Italy jurisdiction report: Complying with public morality
Article 14, paragraph 1 letter a. of the Italian Code on Industrial Property provides that: “The following shall not be registered as trademarks: a) signs that are contrary to the law, public policy or accepted principles of public morality.”
A similar provision is included in article 7, paragraph 1, letter f of the EU trademark regulation (number 2017/1001). The provisions preclude the registration of a trademark when it concerns a sign that may be perceived as contrary to the fundamental moral standards of the society.
In a December 2019 decision, for instance, the European Union Intellectual Property Office (EUIPO) rejected the registration of the trademark ‘Hoor’ which, in Estonian means “prostitute” in an offensive manner (decision number R-018073336).
EUIPO held that when a sign is particularly offensive it is offensive regardless of the kind of products it claims. The application at issue included clothing and related accessories, ie, everyday consumer items. For this reason, the trademark in question was deemed as offensive.
Offence in Italy
Looking at Italy, we point out a significant decision by which the Board of Appeals of the Italian Trademark Office rejected the application for the trademark ‘Puttanopoly’, an Italian mispronunciation of the well-known game Monopoly, by making reference to a vulgar expression of “prostitute” (decision number 10/2010).
The judge underlined that Italian morality disapproves of the harm that prostitution and its exploitation cause people, whose dignity is at the heart of the legal system. However, it is to be pointed out that if a disrespectful trademark is not registered, the owner may continue to use it, unless it is associated with equally offensive advertising.
In Italy, in particular, this kind of communication is considered unlawful by the Istituto dell’Autodisciplina Pubblicitaria (IAP), which makes reference to the Code of Self-Regulation on Marketing Communication.
