INTA: ‘COVIDIOT’ Trademark Should Prevail Under Narrower Test for Principles of Morality

“INTA ultimately advocates for a new test to determine when a trademark is contrary to accepted principles of morality under Article 7 (1) f of the European Union Trade Mark Regulation (EUTMR).”

The International Trademark Association (INTA) on Friday filed an amicus brief with the European Union Intellectual Property Office’s (EUIPO’s) Grand Board of Appeal, arguing that “the terms public policy’ and principles of morality’ 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” with respect to a trademark on the term “COVIDIOT” not being “fully in line with public standards.” The case is Matthias Zirnsack vs. EUIPO, Case R-260/2021-G.

An EUIPO examiner rejected the mark for being contrary to accepted principles of morality, finding that the word “COVIDIOT” “designates a person who either (i) ignores the information available concerning the danger of the COVID-19 virus, (ii) fails to take the precautionary measures imposed by government to protect themselves and others from becoming infected, or (iii) stores household goods in large quantities so that those goods unavailable for others.”

The First Board of Appeal (BoA) noted a possible application of Article 7 (1) f of the EU Trade Mark Regulation (EUTMR) on the grounds that “the word ‘COVIDIOT’ designates a person or a group in a derogatory manner in connection with ‘COVID’.” The BoA ultimately referred the case to the Grand Board of Appeal “because of the ‘degree of legal complexity of the case and its importance’.”

The BoA expressed concern that the term COVIDIOT could:

  • “develop against public policy should it become, for example, a term that, by trivializing the actual message, incites a breach of the public pandemic measures”;
  • questioned whether the term “may become just a fashionable term devoid of the capacity to indicate the origin for the goods applied or being perceived as a mere descriptive indication”; and
  • wondered “whether, and to what extent, the principle of 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 Article 7(1) f EUTMR.”

INTA ultimately advocates for a new test to determine when a trademark is contrary to accepted principles of morality under Article 7 (1) f of the European Union Trade Mark Regulation (EUTMR). The Association says in its brief that “the mark must be perceived as immoral according to the majority of the relevant public as a factual and not as an abstract legal assessment.” The brief continues:

In particular, this ground of refusal/invalidity should apply only if the majority of the relevant public perceives the content of a mark as violating the accepted principles of morality. Once this can be established with the necessary degree of certainty, the judicator body should then balance principles of morality with the right of free speech.

The brief cites Constantin Film GmbH v. EUIPO (GCEU, February 27, 2020, C-240/18 P, Fack Ju Göhte, EU:C:2020:118) in support of its position that the CJEU has “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.”

Because the terms “public policy” and “principles of morality’” are so vague and risk inconsistent application, the burden of proof “should be on the EUIPO and the examiner must at least identify supportive factual circumstances – i.e. “contextual factors” – for a majority of the relevant public to invoke the bar of Article 7 (1) f EUTMR against an application.”

In this case, no majority of the relevant public of the UK and Germany that would consider the term COVIDIOT to be in violation of public morality has been established and the freedom of speech implications prevail over other concerns. The brief explains:

For the right of free speech to be invoked it suffices to note that the word “COVIDIOT” has emerged from public debate and designates attitudes and a behavior which is under dispute. Although it follows already from the application of inherent trade mark law, that abstract public morals cannot create a barrier to registration, in the absence of evidence of public perception of a majority of the relevant public, this result is even more supported by the impact of the right of free speech. To overcome this impact, controversial public policy must be laid down expressly and on the level of laws, or opposite principles of morality must be supported by a large majority of the relevant public. Neither of these provisos apply here.

Ultimately, said INTA, “[t]he freedom of speech clearly dominates and overrules any (tentative) concerns one may have in regard to the term COVIDIOT not being fully in line with public standards.”

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