Courtney Doagoo is a doctoral student at the University of Ottawa, Faculty of Law.
On September 20, 2011, the General Court of the European Union released its decision to refuse the registration of a Community trademark for the for the former Union of Soviet Socialist Republics (USSR) coat of arms, upholding the previous ruling by the OHIM Appeal Board. The Court held that the proposed mark was a ‘symbol of despotism’, and offensive to Hungarian legislation.
At the heart of the appeal was the interpretation of section 7 ‘Absolute Grounds for Refusal’ – specifically subparagraph 7(1)(f) and subsection 7(2) – of the Council Regulation (EC) No 207/2009 on the Community trade mark.
The applicant, Couture Tech Limited – a company registered in the British Virgin Islands and affiliated with a Russian designer – applied to register the USSR coat of arms with the Community trademark office.
Subparagraph 7(1)(f) of the Regulation provides that “trade marks which are contrary to public policy or to accepted principles of morality” are not registrable. In this case, the applicant argued that “unlike the swastika, the political connotation of the coat of arms of the former USSR has been diffused and transformed into a provocative one, connected with the concept of the avantgarde, so that the mark applied for has acquired ‘a new distinctiveness’”. Upholding the OHIM Court of Appeal’s findings, the General Court declared that the mark had not been sufficiently “transformed” or “diffused” to be measured as anything other than a political symbol.
In addition, the Court found that pursuant to subsection 7(2) of the Regulation, it was sufficient that the symbol conflicted with the legislative policies of a single Member State. In the present case, the mark was deemed contrary to section 269/B, Law No IV of the 1978 Hungarian Criminal Code which considers it an offense to “distribute, use in public or publicly exhibit …the hammer and sickle, the five point star or any other symbol representing one of those signs”. The Court did note however that although the national laws of the Member States are not followed by or binding on the OHIM, the evidence could be used to assess how the signs are perceived by the relevant public.
Morality and public order are also grounds for trademark refusal in Canada and the United States. In Canada, for example, registration can be denied under subparagraphs 9(1)(j) and 14(1)(c) of the Trade-marks Act. Subparagraph 9(1)(j) is an absolute prohibition on adoption stating that “no person shall adopt in connection with a business, as a trade-mark or otherwise” (as distinct from registration), any mark likely to resemble “any scandalous, obscene or immoral word or device”. In her recently published treatise on the subject, Canadian Trademark Law, Canada Research Chair in Information Law and Professor at the University of Ottawa, Teresa Scassa discusses the application of this provision, noting that it has “received little attention” by the courts (Scassa, 154). Further, Professor Scassa observes that although the Trade-mark Examination Manual has published an aid to help examiners apply the criterion of subparagraph 9(1)(j), there is “a great deal of discretion” available in evaluating the bases for objection. Examples of these guidelines are:
“A scandalous word or design is one which is offensive to the public or individual sense of propriety or morality, or is a slur on nationality and is generally regarded as offensive.
A word is obscene if marked by violations of accepted language inhibitions or regarded as taboo in polite usage.
A word or design is immoral when it is in conflict with generally or traditionally held moral principles.”
While subparagraph 9(1)(j) applies to domestic marks, subparagraph 14(1)(c), prohibits the registration of existing marks that have been registered abroad. Subparagraph 14(1)(c) is triggered if the trademark “is not contrary to morality or public order…” in Canada. The Trademark Examination Manual remains silent on this provision.
In the United States, §1052(a) of the Lanham (Trademark) Act serves to prohibit the registration of trademarks that are “immoral, deceptive, or scandalous matter or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute…”. This provision provides for an absolute bar to registration, not adoption like in the Canadian laws. Like the Canadian Act, the proposed trademark will be opposed to if it is found to be offensive to the public. The US guideline for the public is “substantial composite of the general public”, the criteria for which was articulated by the United States Court of Appeals for the Federal Circuit in Ritchie v Simpson. In this case, a majority overturned the decision of the Board for refusing to grant standing to Ritchie to oppose the registration of the marks “O.J. Simpson”, and “The Juice” for a variety of goods.
In sum, the purpose of prohibiting trademark registration for marks that are perceived to be immoral or scandalous is similar across the various jurisdictions even though the approaches vary. In light of the recent refusal of the General Court to grant protection to the coat of arms, it will be interesting to see whether or not Couture Tech Limited will use it regardless, or attempt to register it elsewhere.
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