Brands, Morality and Public Policy: Some Reflections on the Ban on Registration of Controversial Trademarks

INTRODUCTION A Look at Some Cases United Kingdom European Union United States Australia The Right and Duty of Public Authorities to Have a Say THE "PARADOX" AND THE "LACK OF INCENTIVE" CHANGES IN MORAL STANDARDS REFUSAL OF REGISTRATION AND FREEDOM OF SPEECH CONCLUSION INTRODUCTION Commercial enterprises in several industries are increasingly using aggressive marketing strategies to attract and keep customers. Amongst these strategies, the choice of the "right" brand is obviously key. Brands are indeed the main tool used by companies to comunicate to their current and potential customers. As they are continuously shown on TVs, streets, billboards, and at social, cultural and sporting events, trademarks are often compulsory viewing and constitute a permanent image that viewers cannot avoid. (1) Brands are also sometimes chosen that aim at shocking existing and potential customers, especially youngsters. Not rarely, companies adopt debatable trademarks for "shock value" in order to win consumers' attention and eventually increase their market share. (2) In other terms, enterprises may be attracted by the commercial success they can gain from edgy and controversial brands or borderline trademarks, which make the latter more memorable, more discussed, and accordingly more appealing and valuable to consumers. (3) In short, in some circumstances, being rude or immoral may be commercially viable. (4) Yet, attempts at registering controversial trademarks are likely to encounter legislative obstacles. Indeed, several international, regional, and national legislations prohibit the registration of a variety of debatable signs. Terminology varies depending on the jurisdiction. The European Union (EU) Trademark Directive (5) and Regulation, (6) as well as the United Kingdom (U.K.) Trade Mark Act, (7) ban the registration of trademarks that are "contrary to public policy or to accepted principles of morality." Similar language had been adopted by the Paris Convention, which prohibits the registration of signs "contrary to morality or public order." (8) The United States (U.S.) Lanham Act provides that no trademark shall be refused registration unless it consists of or comprises immoral, scandalous, or disparaging matter. (9) An analogous provision is contained in the Australian Trade Marks Act according to which a trade mark will not be registered if it "contains or consists of scandalous matter." (10) Thus, in many jurisdictions, registration cannot be offered to signs that contravene the state of law or are perceived as morally unacceptable. (11) As U.S. Judge Lenroot stressed in the old case Riverbank Canning, "[t]he field is almost limitless from which to select words for use as trade-marks, and one who uses debatable marks does so at the peril that his mark may not be entitled to registration." (12) A Look at Some Cases In the following pages, I will briefly analyse several decisions concerning refusal of registration on morality and public policy grounds. I will mostly (but not exclusively) refer to decisions that have denied registration or confirmed unregistrability on said grounds. Such signs have been refused registration because they conveyed messages that governments deem unacceptable and therefore do not want to encourage; for example, sexually explicit messages, coarse language, incitement to violence, and other unlawful behaviours including consumption of illegal drugs, support of authoritarian political regimes or terroristic organizations, as well as messages that offended religious beliefs or disparaged ethnic and other minorities. United Kingdom In 2011, the sign "Tiny Penis" was refused registration because it was considered contrary to current principles of morality (the products were articles of clothing). The "Appointed Person" (13) held that a distinction should be drawn between offence that amounts only to distaste and offence that would justifiably provoke outrage or would be the subject of justifiable censure as being likely to undermine current religious, family, or social values. …