Industrial property news: recent trademark decisions

 

The trademark FACK JU GÖTHE accepted for registration

In June 2018, we told you that the Court of the European Union (TEU) had rejected the brand FACK JU GÖTHE as too vulgar. The court followed the reasoning of the European Trade Mark Office (EUIPO). The producer then lodged a final appeal before the Court of Justice of the European Union (CJEU). The latter ruled in his favour. In its judgment of 27 February 2020 (C-240/18), she considers that the EUIPO failed to take into account the concrete and current social context. It criticises the Office for having carried out an examination in abstracto of the mark FACK JU GÖTHE. First, the Court defines good morals. It refers to "fundamental moral values and standards to which a society adheres at a given time". A mark found to be in "bad taste" should therefore not be rejected for infringement of good morals. The CJEU also recalled that FACK JU GÖTHE was primarily the title of a successful film series in Germany. As the applicant had stated, no controversy had arisen from the titles when the films were released. The Court also recalls that the German Cultural Institute (Goethe Institut) used the films for educational purposes. In agreeing to register the trade mark FACK JU GÖTHE, the Court finally recalls the importance of freedom of expression.  

The CANNABIS STORE AMSTERDAM trademark is contrary to public policy.

In December 2016, the European Trademark Office (EUIPO) received the following trademark application: This brand covers food, beverages and restaurant services. The EUIPO and its Board of Appeal rejected the trademark application as contrary to public policy. In particular, the Board of Appeal justified its decision on the grounds that consumers would be led to perceive this mark (and the word "Cannabis") as referring to the narcotic substance, which is illegal in many EU countries. This perception would be reinforced by the combination of the cannabis leaf ("a media symbol of marijuana") and the word Amsterdam (which refers "to the fact that the city of Amsterdam has many outlets for the sale of this drug"). The applicant criticised the Board of Appeal for not distinguishing between the substances that make up cannabis (CBD/THC). According to the applicant, cannabis is not illegal as such. Only THC is illegal. CBD, on the other hand, is authorised in most EU Member States. On 12 December last, the Court of First Instance of the European Union (TEU) confirmed the decision of the Board of Appeal.. For the judges, the trade mark CANNABIS STORE AMSTERDAM is liable to affect a fundamental public interest. The Court considers that, in the Member States where the consumption of narcotics derived from cannabis is prohibited, the fight against that substance pursues a public health objective. By implying that the goods and services referred to contain illegal substances, the sign therefore constitutes a breach of public policy. CANNABIS" marks are frequently refused registration. For more information on this subject, read our article.  

The HUMAN trademark considered descriptive by the INPI (French National Institute of Industrial Property)

In April 2019, the INPI had refused to register the trademark HUMAN to designate banking and real estate services. The Bordeaux Court of Appeal recently upheld INPI's decision. For the judges, the sign HUMAN designates an essential characteristic of the services offered, since "the applicant places the humanization of the relationship with the client at the top of its priorities". The mark not being sufficiently distinctiveit cannot be registered. (CA Bordeaux, 1re ch. civ., 7 Jan. 2020, HBS Immobilier SAS v. Managing Director of lʼINPI) If you do not know if your brand is distinctive: contact us!  

Rejection of the trademark LES REPUBLICAINS due to the presence of the French flag

In 2014, INPI received the following trademark application: The Office rejected this trademark application because the sign was "composed of the graphic representation of three vertical rectangular bands joined together in blue, white and red" and constituted an "imitation of the French flag". Indeed, theArticle 6ter of the Paris Union Convention prohibits the registration of a trademark using a flag or state emblem. The political association defended itself. According to the association, the sign features a stylized R in the foreground. The tricolor flag would not be immediately identifiable by the consumer. But the Court of Appeal of Paris rejected this appeal. For the judges: "the public can only be encouraged to perceive this sign as comprising an element representing the main characteristics of the national emblem and thus constituting an imitation. " (CA Paris, Pole 5, 2nd floor, Jan. 10, 2020Les républicains (Association) v. Director General of the INPI)