panel session ix: funny, bad taste or out of order ... · article 44.1 of prc trademark law if a...

Panel Session IX: Funny, bad taste or out of order? Morality and public order

in trademarks

Monday, October 16 2017

14:00-15:30

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• Shane Smyth, FRKelly (Moderator)

• Simon Tam, "The Slants"

• Mark Metzeling, IP Gateway Patent & Trade Mark

Attorneys Pty Ltd

• Qiang Ma, Jun He Law Offices

• Luis Berenguer, EUIPO

Shane Smyth

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FRKelly, Moderator

Simon Tam

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“The Slants”

It Began With a Film

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I Fought the Law

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…and the Law Won

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“Laudable but not influential”

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A New Slant on Appealing

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“Too Asian”

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HOW RACIST IS “THE SLANTS?”

Asian Stuff

Dis

par

agem

ent

Final Boss Stage

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A Supreme Showdown

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Breaking it Down

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A New Map in Trademark Law

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The End

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Mark Metzeling

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IP Gateway Patent & Trade Mark Attorneys

Pty Ltd

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Australia

Article 6quinquies(B)(iii) of the Paris Convention is implemented in Australian trade mark law by section 42(a) of the Trade Marks Act 1995 (Cth):

A trade mark application must be rejected if “the trade mark contains or consists of scandalous matter”

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What is scandalous matter?• Decided on a case by case basis.

• Takes into account the sensibilities of different sections of the community to decide if the sign is one that would be considered offensive by many people.

• Registrar takes into account the:

i. Sign used as a trade mark;

ii. Intended market for the subject goods/services; and

iii. Level of acceptance in the general population.

• Scandalous signs are generally classified as:

i. Obscene/course language

ii. Profanity

iii. Sign that condones violence, racism and/or terrorism

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Leading cases on Scandalous matter

• La Marquise Footwear, Inc’s Application (1947) 64 RPC 27 at 30

• Hallelujah Trade Mark [1976] RPC 605 at 607

• Trade Mark Application No. 106321 by Eric Granville Mercy (1955) 25 AOJP 938 (‘Mecca’)

• In the Matter of Ellis & Co.’s Trade Marks (1904) 21 ROC 617 (‘Quaker’)

• Re Hanlon [2011] ATMO 45 at [15] – “must cause a significant degree of disgrace, shock or outrage, and the Registrar must be satisfied that the trade mark will do so rather than have a tendency to do so”

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Objective v SubjectiveJustice Evershed stated in La Marquise Footwear, Inc’s

Application (1947) 64 RPC 27 at 30:

… it is the duty of the Registrar … to consider not merely the general taste of the time, but also the susceptibilities of persons, by no means few in number who still may be regarded as old fashioned and, if he is of the opinion that the feelings or susceptibilities of such people will be offended, he will properly consider refusal of the registration.

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Objective v SubjectiveMr Myall, the deciding officer in a UK case, Hallelujah Trade mark [1976] RPC 605 (‘Hallelujah Case’) at 607 stated:

… [whether a sign is scandalous must] be considered by the generally accepted standards of today and not by those of 1938…

… the Registrar … must not remain isolated from the day-to-day world, frozen in an outmoded set of moral principles, he must equally not presume to set the standard. He must certainly not act as a censor or arbiter of morals, nor yet as a trendsetter. He must not lag so far behind the climate of the time that he appears to be out of touch with reality, but he must at the same time not be so insensitive to public opinion that he accepts for registration a mark which many people would consider offensive.

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Factors taken into account by the Registrar

i. How will the ordinary person will react to the trade mark, irrespective of religion, race, or persuasion: In the Matter of Ellis & Co.’s Trade Marks (1904) 21 ROC 617 (‘Quaker’)

ii. Only a portion of Australians need to be offended: Trade Mark Application No. 106321 by Eric Granville Mercy (1955) 25 AOJP 938 (‘Mecca’)

iii. The scandalous element must be obvious and up front.

iv. In what context the is sign used (or what is the ultimate market for the good/service)?

v. Is the sign obscene, profane, a sign that condones violence, racism and/or terrorism; or it is just in bad taste?

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Obscene signs• Whether a word considered by many as offensive language is acceptable as a trade mark will

depend to some degree on the amount of invention and imagination used to present it:i. Phonetic equivalents (e.g. PHAR QUE, FAR KEW, DR PHUQ) are generally acceptable, but overt phonetic equivalents

(e.g. FUK M, FUCT) are not.

ii. Calculated concealment of the words, a clever disguising within a device element, or clever advertising campaigns may create an acceptable trade mark.

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Profanity

• The offending words/images need to be obvious within the trade mark.

• Needs more than a vague suggestion that something might be profane.

E.g. in 1970 SAINT BENEDICT was refused in relation to alcohol

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• reference needs to be obvious E.g. SNUFF for movie studio and/or movie making services

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Words or images appearing to condone violence, racism and/or terrorism

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Words or images appearing to condone violence, racism and/or terrorism

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Bad Taste

A finding that the trade mark is in bad taste is insufficient to refuse registration

POOR TASTE ≠ SCANDALOUS

Examples:

FUCKERWARE for Direct marketing and selling of adult products and sex toys via parties

for Clothing

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Racial vilification, religious intolerance and personal abuse

• trade marks with elements of personal abuse (eg F**K YOU, <politician's name>);

• trade marks incorporating racial or ethnic abuse (eg I HATE <country or ethnic group name>);

• trade marks incorporating abuse of a national flag (eg an image of the Australian flag on fire); and

• trade marks incorporating elements of religious intolerance/abuse (eg DEATH TO ALL <name of religion>S).

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Images of personsTypically only be raised where:

i. the trade mark itself could be considered scandalising (e.g. a grossly distorted caricature of a major political leader); or

ii. the trade mark contains or consists of an image of a well known person accompanied by a profane suggestion; or

iii. the relationship between the goods and services and a person’s image in the trademark would clearly scandalise (e.g. an image of the Pope in relation to “contraceptives”).

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The Slants DecisionServices in Class 41: Entertainment in the nature of live performances by a musical band.i. Reference to something leaning or sloping, just off the middle. It could be a

reference to the type of music they play being just off mainstream.

ii. It is possible that the older Asian population living in Australia may be offended, though it’s unlikely in today’s society that it would be considered a racial slur.

iii. It is not obvious that it is a derogatory reference to individuals of Asian origin. It is noted that both SLANT (to two different entities) and SLANTED are registered trade marks on the Australian Trade Marks Register.

iv. As the name of a band, the public is more accepting of what would traditionally have been viewed as a racial slur.

v. It is possible that the sign could condone racism, though it is more likely that at worst, it would be deemed just bad taste.

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Dr. Qiang MA

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Jun He Law Offices

Part I: China Laws and Regulations

Part II: Case Study

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Article 10.1. (8) of PRC Trademark Law

any mark which is likely to materially and adversely affect

the public interests and public order shall not be registered

and its use is liable to be prevented.

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TRADEMARK EXAMINATION CRITERIA promulgated and applied by CTMO and TRAB

The following marks are not eligible for registration and its use is prohibited by virtue of


1.Those marks contrary to accepted principles of morality

( means “kill them”)

2.Those marks are likely to materially and adversely affect the public interests and public

order in terms of politics

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order in terms of religion


order in terms of economics

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order in terms of culture

mark which is identical with or similar to the name of individuals who are well known, such

as celebrities and famous culture and political figures

(Confucius)

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Article 10.2 of PRC Trademark Law

Geographic name well known to the Chinese public shall neither be used nor registered as

trademark, except that the mark has such different meaning that it would not be considered

by the consuming public to denote the geographic origin

(“加州” means “California”) – refused for registration

(Olympia) – refused for registration

– refused for registration

– approved due to different meaning from “London”

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Article 44.1 of PRC Trademark Law

If a registered trademark for which registration was obtained by deceptive or other

improper means, it may be invalidated by the Trademark Office.

Article 44.1 applies where (i) the applicant of trademark conceals the facts or fabricates the

stories or submits the forged documents and the fabricated evidences when applying to

register the mark, (ii) the registration of mark will be detrimental to the trademark

registration order, impair the public interest, or the applicant seeks to gain improper

benefit or misappropriate public resources by filing the trademark application.

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The following acts shall be deemed as “Bad Faith Filing” and shall be declared invalid

under Article 44.1 of PRC Trademark Law:

1) Filing applications for a number of marks identical to or confusingly similar to the marks

with high distinctiveness and in prior use by others;

2) Filing applications for a number of marks identical to or confusingly similar to the

tradenames, corporate names, unregistered marks with prior-use-based reputation;

3) Filing applications for a number of marks, without intention to put marks into genuine

use

4) Where applicant neither uses marks in commerce, nor makes any preparation for actual

use of marks, in the meantime, he actively and publicly offers to sell marks, or demand with

menace prior mark user to pay a high trademark transfer fee, license royalty or

indemnification for trademark infringement, or coerce legitimate mark owner into co-

operating with him

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Three-Dimensional Trademark

1.DISTINCTIVENESS :

1) The mark is not a “common” basic shape or design of products, the unusual design is capable of creating a commercial

impression distinguishable from other products and thus could function as a source indicator;

2) The mark has in fact acquired a distinctive character as a result of the use made of it. The mark has established a fixed

association with the applicant in the mind of the Chinese relevant public. It may by reason of its shape alone, serve to

identify applicant’s goods and distinguish them from like goods of others.

2. NON-FUNCTIONALITY of Mark:

1) The mark shall not be considered to be the shape which results from the nature of the goods themselves: the feature of

the mark is not essential or inherent to the generic function or the purpose of the products;

2) The mark shall not be considered to be the shape of goods which is necessary to obtain a technical result: the essential

characteristics of the mark are not dictated by technical solutions or functional characteristics of product;

3) The mark shall not be considered to be the shape which gives substantial value to the goods: the mark is not the shape of

products having only aesthetic or ornamental value.

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Part II: Case Study - Precedential

mark which is identical with or similar to the name of individuals who are well

known, such as celebrities and famous culture and political figures

—— Article 10.1. (8) of PRC Trademark Law

1. Trademark Refusal Appeal case regarding “克林顿” (“Bill Clinton” in Chinese)

—— Beijing No. 1 Intermediate Court ((2009)一中行初字第294号)

2. Trademark Invalidation case regarding “MICHAEL JACKSON”

(Name of deceased celebrity)

—— Beijing IP Court (2015)京知行初字第4262号)

3. Trademark Invalidation case regarding “李小龙” (“Bruce Lee” in Chinese)

—— Beijing Higher Court

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Geographic name well known to the Chinese public shall neither be used

nor registered as trademark, except that the mark has such different

meaning that it would not be considered by the consuming public to

denote the geographic origin

—— Article 10.2 of PRC Trademark Law

Trademark Refusal Appeal case regarding “Shanghai

International Film Festival”

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Three-Dimensional Trademark

Trademark Refusal Appeal case

regarding “FERRERO”


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Luis Berenguer

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EUIPO

I. PRACTICE OF THE OFFICE

a) Public Policy – concept and categories

b) Distinction between public policy and principles of morality

II. RECENT CASE LAW

Outline

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PUBLIC POLICY AND MORALITY – ARTICLE 7 (1) (F) -GUIDELINES

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CONCEPT OF ‘PUBLIC POLICY’

Objection based on objective criteria, whereas an objection based

on ‘principles of morality’ concerns subjective values;

It refers to the body of EU law applicable in a certain area.

PUBLIC POLICY AND MORALITY – CONCEPT AND CATEGORIES

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Concept of ‘public policy’

It also refers to the state of law as defined by the Treaties and secondary

EU legislation, which reflect a common understanding on certain basic

principles and values, such as human rights.

National legislation may be taken into account.

Not because of its normative value,

but as evidence of facts that make it possible to assess the

perception of the relevant public in those Member States.


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Unlike ‘public policy’, an objection based on ‘principles of morality’ concerns

subjective values.

Guidelines: Art. 7(1)(f) excludes registration as EUTM of any blasphemous, racist

or discriminatory words or phrases,

but only if that meaning is clearly conveyed by the EUTMA in an

unambiguous manner.

Standard to be applied: reasonable consumer with average sensibility and

tolerance thresholds, i.e.

Neither those who never feel offended

Nor those who are very easily offended (T-417/10, Hijoputa, p. 21).


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T-410/10 T-232/10

DISTINCTIONS BETWEEN PRINCIPLES OF MORALITY AND PUBLIC POLICY

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manifestly profane language or depict gross obscenity(14/11/2013, T-

52/13,Ficken, EU:2013:596)

Morality

consist of obviously malevolent racial and cultural slurs (05/10/2011, T-

526/09, Paki, EU:T:2011:564)

Morality & public policy

or appear to glorify terrorism or offend the victims of terrorism (BoA

decision R176/2004-2, Bin Ladin).

Public policy

SIGN CANNOT BE REGISTERED IF THEY CONTAIN:

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Banal reference to an important political figure

ATATURK

BoA decision R2613/2011-2: offensive for the sensitivity of the average European consumer

of Turkish origin.

Cl. 3: cleaning, polishing, abrasive preparations; soaps; perfumery, hair lotions, dentifrices…

Cl. 5, 25, 29, 30

EUIPO’S PRACTICE

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Terrorism

BIN LADIN (BoA decision R176/2004-2)

Terrorist crimes:

absolutely contrary to the ethical and moral principles recognised not only in all

EU Member States but in all civilised nations

one of the most serious threats to the fundamental interests of society and the

maintenance of social peace and order

EUIPO’S PRACTICE

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HUMAN TRAGEDY (IRAQ WAR)

EUIPO’S PRACTICE

EUTMA No 5 519 814

Baghdad Country Club ‘It takes real balls to play here’

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EUTMA No 4 631 966

(‘Not made in China’)

EUIPO’S PRACTICESINO-EUROPEAN RELATIONS

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GLORIFICATION OF CRIME

EUIPO’S PRACTICE

EUTMA No 13 052 105

(‘Labellamafia’)

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‘THE SLANTS’ RULING – FACTS:

an application for the trade mark “The Slants” was filed in the USPTO by an Asian-

American rock band;

The term is seen as a slur and the band was seeking to “reclaim” the derogatory term;

Registration of the mark was refused based on disparagement clause, contained in 15

U.S.C. § 1052(a) of the Lanham Act which prohibits any trade mark that could "disparage ...

or bring ... into contemp[t] or disrepute" any "persons, living or dead“;

The Slants challenged that refusal as a violation of free speech rights under the U.S.

Constitution’s First Amendment which reached the US Supreme Court.

OTHER JURISDICTIONS

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‘The Slants’ US ruling: - law:

Accepted principles of morality vs free speech?

U.S. Supreme Court threw out a federal prohibition on disparaging trademarks

as a constitutional violation of the Free Speech Clause of the First Amendment.

OTHER JURISDICTIONS

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Thanks for your attention!

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panel session ix: funny, bad taste or out of order ... · article 44.1 of prc trademark law if a...

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