‘FUCKING AWESOME’ not protectable as an EU trade mark

The internationally recognised test for registerability of a trade mark is distinctiveness. The legal bases are Art. 6quinquies B. (ii) of the Paris Convention and Art. 5(1) of the Madrid Protocol for the member states of these international treaties.

However, the threshold for what constitutes distinctiveness varies. While the USPTO and courts in the US seem to apply a rather low threshold, the EU maintains a stricter threshold, as the following judgment from the General Court (case T-178/22) shows.

Background

The applicant, FA World Entertainment Inc., designated the EU in its International Registration FUCKING AWESOME, which was based on three registered US trade marks (serial nos. 87496196, 90210704 and 90210698). The International Registration covers various goods in classes 9, 18, 25, and 28, including eyewear, different types of bags, clothing and skateboards.

EUIPO issued a notification of provisional refusal based on a lack of distinctiveness (Art. 7(1)(b) of Regulation 2017/1001) and violation of public policy and accepted principles of morality (Art. 7(1)(f) of Regulation 2017/1001).

The Board of Appeal disagreed with EUIPO on Art. 7(1)(f) of Regulation 2017/1001. It held that FUCKING AWESOME will not be perceived as offensive but as a slightly vulgar message promoting the high quality of the relevant goods. However, the Board of Appeal agreed that the trade mark lacks distinctiveness.

 

The General Court’s decision

The General Court dismissed the applicant’s appeal.

Consumers would understand the word ‘FUCKING’ to be a vulgar intensifier and the word ‘AWESOME’ to refer to something excellent or outstanding. The General Court found the combination to be consistent with English lexical and grammatical rules. Consequently, ‘FUCKING AWESOME’ would be understood as a promotional message indicating the high quality of the goods.

The Court rejected the applicant’s contention that the sign does not refer to specific characteristics or the quality of the goods. The judges referred to consistent case law, which held that a trade mark can be rejected if it is perceived solely as promotional or advertising information rather than (also) serving as an indication of the commercial origin.

Advertising slogans, indications of quality, or incitements to purchase the goods or services can be distinctive, if they possess a certain originality or resonance and require some interpretation, or they set off a cognitive process. The Court considered neither the vulgar connotation of ‘FUCKING’ nor its combination with ‘AWESOME’ to be unusual, original, requiring interpretation, or a play on words. The sign merely conveys in informal language a promotional message about the quality of the goods.

The applicant argued that the specific way in which the trade mark is most likely to be used on the goods, namely on labels inside the clothes, confers on it distinctive character. If consumers see the sign on labels, they will, according to the applicant, perceive the mark as an indication of commercial origin. This argument was based on the judgment of the Court of Justice of the EU concerning the trade mark #darferdas.

The General Court rejected the applicant’s contention. The judges held that the mere affixing of a sign on goods or labels does not automatically mean that the relevant public perceives that sign as an indication of commercial origin rather than conveying a promotional message. If this were the case, all non-distinctive marks would have to be considered distinctive merely because they can be affixed to the goods or their labels. The placement of the purported mark does not change its meaning.

The General Court rejected the applicant’s argument that the term ‘FUCKING AWESOME’ is distinctive because it does not appear as a dictionary item. The judges referred to consistent case law stating that a finding of non-distinctiveness does not require the expression making up the sign be listed in dictionaries.

The applicant referred to the registration of the US trade marks that form the basis of its International Registration. He argued that the English-speaking public in the US is considered to understand ‘FUCKING AWESOME’ as distinctive. The General Court rejected this argument – not surprisingly – by stating that the EU trade mark regime is autonomous and acts independently of any other trade mark system.

Comment

The interpretation of ‘FUCKING AWESOME’ by the General Court as referring to the high quality of the products seems debatable. The mark does not say why the goods are ‘awesome’. Goods can be considered ‘awesome’ for many reasons, quality just being one of them. As such, the basis for concluding that the goods are ‘awesome’ is understandably vague.

However, such vagueness is usually not sufficient to confer on the mark the minimum level of distinctiveness. According to consistent case law, vagueness will not set off a cognitive process and consumers will not start interpreting a sign because they are generally deemed not to be very attentive to advertising slogans. They will not take the time to enquire into a sign’s various possible meanings (cf. case T-634/21 at para. 38).

Due to the strict approach taken in EU case law regarding advertising slogans, the vast majority are rejected because of non-distinctiveness. This should not stop international companies from seeking to obtain trade mark protection of such marks in jurisdictions with lower thresholds for distinctiveness.

Pictures is by Marko Blazevic and licensed under the licensing terms of Pexels.