Author: Dr. Manuela Ferrario
Last July, the CP14 common practice on the interpretation of trademarks contrary to public order and morality came into force: a document that provides guidelines and clarifications for national and supranational trademark offices but also for trademark users.
The recently approved common practice thus aims to clarify the conditions under which a trademark can be said to be contrary to public policy and/or morality, an issue that is often a source of misunderstanding and conflict.
Article 4(1)(f) of Directive (EU) 2015/2436 provides that trademarks that are contrary to public policy or morality are excluded from registration or, if registered, may be declared invalid. However, it is not specified what exactly is meant by ‘public policy’ and ‘morality’, and these concepts give rise to potentially very subjective interpretations, especially as these concepts are by their nature variable in time and space.
Greater clarity is certainly useful for anyone who is about to file a new trademark and does not want to receive a refusal from the competent offices. On the basis of the principles that were shortly to be crystallised in the CP14, in April 2024 the company Escobar Inc. had in fact to accept, after several levels of judgement, the refusal of the trademark ‘PABLO ESCOBAR’, considered contrary to the fundamental principles of the European Union, as well as morality and public order.
It is well known to most that Pablo Escobar was the leader of the Medellin drug cartel in Colombia and appears to have been guilty of several murders and brutal acts against his opponents. His conduct would therefore affect the perception of the brand that bears his name, being highly offensive, shocking, apologetic and in conflict with the values of human dignity, freedom, equality, solidarity, as well as the principles of democracy, the right to life and physical integrity.
How, then, to disentangle the principles of public order and morality?
To provide guiding principles, common practice firstly warns that the assessment must always be carried out with regard to the specific characteristics of the individual case, taking into account the normal level of sensitivity and tolerance of the relevant public in the area of interest at the time when the assessment takes place.
Furthermore, any subjective elements should be avoided as far as possible in the assessment, using instead objective reasons drawn from independent and reliable sources (including general principles of law, codified legislation, and case law). Personal beliefs should not be included in the evaluation process, as they may not reflect the shared values of society at a given time, whether they are too progressive or, on the contrary, outdated.
In addition, the principle of freedom of expression must be considered, to be balanced against the protection of public order and morality. In fact, it should be noted that a sign that is not registrable under the aforementioned Article 4.1 f) may still be used in commerce.
But what is meant by ‘public policy’? Public policy can be defined as a set of fundamental norms, principles and values of societies in the European Union at a given time. It includes, in particular, the universal values of the European Union, such as human dignity, freedom, equality and solidarity, as well as the principles of democracy and the rule of law, proclaimed in the Charter of Fundamental Rights of the European Union. On the other hand, the fundamental standards refer to issues such as, for example, peacekeeping, the fight against terrorism, the protection of public health, protection against discrimination, and the defence of social and cultural rights.
Therefore, a sign will be contrary to public order if, among other things, it transgresses and/or incites, glorifies, trivialises or justifies the violation of a fundamental rule, principle and/or value as described above.
‘Decency‘, on the other hand, refers to the fundamental moral values and standards accepted by a society in the European Union at a given time. These may be religious, cultural or social values and standards that may vary from one country to another.
There will therefore be a breach of morality if, among other things, one of the fundamental moral values and standards is perceived as dishonoured, despised, discriminated against, degraded, denigrated or trivialised in such a way as to constitute a criminal offence.
Be careful not to confuse morality and bad taste: a sign in bad taste is coarse, unbecoming or unrefined, but not offensive to a person of normal sensitivity and tolerance, and therefore not contrary to morality.
In order to assess whether a sign is contrary to public order or morality, it is therefore necessary to examine all the meanings of the sign, also taking into consideration the individual verbal and/or figurative elements present that could neutralise, counterbalance or, on the contrary, reinforce the objectionable meaning.
In addition, the goods and services for which protection is sought must be considered, as they make it possible to identify the relevant consumer audience, which may also influence the assessment. It is important to note that, in addition to the perception of the relevant public, it may be appropriate to consider the perception of members of the public who might reasonably be expected to come into contact with the mark wherever it is displayed.
There is no doubt that there are subject areas within which incidents of offences against public order and decency are more likely to occur: human rights (discriminatory messages and invitations to hatred on the basis of race, age, sex, culture, religion), illegal substances especially if aimed at vulnerable groups (endangering the health of young people or children), religion (insults or vilification of sacred figures, symbols or texts), criminal activities and organisations (glorification or justification of crimes, war crimes, crimes against humanity, extremist movements). How can we fail to mention signs that contain vulgar elements such as blasphemy or offensive gestures, obscenities, sexual allusions or double entendres, or that refer to known tragic events.
To give an example to clarify the above: the sign ‘AUSCHWITZ MEMORIES’ for amusement park services (Class 41) would most likely be contrary to public order and morality as it would trivialise a tragedy and its victims. The same sign filed for museum management (also in Class 41) could be considered registrable as it is aimed at educating and sensitising the public about specific historical events.
It is desirable that European and national examiners comply as soon as possible with the principles and guidelines outlined in PC14, in order to ensure the registration of trademarks that are not contrary to the fundamental principles and values of society on the one hand, but on the other hand in step with the times.
© THINX Srl – October 2024