That caught your attention didn’t it! That’s what brands and trade marks are supposed to do. It is easy to state that sensation, sex and scandal sell but what is not so easy is to identify where, in law, to draw the line between sensation and offence, bad taste and outrage, sexual connotation and obscenity.
This issue has recently been considered by the Trade Marks Registry following an attempt by Mr Dennis Woodman to obtain a declaration of invalidity of French Connection Ltd’s famous trade mark FCUK on the grounds of it being offensive.
Section 3(3)(a) of the Trade Marks 1994 states:
“A trade mark shall not be registered if it is… contrary to public policy or to accepted principles of morality.”
We are here dealing with the inherent qualities of a trade mark and not the goods or services to which it is applied or to third parties rights. Whilst there is some overlap between “public policy” and “principles of morality”, what the court had to consider in this case was the extent to which, if at all, FCUK could cause outrage or undermine religious, family or social values.
The court’s starting point was to consider whether the expletive itself, correctly spelt, would be declared invalid as a trade mark. It concluded that although the expletive is commonly heard and seen in the media and in daily life, this does not make it any more acceptable. It is, however, clear that the expletive remains in the eyes of the courts as “more than distasteful or smutty [and] likely to cause justifiable outrage amongst a significant section of the public.”
This point decided, the court then turned to the issue of whether FCUK was acceptable. The test, to be applied to each case on its facts, is whether the mark would cause outrage to a right thinking member of the public and/or be justifiably subject to censure on the grounds of it undermining current moral, religious and family values. In applying this test the court will not be too precious. Poor taste or political incorrectness does not automatically mean outrage and invalidity and proper consideration must be given to the rights of freedom of expression. An identifiable section of the public must be offended which, depending on the degree of outrage involved, covers not only the public at large but also small sections of it.
The court noted that FCUK has no meaning as such and that it is both spoken and heard as the letters rather than the word. It noted also that although there have been a number of ASA complaints upheld against FCUK, none of these were in respect of the trade mark on its own but were always for its combination with some other word. The court decided that FCUK was effectively no more than a visual play on words. Mr Woodman’s objection was based on FCUK being capable of being seen as a word which it is in fact not, and in the circumstances, there were insufficient sufficient reasons to invalidate it. In what may perhaps be a fitting epitaph to FCUK as a brand (in October 2005 French Connection announced plans to significantly scale back its use of FCUK), Mr. Woodman’s claim failed.
One trade mark application which did cross the line was for TINY PENIS, rejected because the court felt it was used not in the ordinary descriptive sense but commercially to denote the origin of the products to which it was attached and was therefore unjustifiably offensive. Interestingly, the applicant subsequently went on to obtain a registered Community Trade Mark for the same words highlighting the importance of the cultural and linguistic factors involved.
To conclude, registered trade marks can be risqué, they can be smutty and in poor taste, but they must not outrage significant sections of the public and the time has yet to come when brand managers can freely deploy the FCUK word itself correctly spelt.