Provocative trademarks: balancing rights with morality in the EU

Weighing up the impact on society with freedom of expression across 27 member states is a delicate task for the EUIPO when considering ‘offensive’ marks, says Joana Fialho Pinto of Inventa.

Provocative statements frequently attract substantial attention. Beyond their primary function of indicating product or service origin, trademarks also serve a significant secondary role in advertising. 

Provocative trademarks can be appealing for trademark owners but in the EU, these are not protected at all costs.

Legal framework

Exclusion of trademarks contrary to public policy or accepted principles of morality is stipulated for in the EU Trademark Regulation. It is also foreseen in the EU Directive to approximate the laws of the Member States relating to trademarks. This limit to trademark registration goes back to the Paris Convention.

Ambiguity of terms and EUIPO guidelines

Notwithstanding their establishment in the legal framework, acceptable principles of morality and even public policy are broad and vague terms.

Although sometimes overlapping, these are two different concepts. The EU Intellectual Property Office (EUIPO) distinguishes between the objective concept of public policy and the subjective concept of principles-based morality.

‘Public policy’ is defined as encompassing essential legal rules necessary for the functioning of a democratic society and the rule of law, highlighting the values on which the EU is founded, as proclaimed in the Charter of Fundamental Rights of the European Union, including human dignity, freedom, equality and solidarity.

‘Accepted principles of morality’ are recognised as subjective values, referring to the fundamental moral values and standards to which a society adheres at a given time. The EUIPO enhances that these must be applied as objectively as possible. In general examples the guidelines establish that this provision excludes from registering blasphemous, racist, discriminatory, or insulting words or phrases.

The focus is on direct conflict with societal values, the intention of the applicant being irrelevant. Assessment criteria rely on reasonable consumer perception, contextual factors, and national legal influences. 

Mere conflict with national laws does not justify trademark rejection but may provide evidence for assessing perception (for example, symbols of illegal parties can be excluded from registration).

Public sensitivity is assessed to measure impact, with extreme positions avoided and fair application ensured—it is sufficient if it offends the sensibilities of the average person.

The context of the goods and services covered is considered, but the relevant perception extends to those who may encounter the mark.

Additional challenges

Multilingual and multicultural context

The EU has 27 member states and 24 official languages. In some cases, other languages are understood by part of the relevant public.

Perception of a trademark as contrary to public policy or to accepted principles of morality, even if only in one member state, can lead to trademark refusal. This highlights the need for detailed decisions, given the potential gaps in awareness across the EU of the specificities of each member state.

Balance of rights

Freedom of expression is a fundamental right included in the European Convention on Human Rights.

Refusing trademark registration based on the grounds that the trademark is contrary to public policy or to acceptable principles of morality can be justified as it serves important principles, despite potentially limiting freedom of expression. A balance must be achieved with respecting the public’s right not to encounter disruptive, abusive, insulting, or threatening trademarks.

The EUIPO stresses that it “should not positively assist people who wish to further their business aims by means of trademarks that offend against certain basic values of civilised society”. 

This distinguishes that the refusal of registration merely means that the trademark is not granted exclusive right, and not necessarily implying an absolute prohibition of its use (with reference to case T-417/10, March 2012, where the mark ‘¡Que buenu ye! Hijoputa’ was refused for being contrary to public policy or accepted principles of morality).

Recently, in R 260/2021-G, ‘Covidiot’ (May 2024), the Grand Board of Appeal of the EUIPO confirmed that there can be interference with the fundamental right of freedom of expression. The board concluded that the term ‘Covidiot’ would ridicule and trivialise the severity of the pandemic if used in relation to games, toys, or game software. It was considered offensive and disrespectful to those affected by the pandemic, contradicting accepted principles of morality and human dignity.

Decisions as such imply a delicate balance. Timing is also relevant, as the public perception might be different with the course of time.

Harmonisation in the EU

In the framework of the European Union Intellectual Property Network (EUIPN), the EUIPO and a number of trademark offices in the European Union recently agreed on a Common Practice (CP14) focusing on conceptual clarifications regarding public policy and accepted principles of morality, establishing common assessment criteria and providing illustrative examples.

Interpretation of public policy and morality, alongside balancing conflicting rights is challenging, particularly considering the diversity across 27 member states. Common values and harmonisation practices contribute to enhancing legal certainty. 

Nonetheless, it remains crucial to consider the specifics of each individual case in a dynamically evolving society.

Joana Fialho Pinto is a trademark and patent attorney at Inventa. She can be contacted at jfpinto@inventa.com.