The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Parvis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Friday, 18 December 2015

Looking back over this GreeKat's shoulder… Part IV: "JE SUIS… un opportuniste" – the public order as a trade mark barrier

Twice within 2015, INPI, the French TM Office, was forced to tackle controversial trade mark registration cases. Both cases were linked to the aftermath of the terrorist attacks in Paris. In January, INPI rejected some 50 trade mark applications for “Je suis Charlie” that were filed within a few days after the attack at the Charlie Hebdo offices. The attempt to capitalize on the tragic events was shocking for many. Moreover, leaving aside moral aspects [can they be left aside?!], how would one enforce such a trade mark registration? This could have been a one-off attempt (despite those 50 applications…), but, only last month, just after Paris suffered from another terrorist attack, “Je suis Paris” and “Pray for Paris” marks were also filed with INPI.

From a trade mark perspective, the debate revolved around the appropriate ground for refusal of those filings. INPI, to this Kat’s initial surprise, rejected the “Je suis Charlie” applications as lacking distinctiveness. This is because INPI noted their immediate, widespread use, which rendered the mark generic. It is hard to argue with that, however, this Kat felt it was not the appropriate one (as bad as the registration attempt itself, one may wonder…).

As “Je suis Charlie” filings began to pop up in Benelux, the United States and Australia, OHIM issued a statement (also reported by IPKat here) explaining the grounds for refusal it would apply in case of CTM filings for the same phrase. OHIM put forward Article 7(1)(f) of the CTM Regulation, which precludes registration of a mark considered "contrary to public policy or to accepted principles of morality". As an additional basis, Artice 7(1)(b) of the CTM Regulation (lack of distinctive character) was also cited; a position closer to this Kat’s heart and (legal) mind.

The “Je suis Paris” and “Pray for Paris” filings have been less (just over 10, apparently), but INPI’s position is closer to how this Kat sees the matter. In a relevant statement, on 20 November 2015, INPI clarified that it would reject trade mark applications such as “Je suis Charlie”, “Pray for Paris” and variants thereof.

INPI’s revised approach is certainly not a neutral one; it carries a moral (and emotional) “charge”. Public order or morality arguments are always a dangerous terrain, and can indeed be abused. For example, it is reported that in 2003, INPI rejected the mark “Non à la Turquie en Europe” on public order grounds. The decision was upheld by the Cour d’Appel de Paris on the ground that it was “a slogan which, contrary to the objective of trademark law, does not aim at distinguishing the goods and services of a company from those of another in order to guarantee the source or origin to a customer, but rather to establish to the advantage of the association […] operating a purely political privilege of the use of this sign”. (CA Paris, 4e ch., sect. A – June 9, 2004). According to the Court, the association tried “to obtain, through a misuse of trademark law, an exclusive right on one of the terms of this debate”.

It is true that public order or morality arguments are usually the place of passionate disagreement between individuals, where a state verdict may be (or even is) hindering personal freedom. However, there are instances where public order or morality arguments mark the least common denominator of social communities. 

And it seems that a strong rejection of the attempt to (mis)use trade mark law to capitalize on the particular set of events (to put it in a neutral, non-distinctive, manner) is a good fit for public order / morality grounds. In their domain, TM Offices are keepers of core values making up the foundations of their respective legal orders. The rejection of the “Je suis…” marks on public order / morality grounds should not be seen as an expression of some nebulous moral interventionism to a free market, but rather a reaction to safeguard values, in the absence of which a free market is hard to build and operate.


Adam Kaynes said...

Trademarks, like patents, copyright etc.. are no instrument for the free-market in the first place, on the contrary. They are are limiting free trade. A regulatory instrument. This may have some justification for the 2000 or 3000 top trademarks. I want to have Nutella in the Nutella. I do not care who produced the Je suis Charlie diapers, I would not buy them anyway, even I had kids at the right age.

The millions of trademarks to follow are just a means for printing money. The vast majority of trademarks registered is never ever used to market anything. Allowing these Is just a limitation to the freedom of the public with no justification whatsoever.

To cut through the thicket limiting I.a. freedom of expression, it would be desirable to make their registration and maintenance prohibitively expensive. A couple of thousand euros a year would not deter SMEs it would deter highwaymen, like those who filed these "trade marks"

Evidently I do not expect too much support in a forum many of the members of which make a living on filing useless and abusive IP instruments, such as trademarks.

Anonymous said...

@Adam: I agree that currently monopolies are handed out too cheap.
All under the pretext of higher number of applications=more innovation.

I understand the desire to make applications cheap, so that even market newcomers are not deterred but encouraged to use these means, but at the latest after a grace period of two years (checking market acceptance), the costs should reflect the damages done to the public by limiting their freedom through another granted monopoly.

Through these higher renewal fees, cross subsidy for cheap first two years can easily be payed, even more so if you limit discount application prices to smaller users of the IP systems (e.g. discount only for SMEs, or users with less than ten current minopolies of the same type,...).

Best wishes,
- one of those EPO examiners

JP Proudhon said...

Cross subsidizing is not an issue. Trademarks are subject to fees not to prices. The purpose of a fee is regulatory in nature, not to raise a profit. The fee for parking in inner cities is not chosen to maximise income but to reduce traffic to what is considered reasonable. 1.7 million active trademarks in Germany alone is definitely not reasonable. That's 50 times as much as the vocabulary of a reasonably educated person. Under the domain of similarities thousands of times as much. Whatever you utter in a commercial context is certain to violate the trademark rights of thousands of right owners or should we call them highwaymen as A. K. did. IP has developed into an alltogether ridiculous trade. The only reason it still exists is its unenforcability.

The Pigs said...

JP Proudhorn,

I think that you over-estimate the "exclusivity" nature of the trademark.

Vocabulary is not a reasonable measure, as merely speaking ("utter[ing] in a commercial context") the mark is not violating the mark.

Attempting to use the mark on similar goods in a similar market context is what is - and the only thing - protected.

Steve's having a laugh in nirvana said...

Try to sell a vacuum cleaner by the name of iSuck which is neither a phone nor a computer and count how many days it takes before you get mail from Apple's attorneys. If it is not too similar to iPhone they'll tell you it's reminiscent of the failed Newton hand held. The guy who invented gravity was called iSuck Newton, wasn't he? You can always change that the name of your product to uSuck.
Trademarks keep judges and attorneys busy without any justification. They should tend to more useful business.

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