Could ‘COVIDIOT’ be a trade mark in the EU?

The rush to file trade mark applications to capitalize on a trending term or phrase is not new. Just to mention a few recent examples, the European Union Intellectual Property Office (EUIPO) received applications relating to ‘JE SUIS CHARLIE’ in the aftermath of the Charlie Hebdo attack and ‘BLACK LIVES MATTER’ after the killing of George Floyd.

During the COVID-19 pandemic, readers would likely imagine that there has been an amount of trade mark applications that take advantage of the term ‘COVID’ or insulting references thereto (for an overview of such applications in the USA, see here). Generally speaking, such applications would be refused registration in that they inter alia fail to perform their basic function – namely to indicate commercial origin. Other reasons, including the increasingly relevant public policy/morality absolute grounds, play an increasingly key role too.

As IPKat readers are well-aware, law is often complex and, in most cases, anything but straightforward. Currently, an application is indeed pending before the Grand Board of the EUIPO to register ‘COVIDIOT’ as an EU trade mark (EUTM). It is Matthias Zirnsack vs. EUIPO (Case R-260/2021-G).

Earlier this month, the International Trademark Association (INTA) also filed an amicus brief (also discussed here) arguing that the terms ‘public policy’ and ‘principles of morality’, enshrined in Article 7(1)f of Regulation 2017/1001 (EUTMR), are inherently vague and therefore carry with them a risk of an inconsistent application and a danger of each examiner being tempted to follow personal preferences rather than clear legal guidance.

Let’s see more in detail what this case is about and what INTA’s take consists of.

Background

In 2020, Mr Matthias Zirnsack (the applicant) sought to register the following figurative mark as an EUTM:

Registration concerned goods in Classes 6 (metal clips), 9 (computer gaming software and mobile apps), and 28 (board games and toys) of the Nice Classification. The EUIPO examiner refused the application pursuant to Articles 7(1)(f) and 7(2) EUTMR in respect of all the goods applied for. The applicant appealed the decision to the EUIPO First Board of Appeal which, by an interlocutory decision in December 2021, referred the case to the EUIPO Grand Board of Appeal.

In its assessment, the EUIPO First Board of Appeal (the board) noted a possible application of Article 7(1)(f) EUTMR on grounds that the word ‘COVIDIOT’ designates a person or a group in a derogatory manner in connection with ‘COVID’. However, due to the ‘degree of legal complexity’ the board questioned whether, and to what extent, the freedom expression – as resulting out of Article 11 of the Charter of Fundamental Rights of the European Union and Article 10 of the European Convention of Human Rights – should have an impact on the assessment of the grounds of refusal set forth in that provision.

It should be noted that recently the Court of Justice of the European Union resolved several interpretative uncertainties in relation to freedom of (commercial) expression in the EU trade mark field through its decision in Constantin Film, C-240/18 P (the Fack Ju Göhte case, on which see The IPKat here).

By looking further into the board’s referral, readers may also appreciate the board’s difficulty in assessing the implications of allowing the present trade mark application to proceed for registration. In its referral to the Grand Board, the board asks whether a trade mark for ‘COVIDIOT’ could be contrary to public policy and trivialize the underlying message, by also inciting a breach of the public pandemic measures. The board also questions whether the term would become fashionable, rendering it devoid of any distinctive character, or such as to be perceived as a merely descriptive term.

INTA: a test to determine when a trade mark is contrary to Article 7(1)(f) EUTMR

By advocating that freedom of expression should dominate and overrule any (tentative) concerns in relation to the term ‘COVIDIOT’, INTA ultimately takes the position that this term would not be in breach of public morality in the UK and Germany (the relevant public).

In support of its conclusion, it suggests a test to determine when a sign is contrary to accepted principles of morality pursuant to Article 7(1)(f) EUTMR. First of all, the ground of refusal/invalidity should only apply if the majority of the relevant public perceives the content of a sign as being in breach of accepted principles of morality. Once this is established with the necessary degree of certainty, the competent authority should then balance principles of morality with the right of free speech. In particular, INTA refers to the CJEU judgment in Constantin Film mentioned above, which according to the amicus brief, “made it clear that freedom of expression clearly applies in the field of trademark law, and specifically in the assessment of whether a sign is contrary to the principles of morality under EUTMR Article 7 (1) f.”

INTA further argues that, given that the terms “public policy” and “principles of morality’” are vague and risk causing inconsistent applications, the burden of proof should be on the EUIPO and the EUIPO examiner must at least identify supportive factual circumstances, i.e. “contextual factors”. In this regard, INTA takes the position that most of the relevant public in the UK and Germany would not consider the term ‘COVIDIOT’ to be contrary to public policy and/or accepted principles of morality.

In conclusion, it states that it already follows from the application of existing principles of trade mark law that abstract public morals cannot create a barrier to registration, in the absence of evidence of perception – on the side a majority of the relevant public – of contrariety to fundamental principles of public policy and morality. What public policy is must be laid down expressly in law. Similarly, only what is contrary to the fundamental moral values and standards to which a society adheres at a given time can be regarded as being against accepted principles of morality.

Conclusion

The present case is without a doubt an interesting and important one, raising relevant concerns about the application of Article 7(1)(f) EUTMR.

It should be recalled that indeed this ground has not always been interpreted and applied consistently: while in ‘LA MAFIA SE SIENTA A LA MESA’ (IPKat here) the General Court adopted a broad reading of it, in Fack Ju Göhte the CJEU clarified that it is only to be used in exceptional cases. This said, in the latter decision, the Court did not elaborate too much in detail (as instead Advocate General Bobek had done in his Opinion: IPKat here) on how the freedom of expression, enshrined in Article 11 of the Charter of Fundamental Rights of the European Union would be factored into the assessment. Whether the EUIPO Grand Board of Appeal may shed some light is not certain, but INTA’s proposal is a solid one and appears to be in line with the ‘exceptionality’ expressed by the CJEU itself.