Immoral marks: OHIM allows DIE WANDERHURE despite its potential 'juicy' meaning

European Union

In general, most, if not all, trademark authorities around the world will not allow marks of an immoral nature on their registers. In the United States, for example, if a “substantial composite of the general public” is likely to perceive a mark, in context, to have a vulgar meaning, then the mark as a whole consists of scandalous matter and is not registrable. In the European Union, the test under Article 7(1)(f) of the Community Trademark Regulation (207/2009) is whether the mark is "contrary to public policy or to accepted principles of morality".

In Verlagsgruppe Droemer Knaur GmbH & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case R2889/2014-4), the Fourth Board of Appeal of OHIM was faced precisely with this issue when it heard an appeal concerning the mark DIE WANDERHURE, and ultimately found that the mark should be allowed for registration.

On May 28 2014 the publisher and authors of the popular German novel Die Wanderhure filed an application to register the word mark DIE WANDERHURE. During examination, the examiner decided that the trademark was not eligible for registration pursuant to Article 7(1)(f), and argued that the word 'Hure' is a coarse term used in the German language to refer to a prostitute. Thus, the mark as a whole embodied a vulgar and indecent expression and an offensive swearword, and had to be be rejected.

The applicants appealed this decision. Large parts of the submitted evidence consisted of media coverage which reported on the success of the novel and the film promoted under the term 'Die Wanderhure'. The applicants argued that it was precisely this fact that precluded the applied-for sign from being perceived as being "contrary to public policy or to accepted principles of morality". In addition, they referred to the German Prostitution Law of December 20 2001 and an Austrian court decision dating from 2012 according to which the term 'prostitute', including the activity related thereto, is no longer considered immoral in the legal sense.

According to the evidence, the term 'Wanderhure' describes a rather young female who offers and provides her services on the way to and at the Council of Constance to the relevant public, during the period between 1414 and 1418. The reader of the novel and film is thus faced with the proposition that the 'travelling woman' pursues a private profession or, more accurately, belongs to a specialised group of female service providers.

While non-registrability pursuant to Article 7(1)(f) must be based on the semantic content of the mark as a whole, the Board of Appeal held that the examiner had confined itself to the assessment of the second word element, without commenting on its first two components, namely the definite article 'Die', equivalent to the English word 'the', and the term 'Wander', describing the act of changing locations on foot. The Board of Appeal further held that the success of the book and the film showed that the public did not take offence from the content of the book nor from its title; rather, the sign described a social phenomenon that no longer exists. Therefore, the mark referred to the lost world of the Middle Ages, about which we know so little that one can fantasise about it even more, the Board of Appeal said.

The Board of Appeal further stated that the contested decision had confused the word describing a phenomenon with the phenomenon itself. Assuming that the examiner was correct, any thriller containing the word 'murder', for example, in its title would have to be banned because murder is a crime, and there is nothing more immoral than those who commit it.

The board also iterated the legal principle that a judicious application of Article 7(1)(f) necessarily entails balancing the rights of traders to freely employ words in the signs they wish to register as trademarks against the rights of the public not to be confronted with disturbing, abusive, insulting and even threatening trademarks. Thus, a trademark is "contrary to public policy or to accepted principles of morality" if the addressee of the goods marked with the trademark would be insulted or degraded, or when individuals or groups would be exposed to discrimination or ridicule by such use. The decisive factor is the objective understanding of the addressee. The purpose of Article 7(1)(f) is not to identify or filter out signs whose use in commerce must at all costs be prevented; rather, the rationale of the provision is that the privilege of trademark registration should not be granted to signs that include dubious language. Applied to the present case, the definite article 'the' and the term 'Hure' referred to an unknown, ultimately fictitious person and not to the addressee of the goods; while the term 'Wander' in combination with the word 'Hure' referred to a phenomenon that no longer meets today’s reality of this profession. Thus, the applied-for mark contained no semantic statement that the targeted persons or groups could think was meant to refer to itself.

For all these reasons, the Board of Appeal found that the mark should be allowed for registration.

The dispute is interesting in that it provides some insight into the legal consequences that a company may face if it tries to register a trademark that includes a term with a 'juicy' meaning.

The phenomenon of the 'traveling female' was also the subject of a satirical story written by Honoré de Balzac, titled La belle Impéria. The story itself, though, is primarily about the Catholic clergy’s morals at the Council of Constance, when the city was packed with clergymen, noblemen, and about 700 'traveling females', which arguably had power over them all. In commemoration of these women, German artist Peter Lenk created the statue Imperia, which is now placed at the entrance of the harbour of the City of Constance in Germany. The Imperia holds in its hands two men, one of which resembles Pope Martin V and the other Emperor Sigismund. The former was elected during the Council of Constance, while the latter was the king who called the Church Council. Both figures are shown naked except for their respective symbols of power, namely the crown and papal tiara. The statue has become a major tourist attraction.

Maren Ebner, Squire Patton Boggs (US) LLP, Frankfurt am Main

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