PAKI will be perceived as racist word by English-speaking public

European Union
In PAKI Logistics GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-526/09, October 5 2011), the General Court has upheld OHIM’s decision to refuse registration of the word mark PAKI, finding that the application was contrary to public policy or accepted principles of morality.

In December 2005 PAKI Logistics GmbH filed a Community trademark (CTM) application for the work mark PAKI for goods and services in Classes 6, 20, 37 and 39 of the Nice Classification. The goods and services included crates and transport pallets in Classes 6 and 20, and repair of skeleton crates and pallets and transport services in Classes 37 and 39. In October 2007, OHIM rejected the application on the basis of Article 7(1)(f) of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009).

On PAKI Logistics’ appeal, the First Board of Appeal of OHIM upheld the objection on the basis that the term ‘Paki’ would be perceived by the English-speaking public in the European Union as a racist word - that is, a pejorative, offensive designation for a Pakistani or, generally speaking, a person from the Indian subcontinent, who lives in the United Kingdom.

On appeal to the General Court, PAKI Logistics claimed that:
  • OHIM had not conducted a proper assessment of the registrability of the mark, because it had failed to take the relevant public into consideration;
  • the term ‘Paki’ was used by the Pakistani community itself as a reference to foodstuffs originating from South Asia; and
  • the public’s perception of the term ‘Paki’ had altered to the point where it must now be considered acceptable.
In the appeal proceedings before the General Court, OHIM was supported by the UK government.

According to Article 7(1)(f), trademarks which are contrary to public policy or to accepted principles of morality shall not be registered. The provisions of Article 7(1)(f) reflect those in Article 6 quinquies B(iii) of the Paris Convention for the Protection of Industrial Property (as revised at Stockholm on July 14 1967), which provide for refusal of registration or invalidation of trademarks when they are contrary to morality or public order.

In dismissing the claims made by PAKI Logistics, the General Court upheld OHIM’s rejection to register the term ‘Paki’ as a CTM.

The General Court held that it was irrelevant, for the purposes of Article 7(1)(f), whether the term was used with the intention of offending, harming or discriminating against another person or group of persons. As a consequence, it was not permissible to limit the assessment of whether a term was offensive or racist to the public for which the goods and services of the application were intended. Rather, the general public’s understanding of the term was determinative.

The General Court had no doubts that the term ‘Paki’ could be perceived as a racist, discriminatory and offensive word by the UK public. It referred to the general principle that the protection against any discrimination is a fundamental value of the European Union, as provided in Articles 2 and 3 of the EU Treaty, Articles 9 and 10 of the Treaty on the Functioning of the European Union, and Article 21 of the Charter of Fundamental Rights of the European Union.

The General Court also dismissed PAKI Logistics’ argument that the perception of the word ‘Paki’ had altered and was now itself used by people of Pakistani origin. In assessing the evidence submitted by PAKI Logistics, OHIM and the UK government, it held that there was still sufficient evidence to the contrary. In the view of the General Court, OHIM was therefore correct in not construing Article 7(1)(f) too narrowly, but exercising a degree of moral judgement by applying the standards of a reasonable person with normal levels of tolerance.

This case serves to highlight the difficult task which OHIM has in assessing what is acceptable or contrary to public policy or principles of morality. It can be extremely difficult to ascertain when a mark crosses the boundary from being narrowly irreverent or distasteful to being seriously abusive or likely to cause deep offence.

It is interesting to note that PAKI Logistics is the owner of a German word mark registration for PAKI and of a corresponding international registration designating 13 EU member states, Norway and Russia. None of the trademark offices in these countries has issued an objection; however, no English-speaking country had been designated in PAKI Logistics’ international registration.

Florian Traub, Squire Sanders & Dempsey (UK) LLP, London

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