Browsing by Author "Tuohimaa, Iiris"

This thesis explores Article 7(1)(f) EUTMR which sets out one of the absolute grounds for refusal of registration of an EUTM, excluding from registration ‘trademarks which are contrary to public policy or to accepted principles of morality.’ The thesis has two questions which it seeks to find answers to, namely (1) what general criteria is applicable to the assessment of public policy and accepted principles of morality? and (2) how are cultural concerns taken into consideration in the assessment? To find answers to these questions the legal dogmatic method is employed. The thesis delves into an in-depth analysis of case law primarily produced by the CJEU, the EFTA Court, the GCEU and the BoA of the EUIPO. Article 7(1)(f) EUTMR has primarily been employed to restrict the registration of marks that are viewed as shocking or insulting due to their profane, racist, discriminatory or other offensive meaning. “Public policy” and “accepted principles of morality” are two different and open principles that often overlap. They can be used independently or combined. An objection based on the ground of public policy entails an objective assessment made in relation to imperative legislative or administrative norms, while an objection on the grounds of accepted principles of morality entails a subjective assessment which is to be made from the point of view of the relevant public. In the assessment of whether a mark is contrary to public policy or accepted principles of morality, several different considerations are made. Examiners must define the relevant public in question for each individual sign they assess, assess the meaning and perception of the mark as understood by that public, determine the territory in which the sign could have an adverse effect, examine the nature of the goods and services for which the mark is applied for, investigate potential prior use of the sign on the market, consider the time at which the application for registration was made and determine the social context. The right to freedom of expression must also be considered by examiners when applying the absolute ground. Factors irrelevant to the assessment include the applicant’s intentions, motives, and conduct. This thesis explores Article 7(1)(f) EUTMR which sets out one of the absolute grounds for refusal of registration of an EUTM, excluding from registration ‘trademarks which are contrary to public policy or to accepted principles of morality.’ The thesis has two questions which it seeks to find answers to, namely (1) what general criteria is applicable to the assessment of public policy and accepted principles of morality? and (2) how are cultural concerns taken into consideration in the assessment? To find answers to these questions the legal dogmatic method is employed. The thesis delves into an in-depth analysis of case law primarily produced by the CJEU, the EFTA Court, the GCEU and the BoA of the EUIPO. Article 7(1)(f) EUTMR has primarily been employed to restrict the registration of marks that are viewed as shocking or insulting due to their profane, racist, discriminatory or other offensive meaning. “Public policy” and “accepted principles of morality” are two different and open principles that often overlap. They can be used independently or combined. An objection based on the ground of public policy entails an objective assessment made in relation to imperative legislative or administrative norms, while an objection on the grounds of accepted principles of morality entails a subjective assessment which is to be made from the point of view of the relevant public. In the assessment of whether a mark is contrary to public policy or accepted principles of morality, several different considerations are made. Examiners must define the relevant public in question for each individual sign they assess, assess the meaning and perception of the mark as understood by that public, determine the territory in which the sign could have an adverse effect, examine the nature of the goods and services for which the mark is applied for, investigate potential prior use of the sign on the market, consider the time at which the application for registration was made and determine the social context. The right to freedom of expression must also be considered by examiners when applying the absolute ground. Factors irrelevant to the assessment include the applicant’s intentions, motives, and conduct. The thesis finds that cultural concerns do not have an established status in the assessment of Article 7(1)(f) EUTMR. The usual approach taken by examiners to refuse trademark protection for culturally significant signs has been to rely on Article 7(1)(b) EUTMR which denies trademark registration to marks that lack any distinctive character. The thesis finds that the reliance on this ground is problematic as registration can be overcome through acquiring distinctiveness in the course of trade. The possibility of acquiring trademark protection can be seen by traders as an encouragement to invest in the product advertising of cultural signs and thus, support commercial activities that reap the public domain of its cultural material. More recently, however, in the Vigeland decision of the EFTA Court, Article 7(1)(f) EUTMR was explored beyond its traditional scope of application, namely to culturally significant art part of the cultural heritage of a country. In examining the practical significance of the new approach introduced by the EFTA Court, the thesis finds that the use of the absolute ground to deny trademark rights to culturally significant signs advances the preservation of the public domain. This is because Article 7(1)(f) EUTMR implies an outright exclusion of trademark protection, meaning that it cannot be overcome through use in trade. The approach also amends the copyright-trademark interface, allows examiners to explore cultural aspects of applications they receive and arguably promotes the goal of cultural sustainability. The thesis concludes that the decision is not perfect, however. Drawbacks of the Vigeland decision include its excessive application of Article 7(1)(f) EUTMR, the limited scope of the approach, its open-ended assessment factors as well as remaining challenges in completely halting cultural heritage branding.