INTA Files Amicus Brief on Contrariety to Accepted Principles of Morality

INTA’s International Amicus Committee recently submitted an amicus brief before the Grand Board of Appeal of the European Union Intellectual Property Office (EUIPO) in Matthias Zirnsack v. EUIPO, Case R-260/2021-G, as to when and in what circumstances an EU Trade Mark should be refused registration on the ground that it is contrary to accepted principles of morality.

In 2020, Mr. Zirnsack sought to register a figurative trademark comprising the word COVIDIOT and the design of a jester cap, for goods in Classes 6, 9, and 28 (depicted below).

In the decision dated December 9, 2020, the EUIPO examiner refused the application as contrary to accepted principles of morality pursuant to Articles 7(1)(f) and 7(2) of the European Trade Mark Regulation (EUTMR). The examiner, having referred to various news articles and online sources, concluded that the term COVIDIOT would be understood as an insult directed to someone who was behaving irresponsibly or flouting government instructions in the face of the COVID-19 virus, and that this insult was likely to offend the sense of decency of those who think fairly and justly.

In so doing, the examiner also asserted (citing ¡Que buenu ye! Hijoputa, Case T-417/10) that the application of Article 7(1)(f) EUTMR was not restricted by the principle of freedom of expression recorded in Article 10 of the European Convention on Human Rights (ECHR) because the refusal of registration only meant that the sign was not granted protection under the Trade Mark Law and did not prohibit the use of that sign even in business.

The applicant appealed that decision to the First Board of Appeal. The First Board of Appeal issued an interim decision on December 16, 2021, referring the case to the Grand Board of Appeal given the legal complexity of the case and the important issues involved.

Previous cases considering the impact of Article 7(1)(f) have included the following:

• Case R/0495/2005-G, where the EUIPO refused registration of SCREW YOU as a mark having concluded that a substantial proportion of ordinary citizens in Britain and Ireland whose values and standards were representative of society as a whole, would find that term offensive and objectionable.
• Efag v. OHIM, T-52/13, where the General Court held that in conducting the relevant assessment the perception of minorities of either exceptionally puritan citizens or those citizens who find even gross obscenity acceptable should be disregarded.
• Fack Ju Göthe, C-240/18 P, in which the Court of Justice of the European Union (CJEU) annulled a Board of Appeal decision refusing the registration of FACK JU GÖHTE (an Anglo-German construction that involved an intentional misspelling of “Fuck you, Goethe” and had been used as the title of the 2013 German film). In so doing, the CJEU held that accepted principles of morality referred to “the fundamental moral values and standards to which a society adheres at a given time.”

In its amicus brief, filed June 3, 2022, INTA argues that whether a mark is contrary to accepted principles of morality is not an abstract legal assessment but involves a concrete factual assessment of how the mark is perceived by the relevant public. The brief contends that even once the views of minorities of the sort identified in Efag are disregarded, the views of the public may be split and the appropriate factual test should be whether a majority of the relevant public considers the mark to be immoral.

The brief also argues that it follows from the procedural rules that apply to the EUIPO (and, in particular, Article 95(1) of the EUTMR), that the burden of proof is on the EUIPO when there is a doubt as to the perception of a majority of the relevant public. Therefore, an examiner seeking to invoke Article 7(1)(f) must at least identify supportive factual circumstances that would justify this.

INTA also maintains that the CJEU’s decision in Fack Ju Göthe makes it clear, contrary to what was asserted by the examiner in this case, that freedom of expression and the provisions of the ECHR are relevant to how Article 7(1)(f) is interpreted, and limit its impact. According to the Association’s brief, the argument is wrong that refusal to register a mark under Article 7(1)(f) does not affect free speech, because the term can still be freely used. This is because Article 7(1)(f) potentially restricts the free speech of the applicant in choosing and obtaining the benefits of the registration of a mark. That freedom of expression should be considered in any assessment and lends support to INTA’s contention that Article 7(1)(f) should only prevent registration where it is clearly shown that at least a majority of the public would consider the mark to be contrary to principles of morality.

The brief is the second European amicus submission by INTA in 2022. Andreas Lubberger (Lubberger Lehment, Germany) led the drafting on the submission and was assisted by others on the International Amicus Committee, Europe Amicus Subcommittee, including Noemi Parrotta (Spheriens, Italy), Adam Lindquist Scoville (RE/MAX Holdings, Inc., USA), Marina Perraki (Tsibanoulis & Partners, Greece), David Stone (Allen & Overy LLP, United Kingdom), Matthew Harris (Waterfront, United Kingdom), David Parrish (CMS, United Kingdom), Christian Spintig (Heuking Kuhn Luer Wojtek, Germany), and Tara Kulbaba (Bukovnik & Kulbaba, Belgium).

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. 

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