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Application for declaration of invalidity of FCUK trade mark, in the name of French Connection Limited, by Dennis Woodman. Appointed Person decision 17 May 2006. Richard Arnold QC
General remarks
Section 3 (3)(a) provides that: A trade mark shall not be registered if it is ...contrary to public policy or accepted principles of morality.
This is an area of law which seems particularly dif-ficult to get one’s head around and for which any sort of additional clarity would be welcome; this decision aims to do just this. There is a good deal of overlap in decided cases between ‘contrary to public policy’ and ‘accepted principles of morality.’ A helpful starting point is Chapter 6 of the Trade Marks Registry Manual, section 39 which is entitled ‘Offensive Marks’. We read: “Marks which offend this section of the Act fall broadly into three types: those with criminal connota-tions, those with religious connotations and explicit/taboo signs. Marks offending public policy are likely to offend accepted principles of morality, eg illegal drug terminology, although the question of public policy may not arise against marks offending accepted principles of morality, eg taboo swear words.”
Kerly (Kerly’s Law of Trade Marks and Trade Names, fourteenth edition, page 212) suggests that both phrases are deliberately broad and are “designed to prevent registration of marks which would cause offence to a section of the public. Offence may be caused on mat-ters of race, sex, religious belief or general matters of taste and decency.” OHIM, on the other hand, has an unstated broader interpretation allowing examiners to refuse applications of particularly famous people under the equivalent Art. 7(1)(f), examples being BILL CLINTON, FIDEL CASTRO, JOHANNES PAUL II.
Introduction and background to the case
A retired businessman Dennis Woodman, acting ‘in the public interest but not for commercial reasons’, applied to have one of the many registered trade marks of French Connection Limited struck off the register as having been registered contrary to section 3(3)(a). This was to be a test case which, if successful, would be used as a springboard to invalidate French Connection’s other marks. The application was in conformity with section 47(3) of the 1994 Act which allowed any person to instigate an invalidity action.
The trade mark at issue was Registration No 2184549 for the mark FCUK registered in class 14 in respect of the following goods: Watches, clocks, horolog-ical and chronometric apparatus and instruments; Watch straps, watch bands; jewellery, costume jewellery; key rings, key holders, key-chains, necklaces, bracelets, ear-rings, brooches and rings; containers adapted to carry the aforesaid goods; parts and fittings for all the aforesaid goods.
The applicant’s case was that FCUK should have been prevented from being registered because of its inherent ability to evoke the swear word F*CK (aster-isk inserted by author so as not to offend trade mark attorneys’ sensibilities). Indeed, FCUK was effectively the expletive because its connection with the latter was ‘transparent, obvious and intended. ’Richard Arnold disagreed and decided that despite its ability to evoke the swear word, FCUK’s ‘intrinsic’ qualities were such as not to render it objectionable in terms of the statutory provision, concluding that the ‘generally accepted moral principle prohibiting the use of swear words does not apply...’. Even our sage President of ITMA has said: “While it is arguable that FCUK is capable of being seen as a swear word, and the judge in this case con-curred with that view, it is equally clear that it will not always evoke the swear word in people’s minds. Thus the judge was absolutely right to reject this appeal (ITMA Press release 29 June 2006)”.
The fact that our President has been impelled to speak publicly on this case illustrates the latter’s intrinsic interest value, both because of the reputation of French Connection Limited which was under attack, and because of the complexities of deciding where the line is to be drawn in deciding a section 3(3)(a) objection. The case follows hot on the heels of the Kevin Scranage’s Application for FOOK (Appointed Person Decision O-079-05 as reported in the November 2005 ITMA Review) where David Kitchin QC upheld the Registrar’s refusal to register the mark as being contrary to section 3 (3)(a) (and hence with the opposite outcome to the present case), the reason-ing being that aurally the mark in some parts of the country or with some accents would be indistinguish-able from the expletive. A part of the applicant’s counter-argument at that time was “what about FCUK?”
Even more recently there was a widely reported case of a section 5 of the Public Order Act fine against use of ‘offensive’ language on T-shirts at a Countryside Alliance event where Splash Clothing had a stall selling T-shirts with the words ‘Bollocks to Blair” (see, for example, The Times, 4 July 2006). The director of the company, Toby Rhodes, was reportedly bemused (but not amused) at the astonishing fixed- penalty notice served by the police as the result of a complaint by a single member of the public. He argued that the word ‘bollocks’ had now come to mean ‘rubbish’ and that it does not have the same shock value as perhaps it once did (although he would find it hard to convince either the UK Registry and OHIM that the word is innocuous enough to be registered as both have expressly banned the word). He then continued, “It’s a bit of a punchy slogan, but I personally find it offensive for young girls to go round in T-shirts with FCUK written on them. Perhaps we should spell it [his slogan] ‘BOLLOKCS to BLAIR.’
This last throw-away comment of Mr Rhodes illus-trates the heart of the problem found in the invalidity action taken by Dennis Woodman. His argument can be paraphrased as a question: “can one simply change the order of the sequence of two consecutive letters of what would otherwise be an objectionable word (and thereby unregistrable by virtue of section 3 (3)(a)), in order to slip it through the registrability net?” Indeed, it would appear that as a result of the precedent set by registration of FCUK, the boundaries are being tested more and more with applications (and accepted registrations) of marks which even to the ‘right thinking member of the public’ (Aldous J in Masterman’s Design Application) would appear to be unsubtle and have very thinly veiled double (or sin-gle) entendres.
Of course, one has other marks registered under French Connection Limited itself to ponder over, such as ‘FCUK AT HOME,’ registered inter alia, for bed and bath linen in Class 24 (CTM 002116903 claiming UK priority) or EAU DE FCUK for perfumes and other class 3 goods (CTM 001809532 claiming UK pri-ority). Unsubtle? But not objectionable under CTMR 7(f) - the equivalent of section 3 (3)(a) of the 1994 Act. But what about registered UK marks such as Registration No 2291643 CNUT (to which we will return - also a CTM), Registration No 2313304 WNAK (also a CTM) and Registration No 2313305 WNAKER, for class 18 and class 25 goods, owned by the same company, Cnut Limited? Surely it is not just the dyslexic reader who might raise an eyebrow if con-fronted with these marks on an advertisement dis-played on the side of a Clapham omnibus (if it were to pass the Advertising Standards Authority’s crite-ria). One wonders whether a mark such as Registration No 2313305, if it were registered for ‘image carrying goods,’ could be eligible for invalida-tion on s3(1)(c) grounds? Humour aside, if Justice Rattee were to adjudicate another case such as the (in)famous French Connection Ltd v Sutton case (2000 ETMR 341, 361) where in his obiter remark he stated that he found the case to be ‘unpalatable in the extreme, having regard to its subject matter’, what would he have said about some of these other marks?
Summary of arguments of the parties
In arguing that the mark FCUK is morally offensive and contrary to s3(3)(a), the applicant presented evi-dence which included extracts from the original ex-parte examination of the mark, a number of com-plaints to the Advertising Standards Authority (ASA), and French Connection’s own website where, the applicant claimed, FCUK was relying not on a ‘play on words’ but on the primary meaning of the ‘offensive word to promote its sales by shock value.’ The registered proprietor in turn provided evidence to show that FCUK was first and foremost an acronym for French Connection UK and had become a highly rated brand, indeed one of the top five brands in the UK for young fashion customers. It had 56 retail stores, 25 franchised retail outlets in the UK and licence agreements with several major well-estab-lished chains such as Boots, none of whose customers had apparently complained about the association with FCUK (which otherwise would have risked damage to the goodwill of the respective businesses). It sponsored major events and sports personalities. It even had its own store card - FCUK cash - which operated in conjunction with the Royal Bank of Scotland (not a play on words?). Other evidence of the ‘innocuous’ nature of the mark included adher-ence to section 5 on decency of the British Code of Advertising, Sales Promotion and Direct Marketing (‘CAP’) for ‘eau de fcuk;’ ‘he says French Connection, she says fcuk’ and ‘vive le fcuk.’ Other adjudications by the ASA (which uses CAP as a standard) show that where FCUK was not used in a phrase where it could be interpreted as an expletive, and considered that consumers would understand it as a reference to the French Connection UK brand, then no complaint would be upheld.
Review of authorities
Perhaps the most interesting part of this decision is the vast amount of reference material that is cited. Astonishingly, about 70% of the decision, or 30 out of a total of 44 pages, is devoted to a discussion of the wording of the law, its background, and case law. We are first reminded that the English term ‘public poli-cy’ from Section 3 (3)(a) ‘contrary to public policy or accepted principles of morality’ is ‘an attempt at an idiomatic translation’ of the French expression ordre public of Article 3(1)(f) of the Trade Marks Directive and Article 7 (1)(f) of the Community Trade Mark Regulation which in turn comes from Article 6 quin-quies B(3) of the Paris Convention for the Protection of Industrial Property of 1883 (Stockholm Act 1967). Hence the French expression ordre public is the authentic term (of the correctly translated). Convention phrase ‘contrary to morality or public order’ (interested readers are referred to the Advocate General Jacob’s opinion in Case C-377/98. Kingdom of the Netherlands v European Parliament and Council for the European Union for a much fuller background dis-cussion: this case was not referred to by Mr Arnold).
This first reminder of origin of expression of ‘public policy’ is followed by expansive references and forays into trade mark, registered design, patent and copy-right legislation and case law, all with a view to dis-covering the meaning of morality and public order in reference to intellectual property. The leading case in designs, and influential to some degree in trade mark case law, is Masterman’s Design [1991] RPC 89 - the case of the hairy doll with mimicked male genitalia which was allowed on appeal by Aldous J; this pro-duced the concept of the ‘right-thinking member of public’ in relation to an objective test of what is con-sidered to be offensive.
There are only two leading UK cases under the 1994 Act dealing with ‘taboo’ or explicit language - Ghazilian’s Trade Mark Application (the TINY PENIS case) heard by the Appointed Person Simon Thorley QC, [2002] ETMR 57, and Kevin Scranage’s Application for FOOK mentioned above. A parallel OHIM case is Dick Lexic Limited’s Application, DICK & FANNY - Fourth Board of Appeal, 2003 (Case R 111/2002-4, [2005] ETMR 99). In Ghazilian the test that emerged, building on Masterman’s Design, was that mere offence to a section of the public, in the sense that that section of the pub-lic would consider the mark distasteful, is not enough for section 3(3)(a) to apply. It applies if use of the mark would justifiably cause outrage, or would be the subject of justifiable censure amongst an identifiable section of the public, as being likely significantly to undermine current religious, family or social values.
Dick Lexic held that the slang meaning of a word may lead to a objection even if its normal meaning does not, but that a mark which does not proclaim an opinion, or contain an incitement or convey an insult is less likely to be objectionable than one that does. Kevin Scranage was decided with reference to the above two cases and to JESUS (below).
The leading case on marks with religious connota-tions is JESUS (Basic Trademark SA’s Trade Mark Application [2005] RPC 25) heard by Geoffrey Hobbs QC, where the important principle was affirmed that section (3)(3)(a) should be interpreted and applied consistently with Article 10 of the European Convention on Human Rights (ECHR) which gives the right to freedom of expression (including ‘com-mercial’ expression) subject only to whatever is neces-sary ‘for the prevention of disorder or crime, for the protection of health or morals...’ This therefore pro-vides the broadest legal context for dealing with ‘anti-social branding.’ Consequently, in the paraphrasing of Richard Arnold, ‘It follows that registration should be refused only where this is justified by a pressing social need and is proportionate to the legitimate aim pursued. Furthermore, any real doubt as to the appli-cability of the objection should be resolved by upholding the right to freedom of expression and thus by permitting the registration.’ Another principle established in this case is that different considerations apply to different categories of marks that offend sec-tion 3 (3)(a).
Finally, but perhaps just as importantly, a CFI deci-sion, T-224/01 Durferrit v OHIM (NU-TRIDE), subse-quently applied in T-140/02 Sportwetten v OHIM (INTERTOPS) (see ITMA Review, November 2005), held that this section deals with the intrinsic qualities of the mark itself rather than circumstances relating to the conduct of the person applying for the mark.
Outcome of analysis and decision
And the conclusion of the lengthy review and analy-sis? At paragraph 54 Richard Arnold QC states, “I have to say that I do not find it easy to understand the rationale which lies behind provisions such as sec-tion 3(3)(a) of the 1994 Act. There is a paradox... refusal to grant an intellectual property right pur-suant to such provisions does not prevent the appli-cant from using the subject matter of the right in com-merce”. Be that as it may, with the guiding principles (however theoretically problematic) now well estab-lished, these are applied to the facts of the present case. After a careful review of such facts he states that “whether and to what extent it [FCUK] will be seen as the swear word depends on the manner and circum-stances of its use.” He continues: ”It is clear that French Connection has used FCUK in some of its advertising in a manner which was intended to, and did, evoke the swear word in read-ers’ minds... It does not follow from this, however, that it is an intrinsic quality of the mark FCUK that it will always evoke the swear word in consumers’ minds regardless of how it is used.” As an illustration of this point Richard Arnold introduces the mark CNUT, referring to the website slogan: “King Cnut may not have been able to turn back the tide in 1016. But he does make exceedingly good T-shirts. Probably the best T-shirts in the World.” From this he infers: “While these uses of the word CNUT may evoke another swear word in some read-ers’ minds, it seems to me that they are more likely to bring other connotations to mind... it would be quite easy to imagine ‘word play’ involving CNUT that brought the swear word to mind rather than the English King. What in my view this example demon-strates is the importance of context. A mark that used in one way is relatively innocuous may become quite offensive if used in a different way and vice-versa.” “In particular, a mark of the sort presently under consideration may provoke quite different responses depending on whether the consumer is led to regard it as an anagram on the one had or an acronym (or set of letters) on the other hand. ... a mark is only objec-tionable under section 3(3)(a), if its use would contra-vene a generally accepted moral principle by reason of its intrinsic qualities... the manner in which the mark is subsequently used [after the date of applica-tion] can neither infect the mark with, nor immunise it from, objectionability.”
And finally, “...the intrinsic qualities of the mark FCUK are not such as to render it objectionable. It is not the swear word even though it can be used, and has been used, to evoke the swear word. Accordingly the generally accepted moral principle prohibiting the use of swear words does not apply to it.” The appeal therefore failed and costs were awarded.
Some concluding reflections
Important in this decision was the concept and role of ‘intrinsic quality.’ Kerly, too, p212, notes in relation to s3(3)(a) that “Like other absolute grounds, these pro-visions are directed at the intrinsic qualities of [the] mark itself.” However, Durferrit v OHIM (NU-TRIDE) was all to do with a bad faith ground: an application for a similar mark by an embittered former commer-cial representative, and the other leading case, INTERTOPS, was to do with an applicant who did not have a licence to conduct gambling in Germany. These were circumstances that were extrinsic to the analysis of the marks in question. So how does this apply to the ‘meaning’ of a word mark? The answer, in Richard Arnold’s analysis is in context. A word like FCUK is innocuous in itself but could be offensive in given extrinsic circumstances or context where the expletive sense is strongly suggested. But that, to him is not a ground for refusing registration. Is this, however, an adequate analysis? What gives meaning to a word, if not in the way it is used? One immediately thinks of Wittgenstein’s Philosophical Investigations (does one not?) as did the erudite Geoffrey Hobbs QC, in the DIGEO Broadband series of marks case (decision of the Appointed Person O-090-06): “As famously affirmed by Ludwig Wittgenstein in his later work Philosophical Investigations (1953) at paragraph 43: ‘For a large class of cases - though not for all - in which we use the word ‘meaning’ it can be defined thus: the mean-ing of a word is its use in the language.’”
If we may be permitted to go a little further with this subject matter (encouraged by Hobbs’ incursion into philosophy - is this part of a Hobbes tradition?), the Philosophical Investigations also introduces us to the notion of ‘language games.’ A word may be given dif-ferent meanings, according to how it is used in a lan-guage game. However, the rules of a language game may change, and different rules may be applied to different games. According to Wittgenstein, there is no single rule which is common to all games. What this means - unless this writer has grossly misunder-stood Wittgenstein - is that context defines the lan-guage game and that the meaning of the word (in our case the word mark) actually always depends on con-text.
To give an illustration - and rather naughtily turn-ing Richard Arnold’s example on its head - take the CNUT example. Is this ‘offensive?’ Evidently not, given the first association with King Cnut. But if one were to go beyond the home page of the website of the proprietor of this mark and click on the product range, and look elsewhere too on the site, one sees that all is not as innocuous as first appeared. For example, we read: “King Cnut: who was he? ‘The King of spelling mistakes.’” Why mention misspelling unless this creates the context to see CNUT as a mis-spelt word? If one turns to one of the site’s leading T-shirt products, all is revealed. The T-shirt, sold in various sizes and colour combinations, is emblazoned with the slogan ‘It’s spelt f*ck, you stupid cnut’(asterisk inserted by author!). And that’s just the beginning of the examples. Does not context in this case indicate what is ‘intrinsic’ to the sign, namely its meaning in use? Furthermore, does knowledge of this use not also provide a clearer hermeneutic for WNAK and WNAKER, also owned by Cnut Limited? A play on words, or a language game?
The writer recommends a close read of Richard Arnold’s decision for anyone who wishes to get to grips with the complexities of s3 (3)(a), which after initial clarification from case law, opens up a Pandora’s box of issues calculated to get us all thinking.
This article first appeared as a feature in the September 2006 ITMA Review
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Application for declaration of invalidity of FCUK trade mark, in the name of French Connection Limited, by Dennis Woodman. Appointed Person decision 17 May 2006. Richard Arnold QC
General remarks
Section 3 (3)(a) provides that: A trade mark shall not be registered if it is ...contrary to public policy or accepted principles of morality.
This is an area of law which seems particularly dif-ficult to get one’s head around and for which any sort of additional clarity would be welcome; this decision aims to do just this. There is a good deal of overlap in decided cases between ‘contrary to public policy’ and ‘accepted principles of morality.’ A helpful starting point is Chapter 6 of the Trade Marks Registry Manual, section 39 which is entitled ‘Offensive Marks’. We read: “Marks which offend this section of the Act fall broadly into three types: those with criminal connota-tions, those with religious connotations and explicit/taboo signs. Marks offending public policy are likely to offend accepted principles of morality, eg illegal drug terminology, although the question of public policy may not arise against marks offending accepted principles of morality, eg taboo swear words.”
Kerly (Kerly’s Law of Trade Marks and Trade Names, fourteenth edition, page 212) suggests that both phrases are deliberately broad and are “designed to prevent registration of marks which would cause offence to a section of the public. Offence may be caused on mat-ters of race, sex, religious belief or general matters of taste and decency.” OHIM, on the other hand, has an unstated broader interpretation allowing examiners to refuse applications of particularly famous people under the equivalent Art. 7(1)(f), examples being BILL CLINTON, FIDEL CASTRO, JOHANNES PAUL II.
Introduction and background to the case
A retired businessman Dennis Woodman, acting ‘in the public interest but not for commercial reasons’, applied to have one of the many registered trade marks of French Connection Limited struck off the register as having been registered contrary to section 3(3)(a). This was to be a test case which, if successful, would be used as a springboard to invalidate French Connection’s other marks. The application was in conformity with section 47(3) of the 1994 Act which allowed any person to instigate an invalidity action.
The trade mark at issue was Registration No 2184549 for the mark FCUK registered in class 14 in respect of the following goods: Watches, clocks, horolog-ical and chronometric apparatus and instruments; Watch straps, watch bands; jewellery, costume jewellery; key rings, key holders, key-chains, necklaces, bracelets, ear-rings, brooches and rings; containers adapted to carry the aforesaid goods; parts and fittings for all the aforesaid goods.
The applicant’s case was that FCUK should have been prevented from being registered because of its inherent ability to evoke the swear word F*CK (aster-isk inserted by author so as not to offend trade mark attorneys’ sensibilities). Indeed, FCUK was effectively the expletive because its connection with the latter was ‘transparent, obvious and intended. ’Richard Arnold disagreed and decided that despite its ability to evoke the swear word, FCUK’s ‘intrinsic’ qualities were such as not to render it objectionable in terms of the statutory provision, concluding that the ‘generally accepted moral principle prohibiting the use of swear words does not apply...’. Even our sage President of ITMA has said: “While it is arguable that FCUK is capable of being seen as a swear word, and the judge in this case con-curred with that view, it is equally clear that it will not always evoke the swear word in people’s minds. Thus the judge was absolutely right to reject this appeal (ITMA Press release 29 June 2006)”.
The fact that our President has been impelled to speak publicly on this case illustrates the latter’s intrinsic interest value, both because of the reputation of French Connection Limited which was under attack, and because of the complexities of deciding where the line is to be drawn in deciding a section 3(3)(a) objection. The case follows hot on the heels of the Kevin Scranage’s Application for FOOK (Appointed Person Decision O-079-05 as reported in the November 2005 ITMA Review) where David Kitchin QC upheld the Registrar’s refusal to register the mark as being contrary to section 3 (3)(a) (and hence with the opposite outcome to the present case), the reason-ing being that aurally the mark in some parts of the country or with some accents would be indistinguish-able from the expletive. A part of the applicant’s counter-argument at that time was “what about FCUK?”
Even more recently there was a widely reported case of a section 5 of the Public Order Act fine against use of ‘offensive’ language on T-shirts at a Countryside Alliance event where Splash Clothing had a stall selling T-shirts with the words ‘Bollocks to Blair” (see, for example, The Times, 4 July 2006). The director of the company, Toby Rhodes, was reportedly bemused (but not amused) at the astonishing fixed- penalty notice served by the police as the result of a complaint by a single member of the public. He argued that the word ‘bollocks’ had now come to mean ‘rubbish’ and that it does not have the same shock value as perhaps it once did (although he would find it hard to convince either the UK Registry and OHIM that the word is innocuous enough to be registered as both have expressly banned the word). He then continued, “It’s a bit of a punchy slogan, but I personally find it offensive for young girls to go round in T-shirts with FCUK written on them. Perhaps we should spell it [his slogan] ‘BOLLOKCS to BLAIR.’
This last throw-away comment of Mr Rhodes illus-trates the heart of the problem found in the invalidity action taken by Dennis Woodman. His argument can be paraphrased as a question: “can one simply change the order of the sequence of two consecutive letters of what would otherwise be an objectionable word (and thereby unregistrable by virtue of section 3 (3)(a)), in order to slip it through the registrability net?” Indeed, it would appear that as a result of the precedent set by registration of FCUK, the boundaries are being tested more and more with applications (and accepted registrations) of marks which even to the ‘right thinking member of the public’ (Aldous J in Masterman’s Design Application) would appear to be unsubtle and have very thinly veiled double (or sin-gle) entendres.
Of course, one has other marks registered under French Connection Limited itself to ponder over, such as ‘FCUK AT HOME,’ registered inter alia, for bed and bath linen in Class 24 (CTM 002116903 claiming UK priority) or EAU DE FCUK for perfumes and other class 3 goods (CTM 001809532 claiming UK pri-ority). Unsubtle? But not objectionable under CTMR 7(f) - the equivalent of section 3 (3)(a) of the 1994 Act. But what about registered UK marks such as Registration No 2291643 CNUT (to which we will return - also a CTM), Registration No 2313304 WNAK (also a CTM) and Registration No 2313305 WNAKER, for class 18 and class 25 goods, owned by the same company, Cnut Limited? Surely it is not just the dyslexic reader who might raise an eyebrow if con-fronted with these marks on an advertisement dis-played on the side of a Clapham omnibus (if it were to pass the Advertising Standards Authority’s crite-ria). One wonders whether a mark such as Registration No 2313305, if it were registered for ‘image carrying goods,’ could be eligible for invalida-tion on s3(1)(c) grounds? Humour aside, if Justice Rattee were to adjudicate another case such as the (in)famous French Connection Ltd v Sutton case (2000 ETMR 341, 361) where in his obiter remark he stated that he found the case to be ‘unpalatable in the extreme, having regard to its subject matter’, what would he have said about some of these other marks?
Summary of arguments of the parties
In arguing that the mark FCUK is morally offensive and contrary to s3(3)(a), the applicant presented evi-dence which included extracts from the original ex-parte examination of the mark, a number of com-plaints to the Advertising Standards Authority (ASA), and French Connection’s own website where, the applicant claimed, FCUK was relying not on a ‘play on words’ but on the primary meaning of the ‘offensive word to promote its sales by shock value.’ The registered proprietor in turn provided evidence to show that FCUK was first and foremost an acronym for French Connection UK and had become a highly rated brand, indeed one of the top five brands in the UK for young fashion customers. It had 56 retail stores, 25 franchised retail outlets in the UK and licence agreements with several major well-estab-lished chains such as Boots, none of whose customers had apparently complained about the association with FCUK (which otherwise would have risked damage to the goodwill of the respective businesses). It sponsored major events and sports personalities. It even had its own store card - FCUK cash - which operated in conjunction with the Royal Bank of Scotland (not a play on words?). Other evidence of the ‘innocuous’ nature of the mark included adher-ence to section 5 on decency of the British Code of Advertising, Sales Promotion and Direct Marketing (‘CAP’) for ‘eau de fcuk;’ ‘he says French Connection, she says fcuk’ and ‘vive le fcuk.’ Other adjudications by the ASA (which uses CAP as a standard) show that where FCUK was not used in a phrase where it could be interpreted as an expletive, and considered that consumers would understand it as a reference to the French Connection UK brand, then no complaint would be upheld.
Review of authorities
Perhaps the most interesting part of this decision is the vast amount of reference material that is cited. Astonishingly, about 70% of the decision, or 30 out of a total of 44 pages, is devoted to a discussion of the wording of the law, its background, and case law. We are first reminded that the English term ‘public poli-cy’ from Section 3 (3)(a) ‘contrary to public policy or accepted principles of morality’ is ‘an attempt at an idiomatic translation’ of the French expression ordre public of Article 3(1)(f) of the Trade Marks Directive and Article 7 (1)(f) of the Community Trade Mark Regulation which in turn comes from Article 6 quin-quies B(3) of the Paris Convention for the Protection of Industrial Property of 1883 (Stockholm Act 1967). Hence the French expression ordre public is the authentic term (of the correctly translated). Convention phrase ‘contrary to morality or public order’ (interested readers are referred to the Advocate General Jacob’s opinion in Case C-377/98. Kingdom of the Netherlands v European Parliament and Council for the European Union for a much fuller background dis-cussion: this case was not referred to by Mr Arnold).
This first reminder of origin of expression of ‘public policy’ is followed by expansive references and forays into trade mark, registered design, patent and copy-right legislation and case law, all with a view to dis-covering the meaning of morality and public order in reference to intellectual property. The leading case in designs, and influential to some degree in trade mark case law, is Masterman’s Design [1991] RPC 89 - the case of the hairy doll with mimicked male genitalia which was allowed on appeal by Aldous J; this pro-duced the concept of the ‘right-thinking member of public’ in relation to an objective test of what is con-sidered to be offensive.
There are only two leading UK cases under the 1994 Act dealing with ‘taboo’ or explicit language - Ghazilian’s Trade Mark Application (the TINY PENIS case) heard by the Appointed Person Simon Thorley QC, [2002] ETMR 57, and Kevin Scranage’s Application for FOOK mentioned above. A parallel OHIM case is Dick Lexic Limited’s Application, DICK & FANNY - Fourth Board of Appeal, 2003 (Case R 111/2002-4, [2005] ETMR 99). In Ghazilian the test that emerged, building on Masterman’s Design, was that mere offence to a section of the public, in the sense that that section of the pub-lic would consider the mark distasteful, is not enough for section 3(3)(a) to apply. It applies if use of the mark would justifiably cause outrage, or would be the subject of justifiable censure amongst an identifiable section of the public, as being likely significantly to undermine current religious, family or social values.
Dick Lexic held that the slang meaning of a word may lead to a objection even if its normal meaning does not, but that a mark which does not proclaim an opinion, or contain an incitement or convey an insult is less likely to be objectionable than one that does. Kevin Scranage was decided with reference to the above two cases and to JESUS (below).
The leading case on marks with religious connota-tions is JESUS (Basic Trademark SA’s Trade Mark Application [2005] RPC 25) heard by Geoffrey Hobbs QC, where the important principle was affirmed that section (3)(3)(a) should be interpreted and applied consistently with Article 10 of the European Convention on Human Rights (ECHR) which gives the right to freedom of expression (including ‘com-mercial’ expression) subject only to whatever is neces-sary ‘for the prevention of disorder or crime, for the protection of health or morals...’ This therefore pro-vides the broadest legal context for dealing with ‘anti-social branding.’ Consequently, in the paraphrasing of Richard Arnold, ‘It follows that registration should be refused only where this is justified by a pressing social need and is proportionate to the legitimate aim pursued. Furthermore, any real doubt as to the appli-cability of the objection should be resolved by upholding the right to freedom of expression and thus by permitting the registration.’ Another principle established in this case is that different considerations apply to different categories of marks that offend sec-tion 3 (3)(a).
Finally, but perhaps just as importantly, a CFI deci-sion, T-224/01 Durferrit v OHIM (NU-TRIDE), subse-quently applied in T-140/02 Sportwetten v OHIM (INTERTOPS) (see ITMA Review, November 2005), held that this section deals with the intrinsic qualities of the mark itself rather than circumstances relating to the conduct of the person applying for the mark.
Outcome of analysis and decision
And the conclusion of the lengthy review and analy-sis? At paragraph 54 Richard Arnold QC states, “I have to say that I do not find it easy to understand the rationale which lies behind provisions such as sec-tion 3(3)(a) of the 1994 Act. There is a paradox... refusal to grant an intellectual property right pur-suant to such provisions does not prevent the appli-cant from using the subject matter of the right in com-merce”. Be that as it may, with the guiding principles (however theoretically problematic) now well estab-lished, these are applied to the facts of the present case. After a careful review of such facts he states that “whether and to what extent it [FCUK] will be seen as the swear word depends on the manner and circum-stances of its use.” He continues: ”It is clear that French Connection has used FCUK in some of its advertising in a manner which was intended to, and did, evoke the swear word in read-ers’ minds... It does not follow from this, however, that it is an intrinsic quality of the mark FCUK that it will always evoke the swear word in consumers’ minds regardless of how it is used.” As an illustration of this point Richard Arnold introduces the mark CNUT, referring to the website slogan: “King Cnut may not have been able to turn back the tide in 1016. But he does make exceedingly good T-shirts. Probably the best T-shirts in the World.” From this he infers: “While these uses of the word CNUT may evoke another swear word in some read-ers’ minds, it seems to me that they are more likely to bring other connotations to mind... it would be quite easy to imagine ‘word play’ involving CNUT that brought the swear word to mind rather than the English King. What in my view this example demon-strates is the importance of context. A mark that used in one way is relatively innocuous may become quite offensive if used in a different way and vice-versa.” “In particular, a mark of the sort presently under consideration may provoke quite different responses depending on whether the consumer is led to regard it as an anagram on the one had or an acronym (or set of letters) on the other hand. ... a mark is only objec-tionable under section 3(3)(a), if its use would contra-vene a generally accepted moral principle by reason of its intrinsic qualities... the manner in which the mark is subsequently used [after the date of applica-tion] can neither infect the mark with, nor immunise it from, objectionability.”
And finally, “...the intrinsic qualities of the mark FCUK are not such as to render it objectionable. It is not the swear word even though it can be used, and has been used, to evoke the swear word. Accordingly the generally accepted moral principle prohibiting the use of swear words does not apply to it.” The appeal therefore failed and costs were awarded.
Some concluding reflections
Important in this decision was the concept and role of ‘intrinsic quality.’ Kerly, too, p212, notes in relation to s3(3)(a) that “Like other absolute grounds, these pro-visions are directed at the intrinsic qualities of [the] mark itself.” However, Durferrit v OHIM (NU-TRIDE) was all to do with a bad faith ground: an application for a similar mark by an embittered former commer-cial representative, and the other leading case, INTERTOPS, was to do with an applicant who did not have a licence to conduct gambling in Germany. These were circumstances that were extrinsic to the analysis of the marks in question. So how does this apply to the ‘meaning’ of a word mark? The answer, in Richard Arnold’s analysis is in context. A word like FCUK is innocuous in itself but could be offensive in given extrinsic circumstances or context where the expletive sense is strongly suggested. But that, to him is not a ground for refusing registration. Is this, however, an adequate analysis? What gives meaning to a word, if not in the way it is used? One immediately thinks of Wittgenstein’s Philosophical Investigations (does one not?) as did the erudite Geoffrey Hobbs QC, in the DIGEO Broadband series of marks case (decision of the Appointed Person O-090-06): “As famously affirmed by Ludwig Wittgenstein in his later work Philosophical Investigations (1953) at paragraph 43: ‘For a large class of cases - though not for all - in which we use the word ‘meaning’ it can be defined thus: the mean-ing of a word is its use in the language.’”
If we may be permitted to go a little further with this subject matter (encouraged by Hobbs’ incursion into philosophy - is this part of a Hobbes tradition?), the Philosophical Investigations also introduces us to the notion of ‘language games.’ A word may be given dif-ferent meanings, according to how it is used in a lan-guage game. However, the rules of a language game may change, and different rules may be applied to different games. According to Wittgenstein, there is no single rule which is common to all games. What this means - unless this writer has grossly misunder-stood Wittgenstein - is that context defines the lan-guage game and that the meaning of the word (in our case the word mark) actually always depends on con-text.
To give an illustration - and rather naughtily turn-ing Richard Arnold’s example on its head - take the CNUT example. Is this ‘offensive?’ Evidently not, given the first association with King Cnut. But if one were to go beyond the home page of the website of the proprietor of this mark and click on the product range, and look elsewhere too on the site, one sees that all is not as innocuous as first appeared. For example, we read: “King Cnut: who was he? ‘The King of spelling mistakes.’” Why mention misspelling unless this creates the context to see CNUT as a mis-spelt word? If one turns to one of the site’s leading T-shirt products, all is revealed. The T-shirt, sold in various sizes and colour combinations, is emblazoned with the slogan ‘It’s spelt f*ck, you stupid cnut’(asterisk inserted by author!). And that’s just the beginning of the examples. Does not context in this case indicate what is ‘intrinsic’ to the sign, namely its meaning in use? Furthermore, does knowledge of this use not also provide a clearer hermeneutic for WNAK and WNAKER, also owned by Cnut Limited? A play on words, or a language game?
The writer recommends a close read of Richard Arnold’s decision for anyone who wishes to get to grips with the complexities of s3 (3)(a), which after initial clarification from case law, opens up a Pandora’s box of issues calculated to get us all thinking.
This article first appeared as a feature in the September 2006 ITMA Review
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