Friday, 18 December 2015
Looking back over this GreeKat's shoulder… Part IV: "JE SUIS… un opportuniste" – the public order as a trade mark barrier
Twice within 2015, INPI, the French TM Office, was forced to tackle controversial trade mark registration cases. Both cases were linked to the aftermath of the terrorist attacks in Paris. In January, INPI rejected some 50 trade mark applications for “Je suis Charlie” that were filed within a few days after the attack at the Charlie Hebdo offices. The attempt to capitalize on the tragic events was shocking for many. Moreover, leaving aside moral aspects [can they be left aside?!], how would one enforce such a trade mark registration? This could have been a one-off attempt (despite those 50 applications…), but, only last month, just after Paris suffered from another terrorist attack, “Je suis Paris” and “Pray for Paris” marks were also filed with INPI.
From a trade mark perspective, the debate revolved around the appropriate ground for refusal of those filings. INPI, to this Kat’s initial surprise, rejected the “Je suis Charlie” applications as lacking distinctiveness. This is because INPI noted their immediate, widespread use, which rendered the mark generic. It is hard to argue with that, however, this Kat felt it was not the appropriate one (as bad as the registration attempt itself, one may wonder…).
As “Je suis Charlie” filings began to pop up in Benelux, the United States and Australia, OHIM issued a statement (also reported by IPKat here) explaining the grounds for refusal it would apply in case of CTM filings for the same phrase. OHIM put forward Article 7(1)(f) of the CTM Regulation, which precludes registration of a mark considered "contrary to public policy or to accepted principles of morality". As an additional basis, Artice 7(1)(b) of the CTM Regulation (lack of distinctive character) was also cited; a position closer to this Kat’s heart and (legal) mind.
The “Je suis Paris” and “Pray for Paris” filings have been less (just over 10, apparently), but INPI’s position is closer to how this Kat sees the matter. In a relevant statement, on 20 November 2015, INPI clarified that it would reject trade mark applications such as “Je suis Charlie”, “Pray for Paris” and variants thereof.
INPI’s revised approach is certainly not a neutral one; it carries a moral (and emotional) “charge”. Public order or morality arguments are always a dangerous terrain, and can indeed be abused. For example, it is reported that in 2003, INPI rejected the mark “Non à la Turquie en Europe” on public order grounds. The decision was upheld by the Cour d’Appel de Paris on the ground that it was “a slogan which, contrary to the objective of trademark law, does not aim at distinguishing the goods and services of a company from those of another in order to guarantee the source or origin to a customer, but rather to establish to the advantage of the association […] operating a purely political privilege of the use of this sign”. (CA Paris, 4e ch., sect. A – June 9, 2004). According to the Court, the association tried “to obtain, through a misuse of trademark law, an exclusive right on one of the terms of this debate”.
It is true that public order or morality arguments are usually the place of passionate disagreement between individuals, where a state verdict may be (or even is) hindering personal freedom. However, there are instances where public order or morality arguments mark the least common denominator of social communities.
And it seems that a strong rejection of the attempt to (mis)use trade mark law to capitalize on the particular set of events (to put it in a neutral, non-distinctive, manner) is a good fit for public order / morality grounds. In their domain, TM Offices are keepers of core values making up the foundations of their respective legal orders. The rejection of the “Je suis…” marks on public order / morality grounds should not be seen as an expression of some nebulous moral interventionism to a free market, but rather a reaction to safeguard values, in the absence of which a free market is hard to build and operate.