The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Parvis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Sunday, 18 January 2015

JE SUIS CHARLIE: Alicante acts on speculative trade mark applications

A subtle message -- but will
applicants get the hint?
"Probable" objection. On Friday the Alicante-based Office for Harmonisation in the Internal Market (OHIM) -- the body responsible for the processing of Community trade mark applications -- issued the following statement with regard to the controversial practice of making speculative trade mark applications for the rallying slogan "Je suis Charlie" [on which see earlier Katposts here and here; Class 46 here and the MARQUES LinkedIn Discussion Group here].
Januar 16, 2015 Über das HABM
OHIM - je suis Charlie
As a general rule, OHIM's policy is not to comment on any individual cases of trade mark or design applications either before examination or at any stage of the application and registration cycle. 
However, the IP issues surrounding the registration of the "Je suis Charlie" mark could be considered to be of overriding public interest.
Therefore, according to OHIM's Guidelines for Examination on Community Trade Marks (Part B, Section 4), an application which consisted of or which contained the phrase "Je suis Charlie" would probably be subject to an objection under Article 7 (1) (f) of the Community Trade Mark Regulation, due to the fact that the registration of such a trade mark could be considered "contrary to public policy or to accepted principles of morality" and also on the basis of Artice 7(1)(b) as being devoid of distinctive character.
This Kat is most impressed by the speed and decisiveness with which OHIM has acted. He is also personally pleased to see OHIM issue a message that is designed to dampen the enthusiasm of speculative trade mark applicants who have no connection with the slogan and its provenance and who only want to make a fast buck from capitalising on it.  He also observes the caution with which this notice is phrased.  It correctly does not state that applications cannot be made to register JE SUIS CHARLIE, either by itself or in combination with figurative features, or that such applications will automatically be rejected on the grounds of Articles 7(1)(b) or 7(1)(f).  That such objections will probably be raised is a warning to applicants that they must consider these absolute bars to registration very carefully if they seriously intend to sustain their applications.

Prior art ...?
Merpel is still concerned, though, about the efficacy of the grounds of objection.  She has struggled to come up with a form of words that will accurately describe why the registration and use of the words "je suis Charlie" should be "contrary to public policy or to accepted principles of morality" when the words, in her opinion at least, are quite innocuous in themselves and the objection to registration is really based on the identity of the applicant rather than the nature of the mark: if Charlie Hebdo had been the applicant, would any Article 7(1)(f) objection be raised?   As for the Article 7(1)(b) objection, this will presumably depend on the nature of the goods and services for which the application is made and on the perspective of the relevant consumer, and it is an objection that can be overcome by evidence of acquired distinctiveness through use under Article 7(3), so this is a ground on which an application by a determined applicant may be delayed but not ultimately denied.

Neither the IPKat nor Merpel are aware of any other trade mark granting authority having taken a similar initiative, whether within the European Union or beyond it.  Since OHIM is responsible only for Community trade marks, which are an autonomous system, its rulings and practices do not bind other offices that apply the same legal principles -- though they are often influential, especially where there is no other available guidance.  If readers learn of similar -- or indeed different -- policy statements from other offices, can they please let the Kats know so that they can spread the word.


Anonymous said...

In its press release also the French IPO (INPI) militates the viewpoint that 'je suis charlie' lacks of destincive character. The slogan belongs to the public and it cannot be monetized by one single competitor on the market (see:

Jeremy said...

Thanks, Anonymous @14:23. So it seems that the French INPI is relying solely on lack of distinctive character; I wonder if that is because INPI has the same concefrns about applying the equivalent grounds to Art.7(1)(f) of the CTM Regulation.

Anonymous said...

This may be a bit of mischief, an attempt to undermine trademarks. A provocative act intended to show trademarks in a poor light. T.C.

Anonymous said...

I note that the statement from OHIM only says "registration" whereas Merpel is wondering about "registration and use". Perhaps OHIM thinks people will be annoyed that a slogan that was free to use one day has been gobbled up by an unrelated chancer the next.

patently said...

Neither the IPKat nor Merpel are aware of any other trade mark granting authority having taken a similar initiative

I seem to recall the UKIPO (as it then wasn't) issuing advice in the late 90s that marks around the theme of TWO THOUSAND or MILLENNIUM were likely to face a s3 objection.

Jeremy said...

You're quite right, Patently -- but when the IPKat and Merpel wrote "similar", what they had in mind was "similar with regard to JE SUIS CHARLIE". They should have been more precise.

MILLENNIUM is now fine again. According to the UKIPO Manual:
"Both spellings of the word [ie one 'l' or two] were not considered distinctive for goods or services associated with the recent millennium such as printed matter, figurines, jewellery, celebratory versions
of consumer products including foodstuffs, souvenirs, organisation of parties or restaurant services. The word is now considered to have lost its descriptive appeal and relevance. Therefore the word can be accepted unless clearly the subject matter of the goods/services applied for e g MILLENIUM PROJECTS for printed matter (relating to building projects to mark the millennium)."

Jacobo Santamarta Barral said...

This case remins me of two previous ones, except those two had their applications withdrawn: the"ice bucket challenge" and "Boston strong".
Both sentences are too generic, having no distinctiveness at all and would have probably been rejected by the USPTO since their main objective was avoiding being used by others.

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