Not so "F**KING AWESOME" as EU General Court holds that prospective word mark is descriptive and not distinctive

*Caution – contains language some may find offensive*

The General Court of the European Union has decided that the Board of Appeal was correct in its decision that the phrase FUCKING AWESOME cannot be registered as a trade mark in the EU as it lacks distinctiveness. Does this decision sound a death knell on the F-word's tenure as a truly shocking swear word?

The position in the USA
 
FA World Entertainment Ltd ("FA"), a skate-wear clothing and skateboarding brand, holds registered trade marks in the US for the words FUCKING AWESOME.
 
After being applied for in June 2017, these were registered in the US in June 2020. The marks were required to withstand various stages of scrutiny in the US. In 2017, US examiners initially held that FUCKING was an "extremely offensive and vulgar expression" and that the mark would, ordinarily, be refused on the grounds of immorality. However, the trade mark application was suspended to wait for the judgment of the US Supreme Court in Iancu v Brunetti. In this case, the word in question was FUCT, which became the subject of intense debate in the US court system, with the Supreme Court eventually deciding that prohibiting registration of trade marks of "immoral" or "scandalous" matter is unconstitutional as it would permit the USPTO to engage in "viewpoint discrimination", which violates the Free Speech Clause of the First Amendment.
 
On the back of this judgment, the immorality grounds that had previously hampered FUCKING AWESOME were dismissed. However, on its second examination, FUCKING AWESOME was rejected as a trade mark in US due to its descriptiveness; it was held that the mark served only to describe the quality of the goods. FA then succeeded in proving acquired distinctiveness and the mark was registered.
 
The position in the European Union
 
On the back of its US registration, FA applied for an EU mark through the international WIPO system. 
 
At first instance, the EUIPO held that the mark should be rejected on the grounds that it was 1) contrary to public policy and 2) lacked distinctive character. This was appealed and the Board of Appeal decided that the examiner was right to reject the mark on the ground of distinctiveness, but not on the ground it was against public policy. It remitted the mark back to first instance for further assessment of whether the claimed acquired distinctiveness was sufficient to overcome the objection for non-distinctiveness.
 
The decision
 
FA appealed this partial refusal to the General Court, stating that firstly, the Board of Appeal's decision that the mark lacked distinctive character should be reconsidered and, secondly, suggesting that the Board of Appeal acted improperly (not in accordance with general principles of legal certainty and sound administration).
 
Legal certainty and sound administration
 
FA argued that the Board of Appeal should have taken into account the fact that the prospective mark had already been held to have distinctive character in the US. Further, FA cited various similar cases (where laudatory marks were permitted on grounds of acquired distinctiveness) which it argued should have been considered.
 
The General Court dealt with the plea regarding FA's US registration quickly, asserting the autonomy of the EU trade mark regime which is not bound to consider non-EU rules or case law.
 
In relation to the claimed similar judgments, the General Court held that FA did not provide proper reasoning as to why these decisions were relevant to the FUCKING AWESOME mark, which differed from the signs in those cases in important ways.
 
 
The diminishing impact of the "F" word
 
The Board of Appeal decided that consumers would understand the word FUCKING to be a vulgar intensifier and the word AWESOME to refer to something excellent or outstanding. FA did not seek to dispute the Board of Appeal's interpretation of the meanings of the words. This demonstrates how the concept of public policy has changed over time. For example, almost 20 years ago in Scranage’s Trade Mark Application (O/182/05) the (UK) Appointed Person stated "I have no doubt that it would not be appropriate to allow registration of the word FUCK. Although it may be used commonly it is, nevertheless, a swear word and deeply offensive and insulting to many people. It is more than distasteful or smutty. The general use of the word is likely to cause justifiable outrage amongst a significant section of the public. I can see no justification based on the right to freedom of expression or otherwise to allow such a word to proceed to registration."
 
Distinctiveness: perception of the mark
 
FA argued that the Board of Appeal had erred in its assessment of the sign as a whole. FA argued that taken as a whole, the sign had no particular meaning, placing weight on the fact that firstly, FUCKING AWESOME could not be defined in any dictionary and secondly, such a phrase may have both a positive and negative connotation.
 
This argument was dismissed by the General Court, which considered that the approach taken by the Board of Appeal in first establishing the meanings of the component words of a phrase was logical and did not prejudice a later assessment of the "overall impression" of the sign.
 
The General Court also approved the Board of Appeal's straightforward interpretation of the meaning of both words together. Both agreed that there was nothing in the syntax of the phrase that was original, a play on words or warranted close scrutiny. As such, given both "fucking" and "awesome" had straightforward meanings in the dictionary, they must be interpreted as a simple combination.
 
Indeed, FA's reliance on the conclusion that as "fucking awesome" was not in a dictionary, it had no specific meaning, was criticised by the General Court. The decision cited International Engine Intellectual Property Company v OHIM (PURE POWER), T‑248/11 where it was held that whether or not the word element of a sign is present in dictionaries is irrelevant for the purposes of the assessment of its distinctive character. Indeed, within Regulation 2017/1001, it is sufficient to show that a "non-negligible" part of the relevant public will perceive the sign as a purely promotional message and, thus, the Board of Appeal was not wrong to attribute a specific meaning to the expression "fucking awesome", when the sign could have both a positive and a negative connotation.
 
Distinctiveness: indicating commercial origin?
 
FA stated that the choice of words in "fucking awesome" could not be considered exclusively laudatory as it has a certain originality and sets off a cognitive process in the relevant public which would serve to indicate commercial origin. FA stated that the word "fucking", with its vulgar connotation, was a surprising enough inclusion into a slogan/ brand name to set off a cognitive process that would enable it to indicate the commercial origin of the goods.
 
On this point, the General Court held that the choice of the words will "simply indicate to the relevant public the use of informal language to convey a promotional message". The Court held that the target group of consumers was "young middle-aged consumers" and "in so far as the use of informal or vulgar language is not unusual for that public, that public… will perceive it rather as an adaptation of a promotional message to that particular public." In other words, the Court was happy to assume that as most young people would not be surprised by the use of the F-word in advertising, a cognitive process would not be set off, and the mark would remain merely descriptive.
 
One case that demonstrated the context in which old-fashioned swearing would be offensive was Efag Trade Mark Company v OHIM (FICKEN) T-52/13, where the court found that the use of FICKEN (the German F-word) for products in classes 25 (clothes), 32 (carbonated drinks) and 33 (alcohol), was contrary to public policy. In this case, the applicant argued to the General Court that as long as the mark "does not convey a discriminatory, insulting or degrading message, its scabrous or vulgar nature is not sufficient to establish a breach of public order and morality". This was rejected by the General Court which refused to accept that it was necessary for a word to be discriminatory, insulting or degrading to be capable of offending. Indeed, in the case of FICKEN, it was the blunt representation of the mark (which did not permit alternative meanings) as well as the everyday consumer nature of the goods that resulted in the mark being rejected.
 
Comment
 
The General Court's decision is a useful confirmation of the European stance on public policy and trade marks. The decision emphasised how important it is to ascertain how wide a portion of the public will come into contact with the marks, with the relatively contained "young, middle class" target market of the products playing a part in the Court's relaxed stance on offensiveness in this case.
 
The decision also demonstrates how public policy issues can merge with those of distinctiveness, as "fucking awesome" was held to be not sufficiently shocking to cause its target market to think twice, and as a result, the Court saw no reason to interpret the mark in anything other than a straightforward manner, leading to the mark being dismissed for descriptiveness. 
 
With special thanks to Trainee Solicitor, Joe Farnham, co-author of this blog.