International report - Principles of morality as absolute grounds for refusal 20 Jun 12
Jacobacci & Partners - Italy
In Italy, principles of morality represent absolute grounds for refusal of a trademark registration. Trademarks including terms or devices regarded as being contrary to “good morals” are deemed to contravene public order, and cannot be registered. If protection has already been granted, such a mark may become the object of an invalidation action before the competent civil court.
This ground for refusal is subjective and depends on society's perception. Italian case law concerning this matter is rather limited and the meaning of “good morals” is still unclear.
Two recent decisions provide examples of the interpretation of “good morals” as applied by the Italian Patent and Trademark Office (IPTO) Board of Appeal: Decision 3/10 on the mark DE PUTA MADRE 69, and Decision 10/10 on the mark PUTTANOPOLY.
The principles of morality and good morals are general principles of the Italian legal system. They refer to the common sense of decency as perceived by the general public at a specific time, as provided by Article 529 of the Criminal Code.
It is therefore impossible to determine ex ante which terms, devices or expressions are contrary to the principles of morality. As society is constantly evolving, expressions which might have been regarded as immoral in the past may now be perceived as normal, or at least neutral.
The changing character of this ground of refusal makes it difficult to issue decisions in trademark cases concerning the violation of good morals, given both the absence of clear evaluation parameters and the need to refer to uncertain notions, such as common sense and decency.
Accordingly, few significant decisions clearly state the circumstances in which questionable terms, expressions and devices can be registered as trademarks, being in "bad taste” but not against the common sense of decency.
Board of Appeal examples
In Decision 3/10 the Board of Appeal declared a previous decision of the IPTO invalid and ordered the registration of the trademark DE PUTA MADRE 69, which Mexico 69 Srl had applied to file for clothing, footwear and headgear in Class 25.
The IPTO had refused to register the cited trademark for violating Articles 14(I)(a) and 10(IV) of the Industrial Property Code. It found the Spanish expression “de puta madre" to be offensive and to violate the principles of morality.
Mexico 69 Srl appealed the decision before the Board of Appeal, stating that the issue was the mark's compliance with the common sense of decency and fundamental principles of society, rather than its bad taste.
The phrase “de puta madre” is widely used in Spanish as a synonym of “cool”, and conveys a positive message of something trendy, crazy, amazing, desirable or super. Therefore, Mexico 69 Srl argued, it is far from being an offensive expression.
However, the meaning of this expression as perceived and used by young Spanish people is different from its literal translation in Italian, “di madre puttana”, which in English translates as “son of a bitch”. The Spanish meaning is devoid of the immoral character which appears in the literal Italian translation.
Moreover, the IPTO and the Office for Harmonisation in the Internal Market have both previously registered other trademarks including the expression “de puta madre” for the same applicant. Thus, the board declared the IPTO's decision to refuse registration to be unreasonable, contradictory and illogical.
The Board of Appeal recognised two meanings of the contested expression: the literal meaning, which is contrary to the principles of morality, and the idiomatic meaning, which conveys and emphasises the positive message of something trendy, crazy, amazing, desirable or super.
According to the board's opinion, the Spanish expression “de puta madre” is not obscene per se. The overlap of its idiomatic meaning with the literal one removes the connotation of immorality which this expression might have had when interpreted literally.
In its decision, the board recognised the absence of significant case law dealing with the issue of principles of morality. However, it mentioned Article 9 of the Code of Advertising Practice as a precedent providing some guidance on the distinction between obscenity, defined as something repugnant “to the common taste and sensibility of the consumers”, and mere bad taste.
The concepts of common sense of decency and vulgarity, the board confirmed, are undetermined, change over time and depend on evolving social perception. The parameters for judging the compliance of certain expressions and devices embodied in a trademark with the principles of morality are thus to be found in the common sensibility. Distinctive signs that offend the common sensibility shall neither be registered as trademarks nor used in commercial communications. However, mere bad taste does not make a sign offensive.
In this case, the board also balanced the consistency of the decisions on the one hand, and the applicant’s existing goodwill in the trademark on the other. It ordered the IPTO to grant the registration of the mark DE PUTA MADRE 69.
In Decision 10/10 the Board of Appeal upheld the IPTO's refusal to register the mark PUTTANOPLY, applied for in connection with Classes 28, 36, 41, 42 and 45 by the Committee for Prostitutes' Civil Rights. The IPTO had regarded the trademark as contrary to the principles of morality. “Puttana" means "bitch" or "whore” in Italian.
Before the board, the applicant argued that the composition of the words comprising the mark had a sophisticated character, and that the products and services distinguished by the trademark had an educational purpose, designed to offer social services and rehabilitation possibilities to prostitutes.
According to the applicant, the term "puttanopoly" has no precise meaning in Italian in connection with the relevant products and services. Therefore, it is impossible to evaluate its compliance with the principles of morality. Furthermore, the educational purpose of the products and services should exclude any reference to immorality.
The board rejected these arguments and stated that "puttanopoly" has a precise meaning – “the city of prostitutes” – which is understood by Italian consumers and which is descriptive of the characteristics of the designated products and services.
The board's decision that the mark was descriptive, although not the direct object of the proceedings highlighted that the mark was contrary to the principles of morality since the notion of prostitution is socially unacceptable (in Italy, organising, promoting and exploiting prostitution is illegal).
In the board’s opinion, the attempt to present as common expressions that are socially perceived to be depreciative was in itself against the principles of morality.
These two decisions confirm that no common criteria exist for the evaluation of whether trademarks are consistent with the general principles of morality; rather, the outcome of each case largely depends on practical considerations.
In the DE PUTA MADRE 69 decision, it appears that the board failed to take into account that the expression under examination was in Spanish, while the relevant public was Italian and not necessarily familiar with Spanish slang expressions. It may have been argued that the expression is probably understood by Italian consumers in its literal meaning, as it is phonetically and conceptually similar to corresponding Italian expressions. This decision appears to have been made based on the fact that the IPTO had already registered trademarks consisting of this expression for the same applicant, rather than in terms of whether the phrase conformed to the principles of morality.
In the PUTTANOPOLY case, on the other hand, the board made no evaluation of how the applicant would have used the trademark, but instead considered the trademark to be contrary to the principle of morality per se on absolute grounds.
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