27 March 2024
Brands Update - March 2024 – 4 of 5 Insights
Trade marks are not registrable in the UK if they are contrary to public policy or accepted principles of morality. The same is true for EUTMs and national EU member state marks.
It is easy for trade marks to fall foul of these provisions especially when applied for in the EU (where marks might have different connotations in local languages). While the provisions only restrict the registration, not use, of marks, brand owners will want to ensure that their brands are registrable and do not carry any negative connotations in local languages.
Here, we consider the key issues brand owners and their marketing teams should keep in mind when deciding on - and applying to register - their marks.
The legislation gives no guidance on the meaning of contrary to public policy or accepted principles of morality or on the standard to be applied. This must be gleaned from the case law and relevant guidance. The following are the key points:
Relevant factors include legislation, administrative practices, public opinion and, where appropriate, the way in which the relevant public has reacted in the past to the mark or similar marks.
Examples of marks held to be contrary to accepted principles of morality include FUCK of the YEAR, JESUS and BIN LADIN. Conversely, marks held not to breach this provision include FCUK (the well-known fashion brand) and Fack Ju Göhte (Fuck You, Jack – a comedy film), both of which had been widely used apparently without causing widespread offence.
Examples of marks held to be contrary to public policy include various marks containing the word 'cannabis', although there is no absolute prohibition on the registration of such marks. Indeed, there are currently over one hundred UK trade mark registrations for or containing this word including LIFE CANNABIS, CATALEYA CANNABIS KOSMETIK, Cannabis Clinic, COCAINE COWBOYS and NO COCAINE HERE.
Conversely, an EUTM application for CANNABIS STORE AMSTERDAM for confectionary and soft drinks was refused due to the reference to Amsterdam and the presence of a cannabis leaf in the mark which indicated higher levels of certain psychoactive ingredients. The fact that, in many EU member states, certain products derived from cannabis are regarded as illegal narcotics was also relevant.
27 March 2024
27 March 2024
27 March 2024
27 March 2024
by Louise Popple and Anneka Dalton