THERE AIN'T NO F IN JUSTICE gets justice on appeal

In In the matter of Application 2356798B in the name of Scranage (Case O-094-08, March 31 2008), the appointed person has overruled the hearing officer's decision to reject the application for the registration of the trademark THERE AIN'T NO F IN JUSTICE for t-shirts, sweatshirts and baseball caps.

Following the UK Intellectual Property Office's refusal of his earlier application for the registration of the mark FOOK under Section 3(3)(a) of the Trademarks Act 1994 on the grounds that it contravened accepted principles of morality (for further details please see "Trademarks Registry keeps FOOK off the register"), Kevin Scranage applied to register the mark THERE AIN'T NO F IN JUSTICE for:

• "clothing, footwear and headgear" in Class 25 of the Nice Classification;
  
  
• "advertising, business management, business administration and office functions" in Class 35; and
  
  
• "insurance, financial affairs, monetary affairs and real estate affairs" in Class 36.

The registry raised objections against:

• all the goods and services under Section 3(3)(a) of the act on the grounds that the mark contravened accepted principles of morality; and
  
  
• against Class 25 goods under Sections 3(1)(b) and (c) of the act on the basis that the sign might serve in trade to designate the intended purpose of the goods (eg, by displaying a slogan which expresses the views of the wearer).

In a second hearing, the registry waived the objection under Section 3(3)(a) and impliedly waived the objection under Section 3(1)(c) against Class 25 goods, but maintained a partial objection under Section 3(1)(b) against "t-shirts, baseball caps and the like".

The hearing officer considered that the average consumer was likely to perceive the slogan as a statement about the justice system (ie, that there is no justice). The hearing officer analyzed the mark in light of the goods covered by the application, but took the view that it was "considered normal and fair use to place the sign on the exterior of the goods". According to the hearing officer, "slogans used as trademarks are not always easy to identify as such when used as what appears to be decoration" because consumers have been using slogans for years on specific clothing as a support for personal statements. Thus, the mark THERE AIN'T NO F IN JUSTICE was unlikely to be seen as an indicator of trade origin when placed on t-shirts, sweatshirts and caps.

The hearing officer drew a distinction between this kind of clothing and other clothing, explaining that the public has not been educated to see suits, dresses, trousers, pullovers and most headgear decorated in the same way as t-shirts, sweatshirts and caps. On this basis, the hearing officer concluded that the public was likely to see the slogan when used in this way as a statement by the wearer about the justice system, unless educated to the idea that it is an indicator of trade origin though use. Scranage appealed.

The appointed person overruled the hearing officer's decision on the basis that THERE AIN'T NO F IN JUSTICE is not an advertising slogan and does not commend the quality or any other characteristics of the goods. According to the appointed person, the hearing officer brought stricter criteria into his assessment on the distinctive character of the mark and reached his decision on a 'worst case' assumption of how the mark would be used (ie, on the front of the t-shirts, sweatshirts and caps). The appointed person stated that:

"in assessing the distinctive character of a trademark, it is appropriate to take account of practices in the marketplace, including, in the present case, the well-known use of slogans as clothing brands; [however], the mark in suit THERE AIN'T NO F IN JUSTICE has no meaning in relation to the goods, is grammatically correct and contains an element of irony in its double entendre."

The appointed person believed that the application had the necessary capacity to distinguish in relation to t-shirts, sweatshirts and baseball caps in the same way as it has already been found by the registry to be distinctive for other items of clothing, footwear and headgear. Like any other trademark, THERE AIN'T NO F IN JUSTICE will be liable to revocation under Section 46 of the act if it is not used in accordance with its essential origin function. The appointed person thus found that the hearing officer took an over-cautious approach to the case and based his reasoning on too many assumptions. The appointed person concluded that the manner of use of the mark is a matter of choice for the trademark owner and "the possibility that a trademark might be used in a non-trademark manner does not per se detract from its distinctive character".

Chris McLeod and Emilie Scheffer, Hammonds, London