Trademarks Registry keeps FOOK off the register

United Kingdom

A hearing officer at the UK Trademarks Registry has refused an application to register the mark FOOK on the grounds that it was contrary to accepted principles of morality.

Kevin Scranage, a resident of Bury in the northwest of England, applied to register FOOK in Class 25 of the Nice Classification for clothing, footwear and headgear. An objection to registration was raised under Section 3(3)(a) of the Trademarks Act 1994, which states that a trademark shall not be registered if it is "contrary to public policy or to the accepted principles of morality", on the grounds that the mark was phonetically very similar (and identical in some dialects) to the English swear word 'fuck'.

Scranage strenuously denied that the objection was justified. He argued that the pronunciation of FOOK was clearly different from that of fuck and that FOOK was an acronym for Friends Only OK. In addition, he said that the registered trademark FCUK (held by clothing retailer French Connection) was clearly intended to be associated with fuck yet was allowed to proceed to registration. In further correspondence, Scranage insisted that FOOK was a Chinese word for 'blessing' in an attempt to distance it from fuck.

The hearing officer was not convinced by Scranage's arguments. He referred to the TINY PENIS decision for guidance, which provides that the test to determine whether a mark contravenes accepted principles of morality is whether, objectively, the word is likely to outrage people. Taking into account the fact that (i) the mark would be used on clothing, and (ii) in certain parts of the United Kingdom the pronunciation of FOOK and fuck would be identical, the hearing officer held that the proposed use was akin to using fuck. He concluded that such use would "cause greater offence than mere distaste to a significant section of the general public".

The hearing officer rejected some of the evidence produced by Scranage to suggest that the word 'fuck' is inoffensive, declaring that "these documents were returned because they contained images which were pornographic in nature and are unlikely to be legally available in the United Kingdom, at least outside a licensed sex shop".

Accordingly, the hearing officer refused to register the trademark FOOK.

Jeremy Dickerson, DLA LLP, London

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