At last: Habemus Covidiot!

After it was referred back in 2021, a few days ago the Grand Board of the European Union Intellectual Property Office finally issued its long-awaited decision concerning an application to register the figurative sign ‘COVIDIOT’ (below) as an EU trade mark for the following goods:

• Class 6: Metal clips.
• Class 9: Computer gaming software; Mobile apps.
• Class 28: Board games; Toys.

The Grand Board dismissed the appeal and ruled that the sign could NOT be registered due to its contrariety to both Article 7(1)(f) (contrariety to public policy or to accepted principles of morality) and 7(1)(b) (lack of distinctiveness) EUTMR.

The broader relevance of the decision is that it applies in detail the guidance of the Court of Justice of the European Union (CJEU) in the FACK JU GÖHTE judgment [commented on The IPKat here and here], including the obligation for the Office to take into account fundamental rights – notably freedom of expression under Article 11 of the EU Charter – when assessing applications for registration. Such a mandate is not limited to Article 7(1)(f): it applies to all absolute grounds for refusal/invalidity.

In what follows it is detailed – in brief – how the Grand Board came to the conclusion that no registration should be granted.

Contrariety to Article 7(1)(f) was found to subsist because, in essence, ‘COVIDIOT’ is a word that, while it serves to indicate in a derogatory fashion a person or a group of person in connection with the Covid-19 pandemic, trivializes the impact of the pandemic and does so for commercial reasons.

First of all, the Grand Board reviewed the history and rationale of Article 7(1)(f) and recalled how the EU legislature decided – unlike what is the case under the option offered to Member States by Article 4(3)(a) EUTMD – to separate questions of registrability from questions of usability: the circumstance that an application is refused on public policy / morality grounds does not mean that use of the underlying sign in commerce is necessarily prohibited too.

Turning to the definition of ‘accepted principles of morality’, the Grand Board noted that:

• Article 7(1)(f) does not encompass any principle of morality but is limited to ‘accepted’ ones. Hence, the ground applies in cases “where a sign crosses the boundary to being seriously abusive and likely to cause deep offence” in the reference public;
• The reference public, which encompasses reasonable persons with average thresholds of sensitivity and tolerance, is not necessarily the majority (as INTA had instead submitted), given that the territory of the EU is characterized by substantial differences and the protection of minorities is guaranteed inter alia under Article 2 TEU. Hence, the reference public is “a non-negligible part” of the public and extends beyond the target public of the relevant goods and services, thus also encompassing those who may accidentally come in contact with the sign;
• The relevant territory is that of the EU or part thereof;
• The time of assessment is the time of filing of the trade mark (which, in this case, was August 2020, ie, in the midst of the initial and probably most dramatic phase of the pandemic);
• The notion of ‘accepted principles of morality’ must be interpreted in light of both its usual meaning, e.g., dictionary definitions (including of Urban Dictionary) and the context of use, and consider a number of factors.

IPKat-approved jester

In light of the foregoing – having regard to (i) the meaning of COVIDIOT, (ii) the representation of the sign (including the jester’s cap), and the (iii) goods applied for – the Grand Board concluded that:

The Grand Board further noted that ‘COVIDIOT’ would have certain similarities with the signs at issue in La Mafia se sienta a la mesa and Pablo Escobar [commented on The IPKat here and here], both resulting in a refusal of registration of the respective signs.

Considering then the limitation made to freedom of expression of the applicant’s in light of the refusal to grant registration, the Grand Board concluded – also having regard to the case law of the European Court of Human Rights – that this would be lawful, necessary and proportionate in the present circumstances.

The registration of ‘COVIDIOT’ was also refused under Article 7(1)(b) EUTMR. In so doing, and drawing inspiration from the position adopted in relation to ‘BREXIT’, the Grand Board considered that the term ‘COVIDIOT’ “is understood only as a general reference to individuals who behave in an idiotic way in the context of the COVID pandemic” and not as a term indicating an undertaking.

When reading decisions concerning the public policy / morality absolute ground for refusal/invalidity, I cannot help but wonder: why make things so difficult? To me, an application like the one for ‘COVIDIOT’ could have been rejected more easily and – likely – more quickly solely by focusing on its inherent lack of distinctiveness. As noted by the Grand Board itself:

There are some instances in which Article 7(1)(f) EUTMR does play a relevant role, a recent example being ‘PABLO ESCOBAR’, but more often than not it is a ground that adds undue complexity to trade mark examinations.

Having said that, the decision provides helpful guidance on the construction and application of the principles set forth by the CJEU in FACK JU GÖHTE, notably having regard at the lawful compression of one’s own freedom of commercial expression through denial of the possibility of registration of shocking, vulgar, and offensive signs.

In this regard, two key take-aways are the circumstances that: (i) the assessment of Article 7(1)(f) must be conducted having regard to when the application was filed, not a later time and (ii) a principle of morality may be ‘accepted’ by groups of persons that are not necessarily the majority in the reference territory. To justify this, the Grand Board inter alia referred to Article 2 TEU and the founding values of the EU and its Member States, including the need to respect the rights of minorities.

The latter point leads me to another, loosely related consideration. If I had to venture into a prediction, then I expect to see Article 2 TEU and/or the related wording of Article 21 of the EU Charter (the latter was specifically referenced in Deckmyn [IPKat here] to suggest that the alleged parody at issue in that copyright case should not be regarded as being lawful by the referring court) referred to also in the upcoming decision in another freedom of expression-related trade mark case: IKEA, C-298/23 [IPKat here and here].

While COVIDIOT concerned the freedom to register a trade mark, IKEA relates to the possibility of using someone’s (well-known) trade mark to exercise the freedom to hold and impart political views. The question is whether such an unauthorized use could be considered as occurring with “due cause” or be, instead, prima facie infringing. It might well be the case that the CJEU, perhaps also referring to the Grand Board decision in COVIDIOT, will refer to the founding values of the EU to conclude that the unauthorized use of someone’s well-known trade mark to convey a political expression that is discriminatory (as it appears to be the case in the background national proceedings) would be without due cause and be, therefore, actionable on the side of the trade mark owner.