Morally questionable trade marks: why the US and Europe see things differently

The United States

In a landmark ruling last week, the US Supreme Court held that the rule against disparaging trademarks in the Lanham Act is unconstitutional under the First Amendment right to free speech. The case concerned an application by a rock band to register "THE SLANTS" (widely used as a slang, derogatory term for people of Asian descent) as a US Federal trademark. The band, themselves Asian American, were making a point, reclaiming a word that had been used against them as an insult. They certainly gained themselves some publicity along the way.

Why was the rule unconstitutional?

The Lanham Act forbids the registration of trademarks that may “disparage… persons, living or dead, or bring them into contempt, or disrepute”.

Initially The Slants' trademark application was rejected, but the courts at Federal Circuit level and now the Supreme Court went the other way.Their reasoning includes the following point.

“[A] fundamental principle of the First Amendment is that the government may not punish or suppress speech based on disapproval of the ideas or perspectives the speech conveys.” The Lanham Act rule wrongly “reflects the Government's disapproval of a subset of messages it finds offensive.”

Europe

EU trade mark law has its own morality rule. It prohibits registration of signs "which are contrary to public policy or to accepted principles of morality". Trade marks should not be a tool to "assist people who wish to further their business aims by means of trade marks that offend against certain basic values of civilised society" (the SCREW YOU case, R 0495/2005-G). But this rule is not limited by the principle of freedom of expression in the European Convention on Human Rights. Why? Because ruling out registration as a trade mark does not stop the sign from being used.

EU law tries to find a middle ground between avoiding offending the exceptionally puritanical and adopting the relaxed views of those “who find even gross obscenity acceptable”. The EUIPO Guidelines give some good examples. Trade marks that refer to terrorists or terrorist groups, terms that are particularly offensive and insulting racially or sexually, and symbols of despotism (the USSR hammer and sickle) have been refused registration.

A complicating factor in Europe is its cultural diversity. A variety of languages each with their own slang terms, and different national histories and racial issues paint a complex picture. What might look perfectly innocent to an English speaker, for example, can be deeply insulting elsewhere. But the trade mark office or court will have to analyse the situation across the territory where the registration will apply.

In the UK, the 2006 decision to allow FCUK to be registered for use by the fashion brand French Connection is a well-known example. Although it could be misread as a swear word, it was not one. It could be used quite inoffensively and so was not intrinsically objectionable.  

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