COCAINE mark is not misleading, says OHIM

European Union
In Sun Associates Limited v Jebaraj Screw You (Case 2665 C, March 20 2009), the Cancellation Division of the Office for Harmonization in the Internal Market (OHIM) has rejected Sun Associates Limited's request for a declaration of invalidity of the Community trademark COCAINE for goods in Classes 3, 25 and 32 of the Nice Classification.
Sun alleged that the COCAINE mark, which is owned by Jebaraj Screw You, trading as cocaine/Cocaine Couture, was invalid based on absolute grounds of refusal under Articles 7(1)(f) and (g) of the Community Trademark Regulation (40/94), in conjunction with Article 51(1)(a). Reference was also made to existing international drug control measures in the EU member states.

Sun argued that the word 'cocaine' is generally perceived as referring to an illicit drug with stimulant and euphoric properties and serious health risks. Sun also alleged that the COCAINE mark contravened moral principles.
In particular, Sun submitted that:
  • use of the COCAINE mark would be perceived as promoting the drug;
  • registration of the mark was contrary to public policy;
  • granting exclusive rights to exploit the term 'cocaine' commercially through the trademark registration system would be perceived as a direct incitement of public disorder and an encouragement to commit criminal behaviour;
  • the registration of the mark for goods in Class 3 (substances for laundry use), which could take the form of a white powder, was inappropriate;
  • the registration of the mark for goods in Class 32 (beers, waters and various types of beverages) would also be inappropriate as cocaine can appear in liquid form, and use of the mark may thus imply that such beverages actually contain cocaine or endorse the effects and consumption of cocaine; and
  • the marketing of goods under the COCAINE mark would be deceiving as the goods do not contain cocaine.
The Cancellation Division emphasized that in deciding whether a mark should be barred from registration on grounds of public policy or morality, OHIM must apply the standards of a reasonable person with normal levels of sensitivity and tolerance. Further, the Cancellation Division stressed that OHIM must take into careful consideration the context in which the mark is expected to be encountered. In this regard, the Cancellation Division held that a reasonable person could clearly draw the line between an item sold under the COCAINE mark and the illegal trade and use of cocaine.
In addition, the Cancellation Division stated that use of the word 'cocaine' did not imply any sort of inducement, endorsement or trivialization of the consumption of cocaine. Considerations of disturbing effects or bad taste cannot form the basis for the invalidation of a trademark based on public policy or morality. Further, the Cancellation Division held that the word 'cocaine' simply describes a substance obtained from the leaf of the coca plant.   

Finally, the Cancellation Division held that to determine whether the COCAINE mark was misleading, it had to take into account the presumed expectations of an average consumer who is reasonably well informed and reasonably observant and circumspect. The Cancellation Division concluded that the average consumer would not expect any of the goods in Classes 3, 25 and 32 to contain the illegal drug. Therefore, the mark was not misleading, as the average consumer would not perceive it as an indication of any characteristic of the goods.

The Cancellation Division thus held that Sun's request for a declaration of invalidity was unfounded.
Lasse A Søndergaard Christensen and Christian Fleischer Christiansen, Gorrissen Federspiel Kierkegaard, Aarhus

Unlock unlimited access to all WTR content