The International Trademark Association (INTA) today filed an amicus brief before the Grand Board of Appeal (GBoA) of the European Intellectual Property Office (EUIPO) in Matthias Zirnsack vs. EUIPO, Case R-260/2021-G, concerning the registrability of the figurative mark combining the word “COVIDIOT” with a jester cap.
The EUIPO examiner noted that the word “COVIDIOT” designates a person who either (i) ignores the information available concerning the danger of the COVID-19 virus, (ii) fails to take the precautionary measures imposed by government to protect themselves and others from becoming infected, or (iii) stores household goods in large quantities so that those goods unavailable for others. Based on these findings, the examiner rejected the mark on the basis that it would allegedly be contrary to the accepted principles of morality and, as such, would fall within the absolute grounds for refusal set forth in Article 7 (1) f of the European Trade Mark Regulation (EUTMR).
Upon the applicant’s appeal, and in light of the diverging decisions on a point of law that could affect the outcome of the case, the Board of Appeal referred the case to the Grand Board, asking for clarification on whether and to what extent the principle of freedom of expression should be considered as part of the assessment of the grounds of refusal set forth in EUTMR Article 7(1) f.
In its amicus brief, INTA stresses the inherent vagueness of the legal term “principles of morality” (as well as of the comparable ground for refusal of “public policy”) as the core issue in this case, pointing out that relying on the principle of freedom of expression would not resolve said issue. INTA suggests a three-step test to: (1) verify the public perception of the content of the mark, (2) enquire whether a majority of the public would consider that content to be against accepted principles of morality, and (3) if necessary, seek to establish a balance between the right of free speech and the interest of the public to ban marks from registration that run against accepted principles of morality. INTA’s brief finds that, in this case, there is no indication as to a negative perception on the part of the majority of the relevant public.
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