. (22) Similarly, the sign "Hijoputa," which in Spanish means "son of a whore," was denied registration, and the refusal was confirmed by the General Court because of the insulting message conveyed by such expression. (23) Conversely, the sign "Dick & Funny" was registrable as it "does not proclaim an opinion, it contains no incitement, and conveys no insult." (24)

The sign "Paki," filed by a logistics company, was considered racially offensive and thus unregistrable. This term is used in English-speaking countries to insult people from Pakistan or, in general, the Indian subcontinent. In this decision, the General Court clarified that there is no need to bring evidence that the applicant wants to shock or offend consumers; the objective fact that the sign might be perceived as a shock or an offense is enough to deny registration. (25)

Trademarks that remind consumers of terrorist organizations or authoritarian regimes have also been refused registration. The sign "Bin Ladin"--applied for by an import/export company whose sole shareholder was named Bin Ladin--is amongst those signs. The applicant's argument that the application was filed four months prior to the 9/11 attacks and therefore was not meant to recall the founder of al-Qaeda was dismissed by the OHIM Board of Appeal. Indeed, the famous Islamist terrorist was known to the public before the September 2001 attacks. (26) The figurative sign consisting of a representation of the coat of arms of the former Soviet Union, which included the hammer and sickle (a well-known communist symbol), was also refused registration. The General Court confirmed that such mark would be perceived by a substantial section of the relevant public in Hungary and other former communist countries (which have banned that sign and similar ones as they are associated to the despotic regimes that ruled them in the past) as being contrary to public policy. (27)

United States

In the U.S., the trademark "Redskins," registered by the famous American football team, has been challenged by some Native American petitioners. The Board of the United States...