EUIPO Implements Common Practice on Objectionable Trademarks

Source: https://www.euipo.europa.eu/en

On April 19, the European Union Intellectual Property Office (EUIPO) formally began implementation of Common Practice 14 (CP14) governing the agency’s treatment of applications of trademarks that are contrary to public policy or accepted principles of morality. The EUIPO’s common communication on CP14 seeks to establish a uniform understanding of the EU Trademark Directive’s prohibitions against registering such marks in light of increased numbers of trademark applications filed that have arguably triggered this statute.

Increase in Objectionable Trademark Applications Leads to Common Communication

Article 4(1)(f) of the EU’s Trademark Directive (TMD), which prohibits the registration of trademarks against public policy or accepted principles of morality, has received some guidance through EU case law. However, uncertainty in the relation of the public policy and morality provisions, as well as an increase in objectionable trademark applications following COVID-19 and other well-known tragic events, led EU policymakers to develop a common understanding for intellectual property offices in individual member states.

Under the common communication issued for CP14, issued by the European Union Intellectual Property Network (EUIPN), the term “public policy” is to be understood as “a set of fundamental norms, principles and values of societies in the European Union at a given point in time.” This definition includes the universal values of the EU on human dignity and freedom, as well as principles on democracy and the rule of law as proclaimed by the Charter of Fundamental Rights of the European Union. The statutory language “accepted principles of morality” under the common communication refers to “the fundamental moral values and standards accepted by a society in the European Union at a given time.”

The case-by-case assessment of trademark applications under CP14 will begin with an assessment of the meaning of the sign or word mark itself, followed by an assessment of the relationship between the proposed trademark and the goods or services associated with the mark. The recently released common communication on CP14 identifies several topics which could merit an assessment under Article 4(1)(f) including illicit substances, public safety risks, religious or sacred nexus, vulgar elements, sexual innuendo, disparagement and criminal activity. Notwithstanding these topics, EU legal principles on freedom of expression must also be considered when assessing trademark applications under CP14.

EU Clarifies Legal Test While U.S. Supreme Court Strikes Down Similar Statutes

One of the aims of CP14 is to introduce more objective analysis into an inquiry that has increasingly led to subjective decision-making. The common communication on CP14 indicates that the fundamental norms of public policy should be ascertainable from reliable and objective sources, whereas fundamental moral values and standards require an empirical assessment of what the relevant society considers acceptable at a given point in time. While the public policy test is objective, the EUIPN’s common communication acknowledges that the test for accepted principles of morality involves subjective values that must be applied as objectively as possible.

The EUIPN’s common communication on CP14 also draws a distinction between morality and bad taste, which references a mark that is “gross, unrefined or indelicate but is not offensive to a person of normal sensitivity and tolerance.” While trademarks violating acceptable principles of morality are not registrable under EU law, bad taste itself does not trigger the prohibition at Article 4(1)(f) of the EU’s TMD.

The Court of Justice of the European Union (CJEU) only recently clarified the legal test for rejecting trademark registrations under Article 4(1)(f)’s acceptable principles of morality provision. In a 2020 ruling, the CJEU reversed the EUIPO’s refusal to register the trademark “Fack Ju Göhte,” the title of a German comedic film released in 2013. In finding that the EUIPO failed to assess acceptable principles of morality within the proper context, the CJEU noted that the agency failed to properly address the trademark applicant’s arguments that the film was a financial success with German-speaking audiences and was released for screening to younger audiences.

The EU is working to clarify provisions against certain vulgar trademarks at the same time that the U.S. Supreme Court has been striking down similar prohibitions preventing trademark registration on constitutional grounds. In June 2019, the Supreme Court issued its decision in Brunetti v. Iancu, declaring that the prohibition against “immoral and scandalous” trademarks codified at 15 U.S.C. § 1052(a) amounted to unconstitutional viewpoint discrimination. While that decision targeted Section 1052(a) of U.S. trademark law, Section 1052(c)’s prohibition against using the names of living individuals without their written consent is currently before the Court in Vidal v. Elster, which involves an application to register the trademark “TRUMP TOO SMALL.” Following oral arguments in Elster last November, some belief existed that the provisions on living individuals would fail constitutional muster for the same free expression issues that were presented in Brunetti.