MORALITY AND TRADEMARKS: THE SOUTH AMERICAN APPROACH.

• Author: Arcos Ziemer, Alysa

1. Introduction

   The Paris Convention and the TRIPS Agreement obligate signatory states to protect trademarks. (1) Meanwhile, those agreements provide leeway for member states to deny registration if the marks themselves are "contrary to morality or public order." (2) This article will discuss the meaning of morality in the trademark area, and when the imposition of a morality based restriction is legitimate or illegitimate. The United States recently addressed this issue in the U.S. Supreme Court case Matal v. Tam, but this does not change how the rest of the Americas draw their lines around commercial expression and morality. (3) Each country deals with trademark morality in a particular manner, and this study will focus on the South American approach to this commercial speech issue.

   "Morality" refers to the "distinction between right and wrong or good and bad behavior." (4) On the other hand, "public order" refers to the "rule of law regarded as essential in the legal order of the State" or "a right recognized as being fundamental within that legal order." (5) Therefore, the two are not the same, but they do overlap. A trademark that is truly contrary to public order would also violate accepted principles of morality, but the opposite might not be true. This article will examine the registrability and use of trademarks that may be considered "immoral" or "offensive" under the respective laws in South American countries, particularly Brazil, Peru, Ecuador, Argentina, Colombia, and Chile. In all countries, the affected marks are usually considered immoral due to (i) a sexual (6) or vulgar connotation or reference, (ii) an offense to religions or beliefs worthy of respect and veneration, (iii) an offense to the honor of a person or a group of persons (7), or (iv) a reference to an illegal act or something that causes it or derives from it. (8)

   When it comes to sexuality and vulgarity, western society continues to move toward being more "open-minded" in relation to entertainment, advertising campaigns, and even in politics. (9) For example, in a 2012 decision from Australia, a mark owner prevailed in its argument that the Australian Trademarks Act did not prohibit the mark NUCKIN FUTS. (10) While the mark was initially rejected because it was an "obvious spoonerism" (11) for "Fucking Nuts," the applicant's counsel argued that "fuck" and "fucking" were "now part of the universal discourse of the ordinary Australian." (12) The adult entertainment industry, which uses and attempts to register pornographic marks, has found itself more widely accepted than in the past. According to Kassia Wosick, assistant professor of sociology at New Mexico State University, pornography is a $97 billion industry globally, (13) making it a considerably lucrative business. (14) Sex toys nowadays can be easily found in retail stores like Wal-Mart and drug stores like CVS, and this segment is estimated to be a $15 billion business. (15)

   With regard to the subject of the use of religious symbols in trademarks, the case of the Spanish football team, Real Madrid, is illustrative of the importance that religious symbols may have in certain contexts. The team removed a Christian cross from its official crest for specific projects, such as the negotiations regarding a Real Madrid-themed island resort in the United Arab Emirates and the launch of an officially licensed credit card issued by the National Bank of Abu Dhabi. In both cases, the change in the traditional crest was made in an attempt to please Muslim supporters of the world's wealthiest football team. (16)

   While some companies deliberately avoid offending potential customers (like the owners of the marks ISIS for chocolate (17) and MITSUBISHI PAJERO for cars, (18) which realized that their marks could be offensive in certain circumstances and decided to rebrand), other companies intentionally opt for controversial marks, aiming at gaining consumers or media attention through controversy. In the "era of overwhelmed and distracted consumers," . . . "it is increasingly common to encounter indecent trademarks or marks that deliberately cross a line," with the goal of getting attention (like COCK SUCKER for rooster-shaped chocolate lollipops and SLUTMAGNET for musical group services and shirts). (19) Enrico Bonadio addresses the issue of using controversial marks as a marketing tool:

   Not rarely, companies adopt debatable trademarks for "shock value" in order to win consumer's attention and eventually increase their market share. 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. (20) In an American case involving a pornographic website, fuckingmachines.com, an administrative decision recognized that "[w]hile the word 'fucking' may not elicit widespread condemnation from everyone, it is clear from the evidence attached that a significant composite of the public still feels a jolt of offense, shock, or dismay when they overhear the word uttered in public." (21) Meanwhile, even though the mark owner ultimately lost its bid for registration before the USPTO, the administrative proceeding itself gained widespread notoriety. (22)

   In light of the above, and considering that trademarks are crucial commercial assets, it is of great importance to examine the registrability of the "immoral" marks as well as their scope of protection. Carrying out a business activity under an unregistered mark may involve certain risks that owners of potentially immoral marks should be aware of before operating in the market.

2. THE ESSENCE OF MORALITY AND ITS CONNECTION TO TRADEMARK LAW

   The essence of morality and the theories that define it, as we will explore in the coming paragraphs, is the key to understanding its application in trademark law. The Morality Clause included each country's national legislation only mentions the notion of morality, but it does not specify the theories, nature or principles that form the basis for this concept. Therefore, before analyzing the application of the morality impediment for the registration of trademarks, it is important to discuss the nature and significance of morality. (23) What can be considered moral or immoral? The Oxford English Dictionary provides a definition that comprises various elements that should be explored. Accordingly, morality is "a degree of conformity to moral principles; that which includes the totality of the accepted norms which are deeply rooted in a particular culture." (24) In our interpretation, morality can refer to what one should and should not do, taking into account virtues, values, principles, the bad, the good, the right, and the wrong. (25) By this standard, actions considered moral should be praised and actions considered immoral should be prevented and/or punished, but any assertion of morality must also contain a proper measure of legitimacy. Without it, restricting commercial activity and withholding a government benefit becomes a mere (unjustified) exercise of arbitrariness on the part of the state.

   The first important aspect of the above mentioned definition is the "degree of conformity to moral principles." (26) The issue here is assessing which are these moral principles. For Aristotle, such principles come from the essence of the human being; they are strictly connected with the mere fact of existing. (27) The above definition also mentions "a particular culture," referring to "accepted norms which are deeply rooted in a particular culture." (28) The notion of a particular culture/society relates to a group of persons that share the same land, background, ethnicity, language, values, and many other characteristics that give those individuals a sense of relatedness between them and the country or region they are part of.

   The people of South America may have borders between them, but they are very related. The continent is linguistically diverse, with Spanish being the most dominant, Portuguese spoken in Brazil, and Dutch, French, and English used in the Guyanas and Surinam. (29) Bolivia, Peru, Northern Chile, Argentina, Southern Colombia, and Ecuador are home to approximately thirteen million Quechua speakers. (30) Paraguay is generally thought of as a Spanish speaking country, but Guaranf is its co-official linguistic partner. (31) Meanwhile Bolivia, Peru, and Chile have large numbers of Aymara speakers, (32) and Southern Chile and Argentina are home to Mapudungun. (33) There are also countless less popular languages spoken across the continent, both indigenous and imported. (34) This linguistic diversity only scratches the surface, with cultural groups spanning across borders and interweaving with linguistic groups, through urban and rural areas alike. While North Americans tend to vaguely view South America as one large former Iberian colony, (35) the cultural texture is even richer than the linguistic. The continent melds Amazonian, indigenous, African, and European influences from the Patagonian Welsh to the Yanomami groups in Northern Brazil. (36) Nevertheless, despite the geographic, linguistic, political and cultural diversity, South Americans share a common sense of affiliation. (37)

   In light of this broad diversity coupled with a common identity, we should analyze the theoretical role of the state, taking into consideration the Trademark Offices and the Judicial Power. According to Plato, society is a fragile unity that needs to have set rules in order to have harmony and peace among its members. (38) The platonic theory supports the view that the State exists to promote value amongst its citizens, (39) basically stating that it is the duty of the State to dictate which standards of morality have to be considered in determining if an action is moral or immoral, right or wrong. This idea of the need...