Will An EU trademark Be Registered If It Contains 'F*cking'?

Should a mark including the particle 'fucking' be registered as a trademark? Or is such sign contrary to accepted principles of morality? The EUIPO Fourth Board of Appeal recently upheld the refusal of the device mark NELEMAN JUST FUCKING GOOD WINE as an EU trademark. The same device mark had previously been registered by BOIP as a Benelux trademark. No morality issue there.

Neleman is a well known Dutch wine house specialized in organic wines. It is also known for keeping the general public alive with surprising (some would say: unorthodox) campaigns. In this European matter Neleman had pointed out that it had received a broad appraisal of this wine, never a complaint. All in vain: in the essence the Fourth Board of Appeal referred to “the intrinsically vulgar and morally offensive character of the taboo English word ‘FUCKING’ for the English-speaking relevant public, native speakers in particular, without any contextual factors being present which can justify a conclusion otherwise.”

As a Dutch person, using English as a second language, I did not grow up as a native English speaker. I remember that I jokingly called my Canadian cousin Richard an ‘asshole’ - in my small Amsterdam based high school world everybody was calling everyone an asshole at the time. Richard was really offended, even after I explained to him that he had missed the joke. I then learned that it was not about what I meant by sending the message, but about how he perceived the message as the receiving party.

Now back to EU trademark law. If an issue arises in only a part of the EU, the EU trademark needs to be refused as a whole (but may be registered as a national mark in those member states where the issue does not arise). So even if only the native English speaker is offended by "fucking", a sign clearly containing that word will be refused as an EU trademark. Unless context shines a different light on the matter. This context will need to follow from the trademark itself, e.g. from additional words or from the goods or services involved. Neleman argued that "fucking" is linked to "good" and thus has context. But that context is apparently not good enough at the level of the entire European Union.

So the same trademark may well be acceptable as a national mark, like it was accepted and registered in the Benelux. The national trademark offices and the EUIPO are discussing common principles within the convergence project CP14: 'Trade marks contrary to public policy or to accepted principles of morality'. That will be an interesting discussion - just like the USA, the European Union has many states and all the more views on what's (im)moral.

A totally separate issue is whether the use of a trademark may be banned on the ground of being immoral. There the freedom of expression and information (article 11 of the Charter of Fundamental Rights of the European Union) plays a prominent role, always causing a need for a case by case analysis. I don't expect Neleman to stop selling this wine brand, currently selling in the Netherlands, Belgium, Germany and Spain. Yet this decision may just be a reason for Neleman to stay away from Ireland and the UK. Or will it provide the ideal product launch with the whole country talking about it?

Maarten Haak