SCREW YOU registration limited to sex toys and contraceptives

The Grand Board of Appeal at the Office for Harmonization in the Internal Market has upheld, in part, an earlier decision to refuse registration of the Community trademark SCREW YOU.

On June 21 2004 Jebaraj Kenneth (active under the name Screw You Trading or Screw You Fashion) filed a Community trademark application for the word mark SCREW YOU in connection with condoms, contraceptives and sex toys (vibrators, dolls), breast pumps and artificial breasts in Class 10 of the Nice Classification, as well as various other products in four other classes including spectacles (Class 9) clothing (Class 25), sports gear (Class 28) and alcoholic beverages (Class 33).

The examiner refused the trademark considering that it was contrary to public policy or to accepted principles of morality and thus fell foul of the absolute ground of refusal enshrined in article 7(1)(f) of the Community Trademark Regulation.

The examiner stated that in the United Kingdom and in Ireland the word 'screw' is a coarse slang word equivalent to the word 'fuck' and that SCREW YOU was a profane expression used to insult a person.

Kenneth launched an appeal against the decision which went to OHIM's Grand Board of Appeal.

The board first expanded on the rationale behind the absolute ground concerned, namely barring public and administrative assistance to "people who wish to further their business aims by means of trademarks that offend against certain basic values of civilized society".

It mentioned that although such signs may be barred from registration, this does not necessarily prevent operators from using them to the extent such use is lawful under national blasphemy and obscenity legislation.

The board went on to give detailed guidance as to the balancing exercise to be carried out between the rights of applicants to include words and images in the signs they wish to register as trademarks and the right of the public not to be confronted with disturbing, abusive, insulting and even threatening trademarks.

It distinguished merely irreverent or distasteful signs from seriously abusive and deeply offending signs. The sign DICK & FANNY (English slang words for male and female genitalia) for clothing was cited as an example of the former.

The board held that, when assessing signs, OHIM should apply the standards of reasonable persons with normal levels of sensitivity and tolerance and take into account the context in which the trademark is likely to be used in connection with the relevant goods.

In applying these principles, the board held that a substantial proportion of ordinary citizens in Britain and Ireland whose values and standards are representative of society as a whole would find the mark SCREW YOU offensive and objectionable, especially if they:

• encountered the words as a trademark in ordinary shops to which children have access;
  
  
• saw SCREW YOU products advertised on television at a time when children were likely to be watching; or
  
  
• observed the mark displayed prominently on clothing worn in the street or visible in shop windows.

In view of these findings, the board confirmed the ineligibility of the sign SCREW YOU as a Community trademark for nearly all products.

It reversed the examiner's decision only in connection with breast pumps and artificial breasts, insofar as they are sold in sex shops, as well as sex toys (vibrators, dolls) and contraceptives. It held that, because of the nature of the goods and/or the sales channels through which they are marketed, it is unlikely that the relevant public will be offended by a term with sexual connotations.

Assessing the moral suitability of signs is obviously a very difficult and subjective exercise. However, the board's test and its application of that test in the case at hand may be seen by some as overly strict. According to Kenneth's website, he uses the SCREW YOU mark for high-end street fashion products in the United Kingdom and abroad. The site alleges that SCREW YOU clothing is distributed in numerous designer clothing outlets. Barring the trademark from the register makes it far easier for Kenneth's competitors to use identical or similar signs to distinguish identical or similar products. Not only is this potentially unfair to Kenneth's business, it may paradoxically also lead to increased use of SCREW YOU to distinguish clothing and accessories.

If the board's approach is perpetuated in future OHIM decisions, numerous traders (notably urban and street fashion designers) will need to find alternative ways to protect the signs they use to distinguish their products. Perhaps a more abstract assessment, which focuses on the intrinsic qualities of the trademark in relation to the goods and services for which it is applied for, should be considered.

Nicolas Clarembeaux, Altius, Brussels