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.