Recent case law from the Office for the Harmonization of the Internal Market (OHIM) shows that doubtful morality and disturbance of public policy are powerful grounds of refusal for a trademark. Possible harm to Sino-European relations was in fact a reason to dismiss the trademark “Not Made in China” in a well-known case that attracted much controversy last year.

In December 2005, Alvito Holdings, a clothing and fashion manufacturer based in Gibraltar (UK), filed an application before the OHIM for two graphic trade marks and one text trade mark “Not Made in China”.

Worldwide outrage followed the publication of this application in early 2006. Over 10,000 signatures from Chinese individuals and companies were collected and sent to the OHIM headquarters in Alicante, Spain, to express their disgust for what was considered an offensive and discriminatory act of unfair market practice. The declaration that accompanied the signatures sent to the Office claimed that the trade mark could damage the commodity image and benefits of the distinctive sign “Made in China”, and hurt the feelings of the Chinese people.
 
Third party observations were filed in the name of the China Trademark Association, and BTA Trademark and Patent Law Office, by Spain-based law firm UDAPI & Asociados. The observations alleged the trademark complied with at least five of the absolute grounds for refusal comprised in the Community Trademark Regulation (CTMR), particularly with paragraphs b), c), d), f) and g) in article 7 (1). The grounds were of mixed nature: the lack of distinctive character; the poor information offered in regards of quality or geographical origin of the goods; small contribution to the customary indication “Made in China”; possible deceit to the consumer for giving misleading information on the origin of the goods; and, finally, the trademark could be considered contrary to public policy and accepted principles of morality. The observations stated that the trademark “devalues automatically all the goods manufactured in China” and was “an offensive message  addressed to all the people of China, especially those who are living or working within the European Union”.
This was the stronger argument and the one that was later taken into consideration by the Office. Assessing what is contrary to public policy or accepted principles of morality is not easy. Numerous articles and Internet postings where sent to the OHIM as supporting evidence.
OHIM acknowledged the observations, and took into consideration article 7 (1) f of CTMR, that objects particularly against trademarks which are contrary to public policy or to accepted principles of morality. The Office agreed that the trade mark “conveys an insult to all the goods made in China” and even considered that it would “harm Sino-European diplomatic ties”.
Alvito Holdings, Ltd. presented arguments against the observations, and two were the more relevant arguments brought up to the attention of the Office. The first contested the claims that the trademark was intended to mock in some way the quality of Chinese products.  They stated that “it is equally possible that the mark will be seen as the tribute to the success of Chinese goods in penetrating European markets, the mark merely drawing attention to the fact that few goods are not made in China these days”. The other argument attacked the significance of the amount of people attacked by the alleged slur. As a proportion, they said, Chinese population in the EU represents around 0.4% of the whole population so the “number of persons offended will be insignificant”. This ground was also used to discard the press articles and the signatures provided, since most of them came from China and not from the Chinese community in Europe.
Nevertheless, the Office gave its definitive decision on September of 2006, and rejected the application on the article 7(1)f ground. The decision specified that the trademark “Not Made in China” would be:
Contrary to public policy or to accepted principles of morality because it conveys an insidious and deprecatory innuendo which hints at the desirability of avoiding Chinese-made goods. Moreover, given that the mark casts an unpleasant slur upon the reputation of Chinese workmanship, its registration would fly in the face of the goodwill which is to be wished for in Sino-European relations.
A previous attempt at registering the trade mark “Not Made in China” was also made in the United States. The US Patent and Trademark Office (USPTO) refused registration under Trademark Act, Section 2 (a), that rejects any trade mark that consists of or comprises immoral, deceptive, or scandalous matter. The Office alleged in that case that “a reasonable person of ordinary sensibilities would consider this reference offensive or objectionable because the proposed wording ‘not made in China’ implies that there is something negative about retail goods made in China”.  It also was considered as merely descriptive, since the goods retailed were in fact not made in China. Three more trade marks with similar text are still being examined by the USPTO.
Also in the United States, a similar case arose with the same outcome, but for very different reasons. The trade mark application for “Not Made in France”, filed by Vrbia Inc. in 2004, was rejected by the Trademark Trial and Appeal Board. Though the intention of the manufacturer, according to his allegations, was to mock the declining relationships between the US and France due to the Iraq war, the Trial understood the mark literally. It was refused under Section 2(e) (1) of the US Trademark Manual of Examination Procedures, considering it to be “merely descriptive”, since the goods were unlikely to be manufactured in France, which is also a secondary argument to reject “Not Made in China”. This time, potential conflict with public policy or even distasteful humour was overlooked by the examiners.

This is not the first time OHIM refused a trademark on moral grounds. In its record we find failed trademarks such as “Screw You”, “Mafia” or “Sudaca”, a despective word used to denominate a person of Latin American origin, that was, quite ironically, filed by a Chilean beverage company.

About the author: Guillermo Criado & Alicia Martin-Santos， Udapi & Asociados, Spain