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No Sex Please, We're European

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The issue of marks objectionable on the grounds of being contrary to public policy and morality has been again considered by the General Court of the European Court of Justice (CJEU).

The Court has previously considered the registrability marks incorporating offensive language that we would hesitate to include on a family friendly website, finding them unregistrable on the grounds of public morality! In this instance, the mark involved the word FICKEN combined with a device.

The word FICKEN is the German word meaning “to have sex” or another more obviously colloquial word. The mark, incorporating an inoffensive device mark had been filed via the Community Trade Mark (CTM) at OHIM for clothing, beers, other alcoholic beverages and retailing. The mark was refused by the examiner and the appeal to the OHIM Appeal Board was also rejected.

The Applicant chose to file a further appeal to the General Court, which is the first level court of the CJEU which hears appeals on Community Trade Mark cases from OHIM.  The General Court again rejected the appeal holding that the “average consumer, with normal sensitivity levels, would perceive the word to be vulgar, obscene and repellent".  As such, the word was contrary to decency and, therefore, accepted principles of morality. The Court rejected the appellant’s claim that the word was in common use, especially amongst the young. It further held that for alcoholic beverages, the word would create a link encouraging the impression that alcohol would promote sex, which would be dangerous, especially for teenagers.

Having been able to make two references to sex in a trade mark case report, if there is a moral to be had from this story, it is: do not try to adopt marks incorporating bad language as the authorities are likely to refuse registration.

Refusal of the application does not prevent the applicant from using the mark, unless it broke other non-IP points of law.

Need help with your trademark? Contact our Trademark Attorneys in London before making any decisions to adopt a trademark.  

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