Tuesday, May 30, 2006
Immoral Trademarks [FCUK!]
Law Wire promised to bring you further information about the UK Trade Mark Registry’s ruling in the FCUK revocation decision and lo and behold, here it is!French Connection holds the registered trade mark FCUK in relation to goods in various classes.
Mr Dennis Woodman applied for the mark to be invalidated for goods in Class 14 under s.47 of the UK Trade Marks Act 1994 on the ground that it was an immoral mark that was barred from registration under s.3(1)(f) of the TMA. He argued that that the FCUK mark was intended to be mistaken for the expletive fuck. French Connection argued that its mark was not of a sort that could be barred from registration.
Although a degree of word-play was possible, the origin of the mark was as an acronym for French Connection United Kingdom, and there had been a number of other acronyms that had been used internally (such as FCUS, standing for French Connection United States) to refer to the various branches of the company. Numerous traders had associated their products or events with the FCUK mark, or had sold FCUK goods. There had only been a few instances of complaints to organisations such as the Advertising Standards Agency, and most of these had focused on the use of the FCUK mark in particular contexts, rather than to the mark itself.As the Kat has already informed his readers, the application for revocation was rejected.*
Since Woodman’s case was that the public would misconstrue the FCUK mark as the word fuck, the initial question to be answered was whether fuck would be barred from registration as a trade mark on morality grounds. If the word fuck would be registrable, then French Connection would have no case to answer.Was the word “fuck” registrable as a trade mark?*The word fuck would not be registrable as a trade mark. The fact that it was commonly used in everyday life did not make it acceptable. It was more than merely smutty and would cause outrage among a significant section of the public. [IPKat NOTE: Note the similarity in the reasoning to the US KATRINA BLOWS, BUCK SUCKS decision, which the IPKat mentioned in his initial post on the FCUK decision]Would the FCUK mark be mistaken for the word fuck?*In judging whether the word FCUK would be construed as the word fuck, the hearing officer examined the visual, aural and conceptual impact of the mark on consumers. [IPKat NOTE: so far as he knows, it’s unprecedented for criteria for comparing marks in infringement/opposition cases to be deployed in immoral marks cases]
*It was not disputed that usually FCUK would be pronounced as its individual letters, rather than as a word, so aurally they would be quite different.*The conceptual meaning of the mark depended on whether the mark would be seen as fuck, either spelled correctly or mis-spelt. While the word fuck would cause offence to a significant section of the public, the offence was not caused by FCUK itself. Rather the possibility of offence arose through word play, mistake, or misconstruing of the letters, the mark though would enable the mark to be seen as the word.*It would not be right to see the mark as objectionable because it was capable of being seen as something that was not. There was no evidence that establishes that the trade mark FCUK solus was seen as the expletive amongst an identifiable section of the public.At what point should the offensiveness of the mark be judged?
*There was nothing in s.47 that allowed for the invalidation of a mark that had become objectionable on absolute grounds through the use that had been made of it post-application. Thus, the fact that French Connection had educated the public to view the mark as the objectionable word was not relevant to the hearing officer’s decision. However, the context in which FCUK had been used may have contaminated the term FCUK, causing the term itself to become offensive. This could be relevant to the hearing officer’s decision. [IPKat NOTE: This seems right – if you can educate consumers to see a descriptive word as a trade mark, you should be able to educate consumers to view neutral words as having taken on an offensive meaning.]
*In judging whether this had occurred, the reaction to the mark on the market proved a good barometer. Respectable traders had traded in FCUK goods with hardly any adverse response from members of the public. Also, there had been few complaints from the general public about the FCUK mark, and those that had been made tended to focus on the use of FCUK in a particular context, rather than on the term itself.The IPKat notes a number of examples of novel reasoning in the hearing officer’s deicision, particularly with regard to comparing plays on immoral words with the immoral words themselves, the point at which the immorality of the mark must be judged and the comments on educating consumers about the meaning of words. Merpel wonders why the revocation action was limited to jewellery and watches. If it's offensive for them, surely it's offensive for all goods?