26 May 2016Trademarks

INTA 2016: Annual meeting ends with sweary session on vulgar marks

The inconsistency of registering vulgar or scandalous marks in different jurisdictions was discussed during a humourous, yet explicit, final session at the International Trademark Association’s (INTA) annual meeting.

One of the key things to remember with this topic was that different locations “have different views on what is disparaging and attitudes can change through time”, Daniela Rojas, special counsel at law firm Hilborne Hawkin, said.

Rojas gave an example of football team Real Madrid which had to remove a cross from the top of their badge in order for it to be accepted in Dubai, a non-Christian state.

But despite this, trademark applications for ‘Hot Sex’ and ‘El Chapo’ were registered in Argentina and Mexico respectively, two Catholic countries.

Delegates were then shown a video of John Oliver, host of US TV show “Last Week Tonight”, speaking about the National Football League team Washington Redskins.

In 2014, the team, which had their trademarks for the term ‘Redskins’ cancelled after they were deemed offensive to Native Americans, published a list of other trademarks that had been accepted.

Accepted trademarks for terms including ‘Dickballs’ and ‘Slutseeker dating service’ were among those cited by the team.

It was then the turn of Holger Gauss, attorney at Grunecker in Germany, to speak about the situation in the EU.

“I’m going to be every explicit,” he warned delegates before going on to explain what the European Union Intellectual Property Office would take into account when assessing offensive marks.

Applications for marks that are contrary to “public policy, or accepted moral principles” will be barred from registration, he said.

One example he gave was an application for the word ‘Bin Ladin’ that was rejected because it “can only be connected to terrorism”. Though ‘Bin Ladin’ was rejected, there are registrations for ‘Escobar’ and ‘Mao’.

Amusingly, a trademark application for ‘Fucking Hell’ covering alcohol was accepted, as Fucking is a town in Austria and Hell is a type of German beer.

John Sommer, general counsel at US clothing company Stussy, explained the vagueness of the US’s trademark legislation the Lanham Act.

Section 2(a) prevents registration of marks which are scandalous, immoral and “marks which may disparage”.

“I emphasise the word ‘may’,” he said, adding that “may disparage is not the same as disparage.”

He then spoke about some of the disparities in the US.

The term ‘MILF’, “which I don’t need to tell you to look up”, Sommer said, has been refused 20 times and rejected 23 times.

‘The Devil is a Democrat’ was rejected but ‘Have you heard Satan is a Republican’ was approved.

The INTA annual meeting ended yesterday, May 25.

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