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Monday, 16 July 2007

No F in Justice, but one F in Fulham, rules TM Registry

The IPKat has just been perusing a curious little case, the unsuccessful application of one Mr Kevin Scranage to register the words THERE AIN’T NO F IN JUSTICE as a UK trade mark for Tee shirts, sweat shirts, baseball caps (Class 25). The Kat assumed that this was going to be one of those rather tricky "immoral mark" cases, on the basis that the slogan, read out aloud and at speed, would appear to the listener as "There ain't no f***ing justice". but no, the Registry pulled a surprise and refused registration on the ground that the slogan was not distinctive, being a sign which was likely to be taken by the public as a personal statement by the wearer rather than acting as an indicator of trade origin. Said the hearing officer:

"16. Firstly, taking the slogan itself, it appears to be a statement about the justice system, arguing that there is no justice. The double entendre of ‘F IN’ in place of the somewhat allusively vulgar expression ‘effing’ is not particularly new. By way of example, from my own knowledge as a follower of football I became familiar, many years ago, with the fans’ chant ‘There’s only one F in Fulham’. I do not think there is, therefore, anything about the use of ‘F IN’ in this way which, of itself, is capable of sending the consumer the message that the mark is anything more than a moral statement. The message will be self evident to the average consumer who, as I
indicated earlier, is likely to see it as a statement criticising the justice system.

17. Secondly, I must consider normal and fair use of the mark applied for on the goods at issue. If used on a label on the goods the reaction to the sign is, in my view, likely to be ambiguous since labels are often used to indicate trade origin. However, for the goods covered by the present application I consider normal and fair use would include placing the sign on the exterior of the goods. I consider it is a matter of public knowledge that this is standard practice in the trade. Some tee-shirts, sweat shirts and baseball caps carry the ‘designer’ name prominently. It is easy to recognise brands like Nike or Reebok as indicators of trade origin, even when used in this way. However, slogans used as trade marks are not always easy to identify as such when used as what appears to be decoration. This is because for many years the public has chosen to put personal statements on their tee-shirts, sweat shirts and baseball caps. ‘Ban the Bomb’, ‘Kiss me Quick’, ‘Stop the Iraq War’ have been seen across teeshirts, sweat shirts and baseball caps on any high street and, in my view, are unlikely to be seen as indicators of trade origin by the average consumer. I consider the mark at issue to fall into the same category. The public are likely to see the slogan, when used in this way, as a statement by the wearer about the justice system, unless educated to the idea that it is an indicator of trade origin through use. Therefore, with reference to the guidance above, I do not consider it ‘equally or more plausible’ that this slogan is likely to be seen as a ‘fancy trade mark’.

18. I do not consider that other forms of clothing such as suits, dresses, trousers, pullovers and most headgear are usually decorated in the same way. Consequently, the public has not been educated to the probability that moral statements appearing on the goods are likely to be just decoration. Nor are they usually used as message carriers by the public. It is for this reason that the other items of clothing have been allowed to proceed to publication in the other divisional part of the original application.

19. Use in advertising is also likely to be seen as a moral statement on the goods, intending to attract those who wish to associate with the sentiments expressed. Therefore, the statement is, in my view, unlikely to be seen as an indicator of trade origin by the average consumer.

20. In my view, the mark applied for will not be seen as a trade mark without first educating the public that it is one. I therefore conclude that the mark applied for is devoid of any distinctive character and is thus excluded from acceptance, prima facie, under Section 3(1)(b) of the Act".
The IPKat continues to marvel at how much of the human condition one can glean from the words of hearing officers' decisions - not just in the UK but around the world. If there any broader and more objective historical account of human activities, attitudes and behaviour than that upon which they base their decisions? Merpel says, presumably "I'm lovin' it" is also a statement of the consumer's opinion.

One F in Fulham here
I'm lovin' it here and, for those who aren't lovin' it, here

1 comment:

Anonymous said...

You may note that the mark was registered for some goods in class 25 and some services.

Mr Scranage's previous application.... FOOK

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