Trade Mark Registration, Public Policy, Morality and Fundamental Rights

Abstract

According to EU and international trade mark law, signs that are contrary to public policy or to accepted principles of morality may be denied registration. Public policy and morality are open legal concepts that provide a typical entrance door for fundamental rights, allowing the taking into account of ethical values when defining the content and scope of intellectual property law. As IP offices are EU or national institutions that are bound by fundamental rights protection, the conformity of their practice needs to be tested with regard to these higher constitutional principles. In this article, we will verify if the current practices with regard to the refusal to register immoral trade marks on morality and public policy grounds take sufficiently into account fundamental rights, and in particular the freedom of expression and freedom to conduct business of trade marks applicants. If the decisions of the European Union Intellectual Property Office (EUIPO) will be given the main attention, those of the General Court of the European Union (GCEU), the Court of Justice of the European Union (CJEU), the European Court of Human Rights (ECtHR) and the EFTA Court will also be considered. The European practice will then be compared to the recent case law on this topic in the United States, in particular to the Supreme Court decision Matal v. Tam of June 2017, already considered by some commentators as a historical development as it overturns a long tradition of trade mark precedent barring from protection offensive and disparaging trade marks. We conclude that the implications of fundamental rights protection in the EU might lead to different results than in the US and that the practice developed by the EUIPO with regard to immoral trade marks is in general consistent with the standards required by the European legal order. However, there might be some (rare) situations where a new approach could be needed in the future, for example when the trade mark application can qualify as mixed expression, both commercial and political or artistic in nature.