19.12.2019
I. In a recent decision (CJEU 12.12.2019, T-683/18), the General Court of the European Union (“GCC”) confirmed the rejection of an application for a European Union trademark by the European Union Intellectual Property Office (EUIPO) due to a breach of public policy.
The registered mark alludes to the sale of marijuana in the Netherlands through the use of the phrase "CANNABIS STORE AMSTERDAM" and the depiction of cannabis leaves. An Italian woman applied for registration in classes 30 (bakery products, chocolate, ice cream, spices, etc.), 32 (non-alcoholic beverages, beer, etc.) and 43 (catering).
The General Court found that, as the law currently stands, the consumption and use of cannabis above a certain THC content is illegal in many Member States and that such regulations pursue the objective of public health. In the Court's view, the sign in question inevitably encourages the purchase of such goods and services or at least trivialises their consumption ("…that sign, […] encourages, implicitly but necessarily, the purchase of such goods and services or, at the very least, trivializes their consumption“).
II. The application of the grounds for refusal relied on here by the EUIPO and the General Court (Article 7 paragraph 1 letter f EUTMR), which is also known under national Austrian trademark law (Section 4 paragraph 1 item 7 Trademark Protection Act), has repeatedly led to discussions in the past.[1] Similar obstacles to registration are also provided for with regard to the protection of designs (cf. Section 1 paragraph 1 MuSchG; Article 9 of Regulation (EC) No 6/2002).
The General Court, for example, rejected the registration of the word mark “Fack Ju Göthe” on the basis of this ground for refusal.[2] back; the registration of the word mark “FICKEN” failed in Austria before the Supreme Court[3], as a Union trademark at the General Court[4], however, it was successfully enforced in Germany (and the trademark was therefore registered)[5].
The case law is not uniform from one Member State to another, and partly within the Member States. The fact that the grounds for the registration of immorality are grounds for refusal are consequently also referred to in legal theory as “relatively uncontoured" and "difficult to predict" designated.[6]
III. It is probably legitimate to ask whether these provisions still have a right to exist in national law and in European Union law, particularly in the light of a comparison with other options for protecting a company's services.
For example, the immorality of a work is completely irrelevant for copyright protection: even pornography or a recited insult against a foreign head of state can easily be qualified as a work (as long as the author can make creative decisions and express his personality) and enjoy copyright protection.
A comparable obstacle to registration is also not standardized for the company in the commercial register (cf. § 17 ff UGB), and title protection under § 80 UrhG, for example, is not dependent on the protected title conforming to public order or morality, just as protection of an establishment name under § 9 UWG is not dependent. In summary, this can therefore lead to a situation where, for example, a vulgar title of a pop song enjoys title protection under § 80 UrhG, the name of a company founded by the members of the band could be entered in the commercial register, this also enjoys protection as the company name of this band under § 9 UWG, but it could not be registered as a trademark for the services of this band.
VI. An interesting detail is that the EUIPO has already registered trademarks related to cannabis, such as the word mark “#cannabissimehr” for “herbal food supplements” and “pharmaceutical advice”, and “Cannabis Energy Drink” for “non-alcoholic beverages”, “alcoholic beverages” and “other lifestyle beverages and similar products”. The word mark “Cannabis Energy Drink” (which was registered in 2011) also depicts a clearly recognizable cannabis leaf. This shows once again that there is no uniform practice in registering trademarks and that one cannot draw conclusions about the future from existing successful registrations (where the legal situation is essentially the same). In practice, the only advice is to carefully consider the investment in registering potentially “problematic” trademarks and to consider other options.
[1] Hayback, On the immorality of obscene trademark applications, wbl 2018, 477.
[2] General Court 24.01.2018, T-60/17.
[3] Supreme Court 03.05.2017, 4 Ob 62/17x.
[4] General Court 14.11.2013, T-52/13.
[5] BeckRS 2011, 21631.
[6] Borsky Note to OGH 03.05.2017, 4 Ob 62/17x MR 2017, 148.