The Refusal to Register “immoral or Scandalous” Trade Marks Violates the Constitutional Right to Freedom of Expression, Rules Us Supreme Court
| DOI | 10.1093/jiplp/jpz104 |
| Date | 13 August 2019 |
| Pages | 751-753 |
| Year | 2019 |
| Published By | Oxford University Press |
appearance of their aperitif nuts ‘goes against the principles of
patent law. The basic assumption of patent law is a temporary
monopoly on a technical innovation in exchange for the
availability to all once the patent has expired. In this case the
general availability of the innovation (the process for manu-
facturing the “tiger nuts”) is hampered by trade mark law’
(judgment, para 4.17, unofficial translation from Dutch).
But the District Court did not address this fundamental
issue.
The judgment, rendered only a few days after the CJEU’s
Textilis judgment, explicitly refers thereto and holds that
the case must be assessed under the old legal framework.
Indeed, Frito-Lay’s trade marks on the outer appearance of
the aperitif nuts had been registered before the entry into
force in the Benelux of the new, broader invalidity grounds
on 1 March 2019 and the court could therefore stick to the
old rules that only applied to shape marks.
After having established, as in Louboutin, that Frito-
Lay’s trade marks are not shape marks but marks that only
seek to protect the application of the mottled pattern on a
specific place of the product, the court could dismiss
Intersnack’s invalidity counterclaim without having to
address the ‘hot potato’ (or nut, in this case). So it con-
cluded that the refusal or invalidity grounds do not apply.
However, it did add the suggestive phrase ‘at least accord-
ing to the law as it applied until 1
st
March 2019’.
Practical significance
This case leaves the reader with a pressing ‘what if’ ques-
tion: What if the new, broader invalidity grounds had
applied? The mottled pattern of the nuts is surely ‘another
characteristic’ in the sense of Article 4.1 (e) of Directive
2015/2436. And there is a clear link with a once patented
inventive method.
Thecaseindeedbringstomindaremarkableparallelwith
the famous Lego case. In the long-fought battle between
Lego and its competitor Mega Brands, the fact that the Lego
brick had once been the subject of patent protection was an
aggravating circumstance for the EUIPO’s Cancellation
Division and Grand Board of Appeal (confirmed by the
General Court and the CJEU) to hold applicable the ‘techni-
cal effect’ invalidity ground of Article 7(1) of Regulation 40/
94. The CJEU (C-48/09 P) ruled that the rati o of this inva-
lidity ground is to ensure ‘that undertakings may not use
trade mark law in order to perpetuate, indefinitely, exclusive
rights relating to technical solutions’ because that would
‘considerably and permanently reduce the opportunity for
other undertakings to use that technical solution’.
Bearing these public policy concerns in mind, it would
make sense to transpose this reasoning to the aperitif nut
case.
However, there is also a difference with the Lego case. In
the Lego case, the technical effect (ie being able to place the
construction bricks on top of each other) was the result of
the appearance of the product. It was the appearance or
shape of the brick that was necessary to obtain the desired
technical result. But in the Tijgernootjes
V
R
case, it is actually
the other way around. The appearance of the product is not
responsible for the desired technical effect but it is rather the
(necessary/inevitable) consequence of applying the inventive
method. Other than in the Lego case, this sits less well with
the law text ‘necessary to obtain a technical result’. Rather,
the registered pattern is something that necessarily results
from a (the application of) a technical process.
Still, something does not feel right. Indeed, whilst trade
marks are (potentially) forever, patents are not and using
trade mark law as a vehicle to regain monopolies once
enjoyed under a patent might fall foul of the pursuit of a
healthy and fair system of competition.
The author is not aware of an appeal having been filed
but the question is bound to come back. Other cases can be
imagined where this question may also become relevant
and the link with design law and the Doceram case (C-395/
16) is not far away either.
A funny note to end with: the ‘Girafnootjes’ name as
such was not an issue. The District Court disagreed with
Frito-Lay’s argument that the signs were highly similar on
a conceptual level since both tigers and giraffes are exotic
wild animals having a brown-yellow skin with camouflage
pattern.
Eva De Pauw
HOYNG ROKH MONEGIER LLP
Email: eva.depauw@hoyngrokh.com
doi:10.1093/jiplp/jpz103
Advance Access Publication 8 August 2019
nThe refusal to register “immoral or
scandalous” trade marks violates the
constitutional right to freedom of
expression, rules US Supreme Court
Iancu v Brunetti, 588 U.S. ___ (2019)
After the USPTO and TTAB refused to register the mark
FUCT on grounds that it would be an immoral and scan-
dalous mark, the Federal Circuit Court of Appeals
reversed the refusal for violating the applicant’s right to
freedom of expression; the Supreme Court affirmed
the decision, striking down the immoral or scandalous
registration ban of the Lanham Act.
Legal context
Erik Brunetti’s 2011 trade mark registration application for
the mark FUCT was refused on consideration that it would
be an immoral and scandalous mark. He appealed the
Journal of Intellectual Property Law & Practice, 2019, Vol. 14, No. 10 751CURRENT INTELLIGENCE
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