The pandemic has brought us a lot of things including new interesting word creations. Have you heard of “Blursday”, “Ronavation” or “Spendamic”? Nope? You can consult them on the “Urban Dictionary”. Or you can find out more about these and many more by reading the recent EUIPO decision “Matthias Zirnsack v EUIPO”, case R-260/2021-G. In this decision, the First Board of Appeal of EUIPO dealt with a trade mark application for the sign below which includes the word “COVIDIOT”. The committee assessed public order reasons and principles of morality leading to fundamental questions about the applicability and scope of the Charter of Fundamental Rights of the European Union and the European Convention on Human Rights. In the end, the Board noted a “degree of legal complexity of the caseand sent it back to the Grand Board for decision.
The context: refusal of the “COVIDIOT” EUTM application
A trademark application for the word/device “COVIDIOT” has been filed to cover goods in Classes 6 (metal clips), 9 (computer game software and mobile applications) and 28 (board games and toys). The request was rejected for all the goods concerned in accordance with Art. 7(1)(f) in conjunction with s. 7(2) EUTMR: Trademarks contrary to public order or morality are not registered. The plaintiff appealed the decision.
The question: freedom of expression in trademark law
The chamber applied Art. 7(1)(f) EUTMR and concluded that being referred to as a “covidiot” – whether in the course of a board game or not – refers to a person or group of persons in a way pejorative in relation to “COVID”. Additionally, the name of the virus could be trivialized when used as a game name, which would again be contrary to accepted moral principles. Having reached this conclusion, the Council then turned to the right to freedom of expression (as set out in Article 11 of the Charter of Fundamental Rights of the European Union and Article 10 of the European Convention on human rights). Do human rights play a role in trademark law? Yes, they do.
The Court of Justice of the European Union has recently answered some important questions concerning freedom of expression (in this case commercial) (see CJEU, decision of 27 February 2020, C-240/18 P, EU:C: 2020:118 – Constantin Film GmbH c. EUIPO, or better known as the “Fack Ju Göhte” case). In this decision, the Court of Justice of the European Union clarified that freedom of expression applies in the field of trademark law. The First Board of Appeal carefully examines the standards as set out in “Fack Ju Göhte”. But to what end does freedom of expression apply? Where is its limit? What are the principles of morality? Can a buzzword used by so many people violate the principles of morality? In all circumstances ? Ultimately, the Commission also wonders if the word “covidiot” may not become too popular, rendering the term devoid of distinctiveness.
INTA: Proposal for a new test to determine morality
In a amicus brief the INTA (International Trademark Association) has proposed a new criterion for determining the principles of morality within the meaning of art. 7(1)(f) EUTMR: this “ground for refusal/invalidity should only apply if the majority of the relevant public perceives the content of a mark to violate accepted principles of morality”.
Bottom line: the stakes are high
Reading this decision and the “Fack Ju Göhte” case, it is obvious that nothing is clear in the area of morality and trademarks. The CJEU indicates that a claim should only be dismissed on the basis of Art. 7(1)(f) EUTMR in exceptional cases. It remains to be seen whether the Grand Board will pick this up. On one aspect, the author agrees with INTA: a trademark application should not be lightly refused because of tentative concerns one may have with terms that do not fully comply with the standards. public. On the issue of trademark law and morality, you can read more about BrandWrites here.