Offensive to whom? Why ‘Maricon Perdido' failed the morality test

In rejecting on morality grounds, did the EUIPO’s Grand Board miss an opportunity to modernise how it manages the evolution of language, considers Paula Vener of Inventa.

Occasionally, the principle of morality, as outlined in Article 7(1)(f) of the European Union Trademark Regulation (EUTMR), prompts discussions regarding its interpretation.

Since this principle is grounded in subjective values that rely on the fundamental ethical norms accepted by civilised society at any given time, it must be constantly reassessed, reconsidered and even modernised.

Over the years, the EU Intellectual Property Office (EUIPO) examiners and the EU Boards of Appeal have established significant jurisprudence. In certain instances, the refusal of a trademark is unequivocal, such as in cases involving profanity and vulgar language, as the case “F*uck the small talk”.

Another clear precedent is the EUIPO's refusal of the trademark "George Floyd", where the Office argued that the name should not be trivialised due to the political and tragic nature of his death.

In other instances, however, refusals grounded in the principle of morality may be perceived as conservative or misaligned with the evolving norms of society, and potentially as limitation of freedom of expression, as in the controversial case of the trademark “Fack Ju Göhte”.

A recent example of the tension between what is deemed acceptable by European Union society as an expression consistent with moral standards and the redefinition of a term was examined by the Grand Board of the EUIPO in relation to the trademark application for "Maricon Perdido”, in the case R 2307/2020-G.

Outline of the case

On 5 May 5 2020, a trademark application for the Spanish term "Maricon Perdido", that translated to English might be translated to “Lost Queer”, was submitted, targeting the following goods and services:

• Class 9: Audio visual recordings in all media, featuring entertainment in the nature of an on-going television series in the field of comedy, action, drama and adventure; downloadable television programming featuring comedy, action, drama and adventure distributed via the Internet and wireless communications.
• Class 41: Entertainment services, namely, a multimedia program series featuring comedy, action, drama and adventure distributed via various platforms across multiple forms of transmission media.

On November 25, 2020, the EUIPO examiner issued a complete refusal of the application under Article 7(1)(f) of the EUTMR. The primary reason for this decision was that the goods and services in question were mass-market products intended for the average consumer.

The examiner contended that the offensive and vulgar nature of the expression would make it accessible to everyone, including children and young people, thereby contravening the accepted principles of morality.

The applicant, however, did not agree with the examiner’s decision and appealed.

Applicant’s appeal

The main argument raised by the applicant centres on the historical evolution of the term "Maricon" over the years.

According to the evidence submitted with the appeal, while "Maricon" was historically regarded as offensive, the LGBT community has since embraced and reclaimed the term.

This appropriation aims to negate its pejorative connotations and empower both the term itself and the LGBT community as a whole. Therefore, the applicant argues that the examiner misunderstood the expression, which is not offensive, and, in consequence, cannot be contrary to Article 7(1)(f) of the EUTMR.

On the other hand, if the term is still considered offensive, then prior trademarks incorporating the translation of the word "Maricon," as well as all trademarks containing the English term "Queer," ought to have been denied, which the EUIPO did not address.

The applicant concludes that as those trademarks are registered, the decision would be contrary to principles of equal treatment and sound administration.

The Grand Board decision

The Grand Board divided the decision into three main points: Article 7(1)(f) EUTMR, Earlier registrations and registrations by the Oficina Española de Patents y Marcas (Spanish Patent and Trade Mark Office, OEPM) and freedom of expression.

Article 7(1)(f) EUTMR

The Grand Board initiated its analysis by scrutinising the public policy and principle of morality in accordance with established legal precedents, such as case R 495/2005-G, "Screw You."

In this precedent, the Grand Board determined that trademark registration should not be granted for signs that violate public policy or the accepted principles of morality.

As stablished in the law-case R260/2021-G, “COVIDIOT”, a sign is contrary to accepted principles of morality if it is perceived by the relevant public as contrary to the fundamental moral values at a given time, being an affront.

In other words, the principle of morality is defined according to the social consensus prevailing in that society.

The time to value if the expression is or not offensive, in this case, was fixed as the filing of the trademark, and the relevant public the Spanish-speaking public at large, as other persons could come across the sign, without searching for it.

The main point here was to analyse the meaning of the sign applied for and the reappropriation and rehabilitation of it. The Grand Board disagrees with the translation argued by the applicant, considering that “Lost Queer” would not be the correct translation and does not bear the complete exactitude of “Maricon Perdido”.

In this decision the Grand Board decided to stick to a more dictionary definition and not properly consider the new waves of the Spanish-speaking public.

Regarding reappropriation and rehabilitation, the Grand Board notes that reappropriation, in the sense that a term which was once offensive could be purged of its offensiveness by the target group registering the term as a trademark, is a notion that has not yet been tested in EU trademark law.

The Grand Board also considered that the proof presented by the applicant was not sufficient and concluded that the term "Maricón Perdido" has not been sufficiently reappropriated to be considered inoffensive to the general public in Spain.

It asserts that the trademark must be refused based on Article 7(1)(f) of the EUTMR, as it is contrary to accepted principles of morality, without needing to consider its compatibility with public policy.

Earlier registrations and registrations by the Oficina Española de Patents y Marcas (Spanish Patent and Trade Mark Office, OEPM)

Even if the applicant emphasised and presented prior registrations with the element 'QUEER', the Grand Board stated that these were approved at first-instance without appeal, meaning the Boards could not evaluate them.

The EU marks system operates independently from national rules and the board is not bound by national decisions. For this reason, the board finds no compelling reason to disregard previous conclusions about the offensiveness of ‘Maricon Perdido’.

Prior Spanish registrations like MARICONES DEL ESPACIO MDE, whose reasoning is unknown, don't impact the decision due to the objections already established about the offensive nature of the term.

Freedom of expression

According to the Grand Board's "COVIDIOT" decision, which highlighted the role of fundamental rights in evaluating trademarks that conflict with accepted moral principles, the registration isn't essential for commercial utilisation and filters out morally objectionable signs.

In this instance, the principles outweigh commercial expression, warranting refusal under Article 7(1)(f) EUTMR.

This refusal is proportionate, as the applicant may still use the sign sans registration, a less restrictive alternative to a complete ban on use.

Possible outcomes

On one hand, as Eleonora Rosati suggests, the Grand Board could have circumvented the issue by not relying on the principle of morality, instead basing its decision solely on the lack of distinctiveness under Article 7(1)(b) EUTMR.

The term "Maricon Perdido" could be considered descriptive, as it is intended to identify a series addressing LGBT-specific themes.

On the other hand, one could argue that the Grand Board missed an opportunity to enrich the application of the principle of morality and public interest, particularly regarding the natural and ongoing evolution of language use.

Everyday language is dynamic and can assume various meanings, especially when terms pertain to historically marginalised communities.

It is increasingly common for words once considered offensive to evolve into symbols of empowerment for these communities.

In this context, the Grand Board could have used this case to establish a European Union objective criteria for evaluating terms that have undergone significant shifts in meaning.

Paula Vener is a lawyer and legal consultant at Inventa and can be contacted at pvener@inventa.com