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21 September 2017Trademarks

Marques 2017: Lawyers discuss morals and trademarks

At the Marques conference in 2016, questions surrounding Brexit were at the centre of many of the talks.

While the effects are still being discussed, since then another issue has rocked the trademark industry.

That is the US Supreme Court’s decision in Matal v Tam, which ruled that section 2(a) of the Lanham Act, a provision that bars trademarks on disparagement grounds, is unconstitutional.

In a session held at the Marques 31st Annual Conference in Prague yesterday, September 20, chaired by Gabriela Taugwalder of Wild Schnyder, panellists looked at disparaging trademarks across the world, highlighting some of the contradictions.

Kate Swaine of Gowling WLG studied those in Europe, Russia and North America.

She highlighted several examples, including that ‘Shiva’, one of the principal deities of Hinduism, is registered for a pornography service in the Netherlands, while in other EU jurisdictions, it isn’t allowed.

In Italy, the Italian Patent and Trademark Office refused to register ‘Just f**king’, but in France, ‘Goodbye bastard’ and ‘Fat bastard’ are both registered.

“We are entirely inconsistent on matters of religion—no surprise there,” she said. “We Europeans are as inconsistent in our approach to sex as we are to religion, as decisions on registration of sexual references demonstrate.”

So while each individual jurisdiction has separate rules, which could create confusion for trademark holders, Bahia Alyafi of Alyafi IP Group in Qatar discussed those across the Middle East, including Iran, Saudi Arabia and the United Arab Emirates.

Across the Middle East, certain registrations in relation to alcohol are banned, however Alyafi stated that there is no set legislation, and the decision often rests with the examiner.

“In Iran, rules on morality are strict and penalties may include execution, and in the absence of guidelines, examiners’ decisions are inconsistent and unpredictable,” she explained.

The Marques 31st Annual Conference runs until Friday, September 22.

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