Book Review: Trade marks contrary to public order and morality + discount code

This Kat has the pleasure of reviewing another publication in the University of Geneva series on intellectual property law. The present monograph, written in French, is by Boris Catzeflis and is titled “Les marques contraires à l’ordre public ou aux bonnes moeurs” ["Trade marks contrary to public order and morality"] (Schulthess, 2022, pp. 594).

As its title suggests, the book covers the absolute ground of refusal in trade mark law for signs that are contrary to public order or morality. The focus is on Swiss law and practice, though a comparative perspective is provided throughout the book.

The first part, consisting of two chapters, addresses the international legal framework behind these grounds of refusal and what are Switzerland’s obligations under applicable international law regarding public order and morality.

The Paris Convention introduced “morality or public order” as a ground for denying registration of a trade mark. This norm was incorporated into the TRIPS Agreement, to which Switzerland is a party.

With regards to the human rights framework, Catzeflis points out that Switzerland never ratified Protocol 1 of the European Convention of Human Rights. This means that the country is not bound to protect intellectual property as a human right pursuant to Article 1 of the Protocol, “Property”.

The second part of the book, extending over eight chapters, discusses various aspects of the “public order or morality” provision in Swiss statutory and case law. This part opens with two introductory chapters, which explain the Swiss legal system and the evolution of Swiss trade mark law.

In Chapter 3 of Part II, Catzeflis elaborates on the difference between “public order or morality” and two other absolute grounds for refusal – deceptive signs and signs that are contrary to the legislation in force.

As Catzeflis observes, the distinction between these absolute grounds of refusal is sometimes unclear, even to the judges. Still, these grounds are not interchangeable, as each addresses a different subject matter.

A deceptive sign gives a false expectation to the consumer. Catzeflis brings as an example the “SWISSAIR” sign; a consumers might falsely think that the rights holder is connected to the formerly state-owned “Swissair” airline, when that is not the case.

As for “signs, which are contrary to the legislation in force”, the author cites the Switzerland’s Criminal Code, which prohibits inciting hatred and discrimination.

This differentiation also exists in between “public order” and “morality”, which the author proceeds to discuss in chapters 4 and 5 of Part II.

In each of these two chapters, Catzeflis first compares Swiss law with equivalent grounds for refusal in EU and US trade mark law. He also considers whether Swiss patent and contract law can provide interpretive guidance on what constitutes public order and morality.

This is followed by a review of the academic literature and leading case law in Switzerland. Notable is the registration in Switzerland of the mark “Bin Ladin” (where the mark had been refused in the EU as being contrary to morality), or the denial to register “Buddha Bar” in Switzerland as offensive to the Swiss Buddhist community and thus contrary to morality.

The author then reflects on the scope for considerations of public order and morality in the Swiss trade mark context. Simply, stated, public order protects state interests. Catzeflis gives an example of signs, which exploit Switzerland’s reputation, as contrary to public order. In contrast, morality protects the society from being offended, by, for instance, religion-related signs or racist signs.

Chapter 6 of Part II is the centrepiece of the book, as it is there that Catzeflis discusses how the examination of public order and morality should be carried out. Factors in this regard include a determination of the relevant public (i.e., how should we consider an offence to a small minority in a given country?), and the relevant point in time for examination. According to Catzeflis, given the evolving character of both public order and morality, the relevant point in time is when the decision is issued, and not when the application is filed.

Other notable factors include the definition of the sign’s primary meaning, where several meanings are possible, and the role of goods and services in examining public order and morality. Helpfully for the reader, the chapter’s take-aways are summarised in the form of a decision tree at the end of the book.

The author follows in chapter 7 of Part II with an overview of signs that would typically be recognised as contrary to public order or morality. These include signs that refer to drugs, signs that include a reference to terrorist organisations, and signs that contain discriminatory contents. The book closes in Chapter 8 with a discussion of the legal consequences of a sign being found contrary to public order or morality.

What surprised this EU-based Kat when reading this book is that, despite Switzerland's geographical proximity to the EU (whose law contains similar provisions), Switzerland seems to construe the public order and morality provisions somewhat differently from the EU. For instance, Catzeflis discusses how, according to Swiss jurisprudence, rejection based on being contrary to public order aims at safeguarding the country's reputation, diplomatic relationships, peace and security.

In addition to its direct relevance for Swiss practitioners and academics, this book will interest French readers, especially in jurisdictions where a similar debate on what public order and morality are is taking place.

Our readers may enjoy the book with a special discount, available here until June 15, 2023.