The Verification of Trademark’s Requirements

Which trademark is to be registered?

Not every trademark is registrable; for example, it is not possible to register descriptive trademarks (trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service), deceptive trademarks (trademarks that can mislead about the geographical origin, quality and nature of the distinguished products or services), trademarks contrary to the law, to public policy or to accepted principles of morality ( for example, trademarks which offend religious sentiment or the public authorities). If you want to learn more about this matter, we recommend the article deceptive trademark.

Examples of trademarks rejected because they are contrary to the law, public policy and and accepted principles of morality

The refusal of the “Pablo Escobar” trademark

The European Office refuses registration because it is contrary to public order and morality

With its decision on 28 April 2023 EUIPO refused to register the trademark application n. 018727050 in relation to “clothing; footwear; headgear; parts of clothing, footwear and headgear” in class 25.

The refusal of registration – appealable by 28 June 2023 – has been based on the following grounds:

• “The relevant public would perceive the sign as referring to the famous criminal Pablo Escobar, who was a Columbian drug dealer and terrorist, considered one of the most powerful and brutal rogues ever”.
• Nothing in the trademark can lead to another interpretation. Quite the opposite, the added words “Plata” or “Plomo” and “Medellin” do nothing but strengthen the trademark’s meaning, by linking the name “Pablo Escobar” to the famous Colombian criminal above described”.

The European Intellectual Property Office concludes, therefore, that

“the relevant public would perceive the sign as contrary to public policy and accepted principles of morality because it contradicts the universal values which the European Union was founded on, it promotes and trivializes criminal activities and conveys a message in support of terrorism”.

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The refusal of the “Put Putin In” trademark

EUIPO says no: it is against public morality

By decision on 23 August 2023 EUIPO refused to register as a trademark “PUT PUTIN IN” (denominative n. 018843822) because it was considered contrary to public morality.

The public would perceive the sign “Put Putin In” contrary to public morality “as it seeks to take advantage of a tragic event, namely Russia’s invasion of Ukraine”.

The European Office highlights that

“The brand violates accepted principles of morality because it takes advantage of a tragedy for commercial purposes, i.e. the intention to seek financial gain from a tragic event, even if the public may perceive the sign as positive, i.e. lock up Putin (in prison)”.