Out-Law / Your Daily Need-To-Know

US ruling opens door to 'immoral or scandalous' trade marks

Out-Law News | 26 Jun 2019 | 9:01 am | 1 min. read

A new ruling has given businesses greater scope to register 'immoral or scandalous' brands as trade marks in the US.

The US Supreme Court held on Monday that a section of US trade mark law that prohibits the registration of marks that consist of or comprise immoral or scandalous matter should be invalidated on the basis that it too broadly cut across free speech rights written into the US Constitution.

The ruling came in a case fought by artist and entrepreneur Erik Brunetti, founder of the 'FUCT' clothing brand. According to the judgment, Brunetti claimed the correct pronunciation of the word involved emphasising each letter individually, but the Supreme Court highlighted how the word might be read differently.

The 'FUCT' mark was previously deemed vulgar and highly offensive to the general public by experts in intellectual property law who assessed and rejected Brunetti's bid to have the brand name registered.

Trade mark law expert Florian Traub of Pinsent Masons, the law firm behind Out-Law, said that the case would have been assessed differently had it been brought before a court in the EU.

"EU trade mark law excludes the registration of a mark that consists of blasphemous, racist, discriminatory or insulting words or phrases, but only if that meaning is clearly conveyed by the mark applied for in an unambiguous manner," Traub said. "The EU Intellectual Property Office approaches the test less from the perspective of freedom of speech, in contrast to the position in the US, but more from how a reasonable consumer with average sensitivity and tolerance thresholds would perceive the mark."

Traub said there are numerous examples of similar terms to 'FUCT' that were refused registration in the EU. Very few of the cases ever reach the courts, he said.

However, Traub highlighted an April 2018 ruling by the EU's General Court which found that the mark ‘La Mafia se sienta a le mesa’ was not registerable on public policy grounds.

"The ruling in that case followed an objection by the Italian government on the basis that the mark was contrary to public policy and accepted principles of morality – ‘Mafia’ referring to a criminal organisation – and that use of the mark would evoke deeply negative emotions, impair the positive image of Italian cuisine and trivialise criminal organisation," Traub said.