Trademarks, public policy and principles of morality in the time of corona

During this uncertain corona period, it was inevitable that someone would have the idea of registering “COVID-19”, “CORONAVIRUS” or variants as a trademark. But can such trademarks be considered as distinctive and valid? And, more importantly, is registering such trademarks really appropriate and in keeping with public policy or accepted principles of morality? Let’s remind ourselves about the importance of public policy and accepted principles of morality in the field of trademarks.

Public policy and accepted principles of morality in the EU

In the EU, the European Union Intellectual Property Office (“EUIPO”) has traditionally taken a strict stance when refusing trademark applications on the grounds of public policy and morality. The General Court of the EU has consistently supported this strict stance.

For example, applications for trademarks that are racist and offensive to the public or linked to violent terrorist attacks have generally been refused by the EUIPO (such as the “BIN LADIN” application from a member of the Bin Laden family, even though the application was filed before the 9/11 attacks and there is a general right to use one’s own name).

Furthermore, all applications for trademarks referring to drugs have also been consistently refused by the EUIPO (e.g. the “CANNABIS STORE AMSTERDAM” trademark was deemed to be contrary to public policy and accepted principles of morality (irrespective of the descriptive nature of the trademark)).

The EUIPO has also consistently rejected applications for all trademarks having a clear sexual connotation or the word “Fuck” or variants, such as “FACK JU GÖHTE”.

However, the applicant for the trademark “FACK JU GÖHTE” challenged this decision and appealed to the Court of Justice, which ruled against the General Court and EUIPO in terms of accepted principles of morality. This provided some important lessons in how to interpret the concept of accepted principles of morality.

First, “public policy” and “accepted principles of morality” serve as two alternative grounds for refusal, which could overlap but can also each be considered on their own merits. A refusal on the basis of “public policy” is made according to objective criteria (referring to laws, policies and official statements), whereas a refusal on the basis of “accepted principles of morality” involves assessing subjective values.

In the “FACK JU GÖHTE” case, the question was whether this trademark application was contrary to accepted principles of morality. The Court of Justice held that it was not sufficient for the EUIPO to regard the trademark as being in bad taste. The EUIPO had to consider whether the relevant public perceived the trademark as contrary to the fundamental moral values and standards of society at that time, which involves taking account of the actual social context.

Finally, the Court of Justice also stressed that freedom of expression must be taken into account when considering a refusal based on this ground.

Based on the “FACK JU GÖHTE” judgment of the Court of Justice, it is clear that the EUIPO will have to take a slightly more ‘liberal’ stance and take into account the existing social context when deciding whether a trademark is contrary to accepted principles of morality; such a refusal by the EUIPO will require more specific reasons.

The obligation to state specific reasons is less strict if the EUIPO decides that a trademark is contrary to public policy (for example, trademarks referring to illegal acts such as terrorism, Nazism and racism), as this assessment is based on objective criteria.

Public policy and accepted principles of morality in the Benelux

By contrast, the Benelux Office for Intellectual Property (“BOIP”) has so far hardly ever refused trademark applications on the grounds that the trademarks were contrary to public policy or accepted principles of morality, which is why there is hardly any known Benelux case law on this topic.

For instance, previous examples of registrations containing strong sexual expletives or political extremism have been accepted, while others have been refused for lack of distinctive character.

Accordingly, there is no established Benelux case law in this regard, but practice shows that the BOIP (as well as the Benelux trademark courts) has taken a more liberal stance than the EUIPO.

In 2020, can “CORONAVIRUS” or “COVID-19” or other variants be registered as a trademark?

It is likely that applications for “CORONAVIRUS” and variants will be rejected as EU trademarks, as they are trademarks that could be perceived as ‘being in bad taste’ or ‘inappropriate’ – i.e. morally unacceptable – and could therefore be contrary to accepted principles of morality. The onus would be on the trademark applicant to prove that in practice the relevant public does not take offence at the use of the trademark in question. If the trademark applicant is able to prove this, the EUIPO would need strong arguments to support its refusal of the trademark application on the grounds of it being contrary to accepted principles of morality.

In the Benelux, it seems less likely that the trademark applications for “COVID-19”, “CORONAVIRUS” and variants will be refused because of being contrary to public policy or accepted principles of morality. Practice has taught us that applications for ‘tasteless’ or ‘inappropriate’ trademarks are generally accepted by the BOIP, provided they are not descriptive.

In fact, an important additional question (for both the BOIP and the EUIPO) is whether “COVID-19” or any variant even has a distinctive character and is not descriptive of the goods or services for which the trademark would be registered. For instance, the Benelux trademark application for “COVID MASK” for masks has already been provisionally refused by the BOIP.

Furthermore, the “CORONA” trademark variants would probably conflict with existing “CORONA” trademarks (which are not related to the virus), including the well-known beer trademarks.

Should such trademarks be registered, any infringement action would probably not be successful, if only because it is in the public interest that everyone can use the sign “CORONAVIRUS” or “COVID-19” in a free way to refer to this terrible virus.

For an in-depth version of this article, please read here (Dutch only).