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5 Jan

Offensive words as trademarks – what can be protected?

The Internet is indignant. The Polish Patent Office refused to grand protection to a trademark „pożar w burdelu / fire in the mess”. A word „burdel” has the two meanings. It can be understood as a „mess” or as a „brothel”. Both are offensive words. Theoretically, this kind of terms are not registered. The practice is sometimes different. I mean, how to interpret the concept of good manners? I found myself the trademarks, which have put me in a real amazement.

I warn you in advance!

In today’s text there will be many examples of offensive, distasteful, or simply controversial trademarks. Everything for educational purposes.

You can stop reading at any time.

Although I think that human curiosity will not allow you for it.

Fot. 1 - Offensive words as trademarks - a few words about good manners.

The legal bases

1. Paris Convention from 1883

Regulations concerning registration of the trademarks are almost worldwidely unified. The main act which regulates this is the Paris Convention for the Protection of Industrial Property of 1883. In today’s meaning, it has a record claiming that:

Trademarks covered by this Article may be neither denied registration nor invalidated except  […] when they are contrary to morality or public order and, in particular, of such a nature as to deceive the public.

2. EU Regulations

Council Regulation (EC) No 2007/2009 refers to Community trademarks. Here, registration takes place in the Office fot the Harmonization in the Internal Market in Alicante in Spain. Regulation says that:

The following shall not be registered: […] rade marks which are contrary to public policy or to accepted principles of morality.

3. Polish Regulations

Issues relating to registration of the trademarks in Poland are regulated by the Industrial Property Law act. In Article 131 section 1 point 2 we can read that:

Rights of protection shall not be granted for marks which are contrary to public policy or good manners.

Returning to a controversial issue of the trademark „fire in the mess”.

The examiner’s decision was based on specific regulations. You can see that all over the world they are similar. Certainly not an appropriate is complaint that the Polish Patent Office is a new office of censorship. Expert interpreted the word „burdel” as a offensive term.

If the applicant himself does not agree, he may apply for a retrial.

How public order and good manners should be understood?

Public order.

It is strictly legal concept. It includes all legal procedures needed for functioning of the democratic legal state. A trademark infringing the law will therefore be contrary to public policy. An example may be the marks:

– incitementing to commit offenses;

– relating to terrorist organizations.

Good manners.

They constitute a set of rules to which a particular community identifies and which they accept. These rules relate to the prevailing moral principles and customs. For infringing good manners should therefore be considered marks:

– containing offensive language,

– which are blasphemies,

– which are racist.

Examples of trademarks which were denied protection.

The controversial names from the marketing point of view sometimes make sense. Product with such a name can be easily distinguished among the other product on the market. It is said that „no matter how they say if only they said”. Often it just really pays off.

1 – State Emblem of the Soviet Union

1 - State Emblem of the Soviet Union

2 – Je sui Charlie

This slogan is an expression of solidarity with the victims of terrorist attacks in Paris. Many „creative entrepreneurs” were trying to register it as trademarks. The case proved to be so controversial that OHIM and the French patent office have presented a special statements. It clearly indicates that such trademarks will not be registered because they violate good manners.

2 - Je sui Charlie

3 – Pogoń Walcząca – trademark filed to determining inter alia accessories for sports fans.

Refusal to grant protection resulted from the fact that the sign contained the sign Anchor. It was a World War II emblem of the Polish Underground State and Armia Krajowa (Home Army, or AK). What is interesting, in 2012 an information appeared that this historic mark has been filed for protection by the Association of Warsaw Insurgents. However, I have not found a trace after this trademark in the Patent Office registers.

3 – Pogoń Walcząca

4 – Generation JP2

Another example, when someone wants to earn money on someone’s death. Here we have an attempt to monopolize a commonly used term. In Polish Patent Office were filed word trademarks „JPII” and „JP2 CUP” and few figurative trademarks. On the other hand, OHIM received an application for registration of the trademark „Johannes Paul II”.

4 – Generation JP2

5 – Drugs

I have found an attempts to register a word trademarks such as „OPIUM”, „CANNABIS”, „COCAINE”, „COCAINKA” or „LSD ENERGY”. All of them were denied protection because they clearly violate public order.

cocaineamphe

6 – Offensive words

There were attempts to register as a Community Trade Mark the terms „SCREW YOU” (inter alia for contraceptives), FUCKIN ISLAND (goods from Class 25) and FUCK OF THE YEAR (inter alia for services in the field of broadcasting).

FUCK

7 – Name of the terrorist organization

In 2004. OHIM received an application for a trademark ETA (inter alia to designate clothing and footwear).  This abbreviation refers to the terrorist organization that fought using armed methods for the creation of the Basque Country.

eta

8 – Trademarks indicating specific people

Within the European Union were attempts to register trademarks like:

  • BILLCLINTON;
  • Fidel Castro;
  • BIN LADIN.

9 – DO NOTHING BITCH (86731795)

This word mark has been filed for protection in the USA by not an ordinary person.

Ronda Rousey is an outstanding contestant of the mixed martial arts and the current UFC belt winner. She dominated her weight. On the horizon you can not see even a candidate which could be given a greater chance of victory. The US patent office held that a the term infringes good manners and refused to grant the right of protection.

Examples of trademarks which have been granted protection

If you’ve came to this point, than you probably understood the meaning of the issues described by me. I pointed out the legal basis, I explained what the public order and good manners are. All was completed with the interesting examples.

Now, I will mess with your mind by the examples of registered trademarks.

1 – LUFTWAFFE (CTM-005636162)

Community trade mark intended for marking jackets (historical reproductions). The Luftwaffe is the air force of the Third Reich, which was created by Hitler. The name is used to this day.

2 – Cannabis leaf (R-274023)

2 - Cannabis leaf

In Poland a few years ago was registered the following figurative trademark. The product is designed for the determination of cosmetics, medicinal products and lighters. It’s quite surprising that the trademark was granted protection. The Polish Patent Office refuses to grand registration for trademarks violating public order. Cannabis leaf, which is quite popular in pop culture, is commonly associated with drugs.

 

3 – Bullshit (CTM-000777847)

A trademark registered yet in 1998 by RED BULL. It was designed to determining, inter alia, alcoholic beverages and soft drinks.

4 – CRIMINAL (CTM-001676220)

Community word mark intended for marking inter alia, clothing.

5 – SHIT BOX (UK00002490027)

SHIT-BOX-UK00002490027

Guess for determining of what is intended that trademark?

Answer – portable cardboard toilets.

Brilliant!

shit-box1

6 – BILLY BASTARD (CTM-001925684)

Community word mark intended for marking inter alia, scientific instruments, teaching services or legal services.

7 – LEXY ROXX DER GEILSTE STERN AM PORNOHIMMEL (CTM-012979621)

Community trade mark intended for marking, inter alia, data carriers, clothing and entertainment clubs.

Registered trademark

 

8 – ON THE RIGHT END OF THE PENIS (IR- 835720)

     ON THE WRONG END OF THE PENIS (IR- 835722)

The two word marks intendent for designating printed materials.

9 – Shit Happens (CTM-011764016)

Community trade mark intended for marking, inter alia, … diapers.

10 – F**K PROJECT (CTM-011372414)

FK-PROJECT

Community trademark intended for marking, inter alia, clothing and leather.

 

11 – CITY B**CH (3722185)

CITY-B-CH

French trademark designed for the determination of climbing bags, clothing, leather and beach shoes.

12 – I (love) MY PENIS (CTM-009960841)

Community trademark designed to mark, inter alia, kitchen utensils, clothing and footwear.

penis

13 – I (love) VAGINA Company (DE-30303411)

A trademark registered in Germany for clothing.

vagina

14 – BORN TO FUCK (IT-0001195963)

A trademark registered in Italy for clothing.

born

15 – FUCK ME I’M FAMOUS (IR-904676)

The real a pearl at the end. The trademark filed in the name of David Guetta. Designed to determining, inter alia, partys and fun entertainment.

getta

To sum up

Don’t even ask me how some from the above trademarks were granted protection.

Apparently, the concept of good manners is understood more or less liberally. Assessing a trademark depends from many factors. It is affected by social, political and religious conditioning.

In Poland a trademark „fire in the mess” was considered for violating good manners. In Italy, a trademark „born to fuck” was registered without any objections.

It can not be hidden, however, that the disproportion is evident.

So maybe all is not lost and the trademark „fire in the mess” is worth fighting for?

Fot. 1 – Schub@ /CC BY-NC-SA
Other images – Official trademark databases

Mikołaj Lech

Do you need legal help? Contact with me.
+48 607 416 240
office@lech.bydgoszcz.pl

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