Trademarks serve as powerful tools in commence, enabling businesses to distinguish their goods and services while helping consumers identify the source and quality of products. However, trademark law is not purely commercial; it intersects with broader societal values, including public morality. This article examines the tension between trademark protection and public morality.
The Legal Foundation: Morality Clauses in Trademark Law
Many national and regional trademark systems include provisions that exclude marks from registration if they are immoral, scandalous, or contrary to public order.
Council Regulation (EU) 2017/1001 (the Regulation) is the foundational legal framework governing the European Union Trade Mark (EUTM) system. It provides for the unitary registration, administration, and protection of trademarks across all EU Member States through a single application to the European Union Intellectual Property Office (EUIPO). It aims to create a system of trademark protection specific to the European Union (the “EU”). Article 7(1)(f) of the Regulation prohibits marks “contrary to public policy or to accepted principles of morality”.
A trademark may consist of any sign (words, names, designs, letters, numerals, colours, sounds, etc.) provided it is:
According to Article 4 of the Regulation, an EU trademark may consist of any signs, in particular words, including personal names, or designs, letter, numerals, colours, the shape of goods or of the packaging of goods or sounds, provided that signs are capable of distinguishing the goods or services from those of other undertakings.
In relation to the grounds of refusal of the registration of a trademark, they are divided into absolute grounds and relative grounds of refusal. More specifically, according to Article 7 of the Regulation, which includes the absolute grounds of refusal, the trademarks or signs shall not be registered if, inter alia:
a) They are devoid of any distinctive character,
b) They are contrary to public policy or accepted principles of morality,
c) They are of such nature as to deserve the public in relation to the nature, quality or geographical origin of the goods or service,
According to Article 8 of the Regulation, which includes the relative grounds for the refusal of the registration of refusal, a trademark or sign shall not be registered if, inter alia:
a) they are identical with a trademark which has been registered previously and the goods for which registration is applied for, are identical with the goods or services for which the trademark which has been registered previously is protected,
b) because of its identity with, or similarity to, the trademark which has been registered previously and the identity or similarity of the goods or services covered by the trademark, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is protected.
A. Recent case law
In the Pablo Escobar Trademark Rejection (April 2024), whose legal basis was Article 7(1)(f) EUTMR which prohibits trademarks contradicting to public policy or accepted principles of morality, the EU General Court upheld the EUIPO’s decision to refuse registration of the name “Pablo Escobar” as a trademark. The court determined that the name is associated with drug trafficking and narco-terrorism, which are contrary to accepted principles of morality in Spain. Despite arguments highlighting Escobar’s philanthropic activities, the court emphasized that the name evoked criminal activities, making it unsuitable for trademark protection.
In the recent Maricon Perdido case (January 2025) whose legal basis was again Article 7(1)(f) of EUTMR, the EUIPO Grand Boards of Appeal rejected the trademark application for “Maricon Perdido”, a Spanish phrase considered a homophobic slur. The Board concluded that the term was offensive and contrary to accepted principles of morality, regardless of the applicant’s intentions or affiliations with the LGBTQ+ community. The decision underscored that the assessment focuses on the perception of the average person, not the specific target audience.
In the Covidiot case (R- 260/2021-G-Matthias Zirnsack v EUIPO), whose legal basis was Article 7(1)(f) EUTMR as the mark was deemed contrary to accepted principles of morality. The EUIPO Grand Board of Appeal found that the term trivialized the severity of the COVID-19 pandemic and was disrespectful to those affected. As such, it was deemed contrary to accepted principles of morality. The decision highlighted the importance of context and timing in assessing public morality.
In the Paki Logistics v EUIPO (2011 - T-526/09), whose legal basis was Article 7(1)(f) EUTMR, the EUIPO rejected the application reasoning that “PAKI” could be offensive, particularly in the UK, where it is racial slur directed at people of South Asian origin. The General Court annulled the EUIPO decision, finding that the term “PAKI” was not inherently offensive in all EU member states since the trademark represented the initials of the company’s founders and was used in a commercial and non-discriminatory context. According to the Court, Article 7(1)(f) requires that a mark must be manifestly contrary to accepted principles of morality or public order. The significance of this case shows that morality-based objections must be substantiated and proportionate, especially in multilingual and multicultural contexts.
B. Conclusion
Trademarks play a crucial role in businesses for several reasons such as brand identity, as they help distinguish a company’s goods or services from those of competitors, building consumer trust, they provide legal rights to prevent others from using similar marks, they are certainly powerful marketing tools and can become valuable business assets, and last, but not least, trademarks facilitate business growth and franchising by allowing consistent brand-use across different regions or markets.
The selection of an appropriate trademark that meets the conditions set out in the Regulation is therefore essential.
The EUIPO’s approach to morality-based trademark refusals is deliberate and cautious, ensuring that public order and moral principles are protected, while balancing freedom of expression and commerce. The PAKI case serves as an exception, emphasizing that context and use can mitigate perceived offenses, while Covidiot, Pablo Escobar and Maricon Perdido underline the zero-tolerance approach towards marks that invoke widespread offense.
Trademark applicants must be mindful of the social, cultural, and ethical implications of their marks, as even innovative or creative trademarks can be rejected if they are seen as offensive or contrary to public morality.
