If the highly respected IPKat blog suggests that the decision of the European Union Intellectual Property Office ("EUIPO") Board of Appeal in the MAGIC PUSSY case is ‘worth a read even just for entertainment purposes', it sounds like an entertaining read!
The MAGIC PUSSY case
The MAGIC PUSSY case deals with ‘offensive' trade marks, by which we mean trade marks that are off-colour rather than aggressive. There have been some big cases in this area of late, including the COVIDIOT and MARICOM PERDIDO cases.
In this article, we discuss a business called Rocket Bean Café, which applied to register the trade mark MAGIC PUSSY in the EU in classes 9 and 30 for ‘virtual and actual coffee and coffee related products.'
A refusal
The application to register MAGIC PUSSY was refused by the EUIPO on the ground that English-speakers might mistakenly understand the trade mark to mean ‘magical female external genitalia' underwear'. Making it contrary to good morals and likely to offend.
Counter arguments
Rocket Bean Café countered with the following arguments:
- Kitties: the primary meaning of the word ‘pussy' is a cute fluffy little cat
- Pussies: there are loads of ‘pussy' related trade marks on the EUIPO trade mark register - PEACE & PUSSY, PUSSY DELUXE, PUSSY LOVERS…;
- No sex: the goods covered by the MAGIC PUSSY application do not have any sexual connotation;
- Innocence: the meaning that was intended here is totally innocent;
- Freedom of expression: blocking the registration of the trade mark MAGIC PUSSY would be ‘an undue compression of the applicant's freedom of expression'- Article 11 of the EU Charter.
But the Examiner was not convinced. The application is, said he or she, vulgar, shocking, rude and/or offensive' and it had to be refused! So the case went on appeal to…
The EUIPO Board of Appeal (BOA)
The BOA overturned the decision of the EUIPO, holding that the trade mark MAGIC PUSSY was not unregistrable on grounds of morality (in other words it was registrable for those who struggle with double negatives). The BOA did the following:
- Precedent: It referred to the well-known CJEU judgment in the FACK JU GOHTE
- Average: It said that in cases like this, the ‘perception of a reasonable person with an average threshold of sensitivity and tolerance is key. '
- It's all about felines not… It suggested that, although some people might associate MAGIC PUSSY and the ‘content of a woman's underwear', the majority will not. Most people will understand MAGIC PUSSY as a reference to a ‘magical pussycat or kitten, like in a fairy tale or fantasy story'.
- No change in perception: It said that the EUIPO's decision failed to explain why ‘the public's perception of the word ‘'PUSSY' has changed to such an extent that… the Office's previous practice… could not be effectively relied on by the applicant.'
In short – MAGIC PUSSY could be registered!
How about South Africa?
There are prohibitions regarding immoral or offensive trade marks in most countries, and South Africa is no exception. Section 10(12) of the South African Trade Marks Act says that ‘a mark which is inherently deceptive or the use of which would be likely to deceive or cause confusion, be contrary to law, or contra bonos mores' cannot be registered.
Some international examples
Here are some trade marks that have been considered on the basis of offensiveness:
- UK - the trade marks TINY PENIS, JESUS and FOOK (clothing) were held to be contrary to accepted principles of morality. Yet the trade mark FCUK for jewellery was fine - the point has been made that the hearing officer in the FCUK case ‘seems to have been particularly influenced by the fact that other regulatory authorities (such as the ASA and Ofcom) had allowed FCUK'.
- EU - The OHIM Board of Appeal ("BOA") held that the trade mark DICK AND FANNY was registrable for clothing - this trade mark was ‘merely in bad taste', despite its ‘rather smutty flavour'.
- EU - The trade mark SCREW YOU for sunglasses, clothing and beverages was held to be unregistrable. These words are interesting:
‘recognizing that ‘'screw'' was a slightly less offensive profanity than ‘'f*ck'', the Board nevertheless held that a substantial number of citizens with a normal level of sensitivity and tolerance would be upset by regular commercial exposure to the term.'
Final words
The IPKat blog applauds the MAGIC PUSSY decision for its ‘reasonable (and refreshing) approach' to the construction of trade marks that might be ‘contrary to public policy or to accepted principles of morality'.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
