General Court: ‘Russian Warship, GO F**K YOURSELF’ non-distinctive

Slogans are a popular marketing tool. They transport messages clearly and succinctly and can be memorized easily. The same is true for political slogans. In a recent judgment, the General Court found that a political slogan closely related to the Russian invasion in Ukraine lacked distinctiveness.

Background

On 16 March 2022, the predecessor-in-title to the Administration of the State Border Guard Service of Ukraine applied for registration of the following figurative EU trade mark for goods and services in classes 9, 14, 16, 18, 25, 28 and 41:

The phrase subject to the application was the final communication of a Ukrainian border guard serviceman to a Russian missile cruiser on 24 February 2022, the first day of the Russian invasion in Ukraine (for the full background, see here).

The examiner of the European Union Intellectual Property Office (‘EUIPO’) rejected the application because it was contrary to accepted principles of morality (Art. 7(1)(f) EUTMR).

The applicant appealed to the EUIPO’s Board of Appeal (‘BoA’). The BoA decided to refuse the sign because it lacked distinctiveness (Art. 7(1)(b) EUTMR).

The applicant filed an appeal with the General Court.

The General Court's Decision

The General Court dismissed the appeal (T-82/24).

1. Lack of distinctiveness

The judges recalled that a trade mark possesses distinctiveness if it serves to identify the goods or services as originating from a particular undertaking and thus to distinguish the goods and services from those of other undertakings. This assessment must be carried out by reference to the goods and services in question and the perception of the relevant public of the sign applied for.

The Court held that the goods and services at issue were largely everyday consumer goods and services, which mainly target the general public. Some also target professionals. The relevant public’s level of attention was considered to range from low to high.

The meaning of the Russian phrase in the mark would be understood by the Russian-speaking part of the public. The English phrase was composed of basic English words and would be understood by those with a command of basic English as well as the public in Ireland and Malta.

The judges confirmed the BoA’s finding that the trade mark in question was a ‘political slogan’, namely

an expression, used in a political or social context, repetitive of an idea or purpose, with the goal of persuading the public or a target group within it.

The phrase applied for was widely used immediately after it became public. It became a symbol of Ukraine’s fight against the Russian invasion, was used repeatedly in political contexts and with the aim of expressing and promoting support to Ukraine.

The judges acknowledged that political slogans are not automatically devoid of distinctive character. However, the slogan in question was deemed to be so closely connected to the historical event in the context of which it had been uttered that consumers would not perceive it as an indication of origin.

This was also true on the application date, which was less than a month after the statement was made. The slogan was disseminated quickly and widely by the media.

The perception of the sign as a political slogan rendered it non-distinctive for all goods and services in the application as it would only be understood as a political message promoting the support for Ukraine.

The Court rejected the applicant’s argument that the mark would be associated directly and unambiguously with the Ukrainian border guard who said the phrase. This would at most be relevant in the assessment of acquired distinctiveness (Art. 7(3) EUTMR), on which the applicant did not rely.

2. Equal treatment

The applicant argued that similar political slogans have been registered by the EUIPO (they are mentioned in neither the General Court’s nor the BoA’s decision).

This argument prompted the Court to refer to consistent case law on this issue. While the EUIPO must consider previous registrations, it is not bound by them and an applicant cannot invoke potentially unlawful registrations to its advantage. This applies even where an identical trade mark for identical goods or services has been accepted previously by the EUIPO.

3. Decision on Art. 7(1)(f) EUTMR

The applicant also argued that it was entitled to a decision on Art. 7(1)(f) EUTMR. Since the BoA did not do so, it infringed Art. 71(1) EUTMR.

The Court responded that the BoA may exercise any power within the competence of the EUIPO. This means that the Board may carry out a new, full examination of the merits of the application in terms of law and fact. It may reopen the examination of the application for absolute grounds for refusal, without being limited by the examiner’s reasoning and without having to provide specific reasons for its decision to do so.

Since the applicant was informed of the BoA’s opinion that the sign lacked distinctiveness and could submit comments prior to the decision, the applicant’s rights had not been infringed.

Comment

The General Court’s reasoning with respect to the perception of the trade mark merits a closer look. The sign did not consist merely of an English phrase but also contained its Russian translation in Cyrillic. It is true that the English-speaking public understands the English phrase and the Russian-speaking public the Russian phrase. The decisive question is: Is there a relevant part of the public that speaks both languages to a sufficient degree to understand both phrases or who perceives one as the translation of the other (without necessarily understanding it)? As the General Court frequently holds: Knowledge of a (foreign) language may not be presumed.

Moreover, the letters ‘UC’ have been replaced with two asterisks in the English word ‘F**K’ and the same goes for the Russian version. Do these partially redacted words really form a part of the basic English vocabulary?

Be that as it may, political slogans (like any other slogans) are usually considered non-distinctive in the EU, unless they contain a distinctive word or figurative element. Make America Great Again, America First and BLACK LIVES MATTER have all been rejected or objected to by the EUIPO.