Out-Law News 1 min. read

Profane trade mark rejected, except for sex shop use

A businessman has failed to win the right to register the term 'screw you' as a wide-ranging European trade mark because it is offensive. It can be used but only for goods sold in sex shops, the European trade mark authority has ruled.

Jeberaj Kenneth, trading as Screw You, applied to register 'screw you' as a trade mark in Europe for a wide variety of goods and was denied by the Office for Harmonisation in the Internal Market (OHIM), the body which is responsible for European community trade marks.

Kenneth appealed to OHIM's ultimate authority, the Grand Board of Appeal, arguing that the initial decision had painted the phrase as being more offensive than it actually was.

Kenneth sought to protect the phrase as it applied to products as diverse as sunglasses and sex toys, spectacle cases and breast pumps as well as alcoholic beverages, condoms and sports equipment.

The original application had been turned down on the basis that the phrase did not comply with an article of the Community Trade Mark Regulation which bans marks which are contrary to "accepted principles of morality". The examiner in question equated the word 'screw' to the word 'fuck' and said that the term was insulting.

In his appeal, Kenneth argued that the two words were not equally offensive, and that the phrase 'screw you' was in common, acceptable use in English, as demonstrated by its use in Eastenders and The Simpsons.

The Board accepted that the two terms were not equally offensive, and that public swearing was more acceptable now than it had been 30 years ago, but that the liberties extended to artistic expression were not necessarily to be extended to commercial expression. The phrase 'screw you', the Board concluded, was definitely a profanity.

The Board ruled, however, that there were some contexts in which the profanity would not present a problem. The trade mark would be permitted in relation to the goods proposed by Kenneth that would be sold in sex shops, such as sex toys, artificial breasts and breast pumps.

The Board also said that the trade mark could provide protection for condoms even outside of sex shops, since any purchaser would be unlikely to be offended by the term. The Board rejected protection in relation to alcoholic beverages, which had been previously granted in the UK.

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