'MAGIC PUSSY'? Not contrary to “accepted principles of morality”, says EUIPO BoA

Rocket Bean's MAGIC PUSSY

A few weeks ago, the 5th Board of Appeal (BoA) of the European Union Intellectual Property Office (EUIPO) issued a decision (R1009/2024-5) that might be well-worth a read even just for entertainment purposes.

On a more serious note, however, the decision also stands out for its legal relevance given that it adopts a reasonable (and refreshing) approach to the construction of the absolute ground for refusal/invalidity concerning “trade marks which are contrary to public policy or to accepted principles of morality” (Article 7(1)(f) EUTMR). As readers will recall, this absolute ground has been at the centre of several high-profile decisions lately, including the Grand Board holdings in COVIDIOT [IPKAT here] and MARICON PERDIDO [IPKat here].

The BoA reversed the earlier decision of the EUIPO Examination Division and concluded that, contrary to what the Examiner had held, the sign ‘MAGIC PUSSY’ would not fall under the ‘accepted principles of morality’ axe.

Let’s see what happened and what, according to the BoA, consumers think about when confronted with the word ‘PUSSY’ …

Background

In 2023, Rocket Bean Cafe applied to register the word mark ‘MAGIC PUSSY’ as an EU trade mark (EUTM) for virtual and actual coffee and coffee-related goods in classes 9 and 30 of the Nice Classification.

The Examiner informed the applicant that the sign would be contrary to Article 7(1)(f) because the English speaking public would immediately perceive the sign applied for to mean “the magical female external genitalia”.

Rocket Bean Cafe maintained that:

• as it is the case for many other slang words (including ‘balls’, which might also refer to ‘testicles’) the first meaning of ‘pussy’ is not that of “female external genitalia”, but rather ‘cat, kitty’;
• on the EUIPO register there is plenty of PUSSY-related registered EUTMs, including ‘PUSSY DELUXE’, ‘PEACE & PUSSY’, and ‘PUSSY LOVERS’ [Merpel notes that there must be clearly several cat-loving businesses in Europe];
• the goods for which registration is sought do not relate to any sexual content or context [but then, if that was the case instead, ‘MAGIC PUSSY’ would be descriptive / lack distinctiveness and be therefore unregistrable?];
• the use of the sign shows how the intended meaning is perfectly innocent: it is indeed about a magical kitten (see above, on the right hand side);
• prohibiting the registration of ‘MAGIC PUSSY’ would be an undue compression of the applicant’s freedom of expression, also guaranteed under Article 11 of the EU Charter.

The Examiner remained unimpressed and eventually rejected the application, finding that the trade mark applied for would be “vulgar, shocking, rude and/or offensive”.

Rocket Bean Cafe appealed.

The BoA decision

The BoA began by recalling the rationale and method of assessment of the absolute ground in Article 7(1)(f), as also comprehensively (though not necessarily also exhaustively) articulated by the Court of Justice of the European Union in its FACK JU GÖHTE judgment [IPKat here].

What is key is that all relevant circumstances must be considered in order to determine consumer perception – meaning: the perception of a reasonable person with an average threshold of sensitivity and tolerance – and, with that, whether a trade mark is to be considered “deeply offensive” and, therefore, contrary to accepted principles of morality. Note: “deeply offensive” is not the same as irreverent or distasteful.

Following on this, the BoA noted that – according to the English-Latvian dictionary ‘Letonika’ – the word ‘pussy’, if intended as referring to female genitalia and not to kittens, is a “vulgar slang term”. However, noted the BoA, “not every vulgar word is shocking and offensive and must be refused.”

While part of the public will immediately draw an association between “MAGIC PUSSY” and the content of a woman’s underwear, that will not be the case for everyone: “the sign 'MAGIC PUSSY' will at first sight be perceived by part the relevant public as a reference to a magical pussycat or kitten, like in a fairy tale or fantasy story”.

A magic pussy

Furthermore, referring to the existing ‘PUSSY’-related EUTMs which the EUIPO has registered, the BoA noted that “the contested decision has no appropriate reasoning why the public’s perception of the word 'PUSSY' has changed to such an extent that, at the time of the application for the contested sign, the Office's previous practice could be regarded as erroneous and therefore could not effectively be relied on by the applicant.”

In sum: all considered, it remained undemonstrated why ‘MAGIC PUSSY’ should be refused registration. Therefore, the BoA annulled the contested decision and sent the case back to the Examination Division to proceed further with the registration process.

Comment

The decision appears to be a sensible one. While I suspect that the majority of consumers in certain demographics / age groups would not necessarily think of ‘MAGIC PUSSY’ as implying felines or – as the BoA indicated – fairy tales (at least those suitable for younger audiences), playing with ambiguity is – correctly – not something that should be caught within the application of Article 7(1)(f).

That ground, which objectively serves to restrict one’s own freedom of expression to safeguard others’ rights and interests, must be handled with care and, for what I can see, left to very special – if not exceptional – circumstances.

As I noted with reference to decisions like the one in COVIDIOT, plenty of Article 7(1)(f) situations can be – much more straightforwardly and convincingly – resolved through the ‘ordinary’ absolute grounds, notably distinctiveness (and, in some cases, descriptiveness). Take ‘COVIDIOT’: that sign cannot be registered not because it is contrary to public policy or even morality but simply because, to consumers, a term associated with a specific phenomenon / period does not communicate commercial origin.

‘MAGIC PUSSY’ is not the only trade mark which, recently, has been assessed through the lens of Article 7(1)(f) though. If one conducts a case law search, they will realize that this ground is applied quite often and, above all, quite inconsistently.

Looking at the decisions of the past couple of months alone, one can see that certain, unambiguous expressions like ‘HOUSE OF CUNT’ and ‘BLOWJOB’ have been refused on account of Article 7(1)(f). While the former might be indeed offensive, would the latter also be regarded as shocking / offensive?

Then, there are cases in which the decision-making process is unduly complex. For example, ‘BIG AIR CANNABIS’ was recently refused registration for cannabis-related goods in classes 5 and 34 not because it lacks distinctiveness / is descriptive but rather because of its contrariety to Article 7(1)(f) and the circumstance that the consumption of these products is illegal in several Member States. More simply (and correctly), other cannabis-related trade marks – specifically ‘KHALIFA MINTS’ and ‘VIOLET SKY’ – have been considered descriptive and devoid of distinctiveness.

Last but not least, should a sign like the one below be considered “deeply offensive” for goods and services in classes 25 and 41 (including “education”)? The answer seemingly is yes. While the gesture portrayed in the sign might not be appropriate to use in most contexts (including when addressing people in educational establishments, though I imagine that several students might be making or thinking of gestures of this kind, at least behind some educators’ back), I am not persuaded that the public would be scandalized by it.

Overall, the key problem with Article 7(1)(f) is that, despite the guidance developed over the past few years, it remains a ground whose (a) very usefulness is doubtful in most cases and (b) application remains complex, also considering shifting societal sensitivities and the simple fact that what might have been shocking and offensive even a short while ago is OK today … and vice versa.