The Verification of Trademark’s Requirements
In order to identify the strengths and weaknesses of a future trademark, Eva Trojani law firm will carry out the verification of the trademark, through the examination of its requirements, even before proceeding with trademark registration.
In this post we talk about:
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”.
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)”.
The requisite of novelty in a trademark
The trademark must be new, lawful, non-deceptive and having distinctive character.
According to the requisite of novelty:
A sign must not be identical with or similar to an earlier trademark filed or registered in the same territory for goods or services which are identical with or similar to the goods or services for which the earlier trademark is filed or registered, if there exists a likelihood of confusion on the part of the public, which can also consist in the likelihood of association.
A sign must not be identical with or similar to an earlier well-known trademark filed or registered in the same territory, regardless of the identity and /or similarity between products or services.
The verification of legitimacy includes the requisite of novelty, carried out through a trademark search among trademarks which have been filed and/or registered in the relevant territory.
The trademark search is a very important tool for the success of the brand. This is why it is important to know what looking for, how and where to do it.
Given the many factors to be taken into consideration, it is advisable that the search is carried out by by IP professionals, who will be able to evaluate the results in the light of their professional experience.
Only at the end of the verification phase Eva Troiani law firm will be able to tell you if the chosen sign has a good chance of being filed and used without incurring any risk of dispute or if, conversely, it is better to turn your attention elsewhere and to choose another brand.
The aim will be to facilitate as much as possible the path of your trademark towards registration, by minimizing the risks of complaints and objections, both from the government authorities which examine your trademark application and from the owners of earlier trademarks who think to be damaged from your trademark application.