EUIPO Grand Board finds ‘MARICON PERDIDO’ to be contrary to accepted principles of morality

Can the Spanish phrase ‘MARICON PERDIDO’, which roughly translates as ‘hopeless faggot’, be registered as a trade mark in relation to goods and services in the entertainment sector?

Not according to the Grand Board of the European Union Intellectual Property Office (EUIPO), which held (R 2307/2020‑G) such an application to be contrary to ‘accepted principles of morality’ under Article 7(1)(f) EUTMR.

Let’s see what happened and how the Grand Board reasoned.

In 2020, Turner Broadcasting System Europe filed an application to register the phrase ‘MARICON PERDIDO’, which – the applicant submitted – is Spanish for ‘lost queer’ (though it would perhaps more appropriately translate as ‘hopeless faggot’: read on), as an EU trade mark (EUTM) for goods and services in classes 9 and 41.

The application was made in relation to the title of a then forthcoming TV show that is described as a fiction series based on the memoirs of Bob Pop, writer, critic and Spanish TV personality. In this sense, the factual background is different from the ‘FACK JU GÖHTE’ case [IPKat here and here], because there the trade mark application followed – instead of preceding – the release of the film and the public’s reaction.

The EUIPO Examiner rejected the application for ‘MARICON PERDIDO’ on the basis of Article 7(1)(f) EUTMR, read in conjunction with Article 7(2) therein. As mentioned, that absolute ground prevents the registration of signs that are contrary to public policy or to accepted principles of morality. Finding that ‘MARICON PERDIDO’ would be a sign contrary to accepted principles of morality, the Examiner inter alia reasoned that:

• The reference public would be not just consumers of the relevant goods/services, but also people who encounter the signs by chance;
• The phrase ‘MARICON PERDIDO’ is rude and offensive. Even though there are people who do not find certain expressions upsetting, there is a public interest in ensuring that consumers – especially children and young adults – are not confronted with offensive words.

The EUTM applicant appealed the decision, noting among other things that the LGBTQ community would publicly embrace the word ‘MARICON’, often ironically and/or to reclaim the term.

The 5th Board of Appeal referred the case to the Grand Board given the degree of legal complexity of the matter, as also stemming from the decision of the Court of Justice of the European Union in ‘FACK JU GÖHTE’.

The Grand Board followed a very similar reasoning to the one adopted in its recent decision in ‘COVIDIOT’ [IPKat here].

It recalled at the outset that the rationale of Article 7(1)(f) EUTMR is not only to prohibit the registration of signs whose use would be prohibited under national laws but, more broadly, to pursue a public interest objective. This is in essence not to endorse business initiatives that employ signs that offend against basic values of civilized society (R 495/2005-G, ‘SCREW YOU’).

Turning the notion of ‘accepted principles of morality’, the Grand Board referred to its earlier decision in ‘COVIDIOT’, where it was held that:

• Article 7(1)(f) EUTMR does not encompass any principle of morality but is limited to ‘accepted’ ones;
• The reference public, which encompasses reasonable persons with average thresholds of sensitivity and tolerance, is not necessarily the majority, given that the territory of the EU is characterized by substantial differences and the protection of minorities is guaranteed. 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;
• The notion of ‘accepted principles of morality’ must be interpreted in light of both its usual meaning, e.g., dictionary definitions, and the context of use, and consider a number of factors. Ultimately, what is prohibited is the registration of signs that are “deeply offensive” to the public that encounters them.

Applying this guidance to the trade mark application at hand, the Grand Board considered that registration of the sign would be contrary to accepted principles of morality:

• The expression ‘maricón perdido’ is used as an insult and refers to what may be translated in English as a ‘hopeless poofter’. Therefore, the contested decision correctly concluded that the expression was, at the date of filing (5 May 2020), rude and offensive.
• The meaning of ‘maricón’ is far removed from the term ‘queer’, which is no longer an insult.
• The argument that the LGBT community would seek to reappropriate the term ‘maricon’ stems from US law (including the US Supreme Court decision in Matal v Tam), not EU trade mark law. Related to this, “The intentions of the applicant have no bearing on the outcome of the case. It is not relevant in the assessment of the facts whether the applicant is part of the group that is potentially offended or disparaged by the registered term or whether the applicant, as a legal entity, has dedicated itself to the fight against homophobia. The test is whether the term is offensive to persons of normal levels of tolerance and sensitivity who come into contact with the sign”.

Considering the earlier ‘COVIDIOT’ decision, the reasoning and outcome in ‘MARICON PERDIDO’ are unsurprising.

That said, couldn’t have this case – like ‘COVIDIOT’ – be tackled more simply from a distinctiveness (Article 7(1)(b) EUTMR) or descriptiveness (Article 7(1)(c) EUTMR) perspective? Considering the goods and services claimed, couldn’t an argument be made that consumers would associate the phrase to the title of some kind of creative content? As it is stated in the EUIPO Guidelines, “the Office will refuse the mark when it can be perceived as describing the subject matter of the goods and services and thus has not the capacity to identify the commercial origin of the goods or services.”

Wouldn’t that perhaps be the case of ‘MARICON PERDIDO’ too?

Such a consideration also brings to mind the ‘RUSSIAN WARSHIP, GO F**K YOURSELF’ case, which the General Court decided a few days ago [IPKat here]. While the sign in question there may be considered a slogan and thus face the hurdles typical of these trade marks, it is intriguing to see how the absolute ground evaluation changed over time: initially, the application was refused due to contrariety to Article 7(1)(f) EUTMR but, ultimately, the rejection was motivated by reference to lack of distinctiveness under Article 7(1)(b) EUTMR.

In sum: could it be that, at the end of the day, the only thing that is ‘perdida’ in these applications is the (inflated) role that Article 7(1)(f) has come to play over the past few years?