Via Mondaq
If governments want to restrict the use of commercial profanity, they should be using something other than trademark legislation.
If governments want to restrict the use of commercial profanity, they should be using something other than trademark legislation.
The fundamental purposes of trademark legislation are to protect the value in commercial brands and to protect consumers from confusion in the marketplace. It is not about protecting the public’s sensibilities.
In spite of this, there are trademark laws throughout the world that prohibit the registration of trademarks that include language that is deemed to be offensive. Trademark applications are routinely rejected on this basis.
For instance, the European Union Intellectual Property Office recently rejected a request by Ukraine’s State Border Guard to register the slogan “Russian warship, go f–k yourself” as a trademark.
A news report states the application was first rejected in July 2022 because it was “contrary to accepted principles of morality.” That decision was upheld on appeal because of “vulgar language with an insulting sexual connotation.”
In the U.S., Asian-American rock band The Slants battled all the way to the Supreme Court of the United States to register their name.
The band’s application was originally rejected by the U.S. Patent and Trademark Office because the name was considered to be disparaging to Asians.
The band’s Simon Tam told NPR they wanted to reclaim what is often considered a slur.
“We grew up and the notion of having slanted eyes was always considered a negative thing,” he said. “Kids would pull their eyes back in a slant-eyed gesture to make fun of us … I wanted to change it to something that was powerful, something that was considered beautiful or a point of pride instead.”
Trademark legislation that prevents the registration of trademarks that may offend the public’s sensibilities harkens back to more prudish times when everyone seemed to agree on what was offensive. Part of the problem with legislation like this today is that people no longer agree, expect in the case of the extreme. Individual examiners in trademarks offices are necessarily having to interpret and apply these provisions based on their own sensibilities. An obvious consequence of this is that inconsistent decisions are being made, one of the hallmarks of flawed legislation. .
Fashion retail group French Connection Limited has successfully registered FCUK in Canada and elsewhere, calling it a lighthearted play on words (it is an acronym for French Connection United Kingdon). Another examiner or trademarks office might well have found it obscene, such as the examiner in the Canadian Trademarks Office who rejected an application by one of our clients to register FOQ U for a range of consulting and entertainment related services.
Is anyone really going to be offended by this? There is a popular TV show called Schitt’s Creek and a Hollywood movie called Meet the Fockers. Just because these titles and a brand such as FOQ U sound like a certain expression, it doesn’t mean the public at large will be offended. These determinations need to be made in a very culturally specific context.
In any event, barring people from registering potentially offensive names or slogans will not end their use. I can have a monopoly on a trademark with f-you in it. That doesn’t have any bearing on my ability to say f-you with my product. I can do that without a registration. All it means is if I get a registration, I can stop others from calling their product f-you.
If you think about it, allowing parties to register the term f-you could potentially limit the usage of that term.
When it comes to legislation protecting public sensibilities, a trademark office is the wrong place to turn. The time has come to remove provisions like this from trademark legislation.
People will continue to push the envelope so there is no reason to think this issue won’t continue to come up. With that in mind, I would not be surprised if the provisions in legislation get less restrictive or are just dropped. At the very least, we may see some clearer guidance on how they are to be applied in a predictable way.
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