20 September 2011

Why You Cannot Trademark Symbols Of Despotism

Image: Soviet coat of arms on Wikimedia Commons

The image above represents nothing less than the coat of arms of the Union of Soviet Socialist Republics or the Soviet Union as this no longer existing state is known to large parts of the public.

The image above also shows what the British Virgin Islands based company called Couture Tech Ltd attempted to register as a

Community Trade Mark

with the Office for Harmonization in the Internal Market (OHIM).

Funnily, the registration sought to cover an amazingly broad spectrum of goods and services detailed by the classes 3, 14, 18, 23, 26 and 43 of the Nice Classification Agreement.

Not surprisingly to me OHIM

refused to grant registration

because it found that the mark applied for was contrary to public policy or to accepted principles of morality within the meaning of Article 7(1)(f) read with Article 7(2) of Regulation No 40/94. For the sake of clarity, it should be noted that Regulation 40/94 has been codified by Regulation No 207/2009, which is also referred to as the “CTMR”.

Couture Tech Ltd contested this finding before the Board of Appeal, but suffered another setback as in its dismissal the Board held that

symbols connected with the former USSR would be seen as contrary to public policy and to accepted principles of morality by a substantial section of the relevant public, namely the general public living in the part of the European Union which had been subject to the Soviet regime, at least as far as Hungary and Latvia were concerned.

Quoting the Hungarian Criminal Code, the Board of Appeal even stressed that the signs hammer and sickle (however together with other politically burdened insignia) represented

symbols of despotism

and hence signs which are likely to be perceived by the relevant public as being contrary to public policy or to accepted principles of morality.

What a statement, huh?

Couture Tech Ltd, obviously not willing to accept another defeat, asked the General Court to annul the decision of the Board of Appeal based on two pleas.

First, Couture Tech Ltd asserted that the Board did err in interpreting Articles 7(1)(f) and (2) of the CTMR.
Second – and since OHIM had already registered Couture’s mark No 3958154, which related to the same sign, i. e. the Soviet coat of arms – OHIM had lured Couture to rely upon the registration of the mark applied for. Consequently, OHIM did breach the principles of the protection of legitimate expectations and legal certainty.

Today the General Court issued its decision in which it dismisses all of Couture’s assertions.

Although the General Court  nearly neglects the second plea of Couture Tech Ltd, I am of the opinion that it sends a

very strong signal

not only to the brand owners and intellectual property practitioners, but also to the politicians throughout the European Union.

According to that signal, the communist symbols, especially those related to the Soviet regime represent symbols of despotism, the trivialisation of which could not be reconciled with the public policy and accepted principles of morality in Europe.

Consequently, such symbols must not be trademarked.