'Je suis Cecil': trademark law and distasteful capitalism

It is a sad but undeniable truth that there are people who seek to capitalise on misery and misfortune. Significant tragic events – such as the World Trade Centre attacks, the attack at the headquarters of French satirical magazine Charlie Hebdo and even the killing of Cecil the lion in Hwange National Park, Zimbabwe – are cases in point. After each of these events occurred, applications to register related trademarks were filed.

A number of countries – including the United States, Europe and Australia – have trademark laws which prohibit the registration of marks that are considered to be scandalous or offensive.  However, whether a mark is considered scandalous or merely distasteful depends on the context.

When is distaste prevented by trademark law?
A few days after September 11 2001, those seeking to capitalise on the attacks were out in force, selling t-shirts and other memorabilia. Further, various parties attempted to register trademarks associated with the events. Although capitalising on such a tragedy by filing a trademark application may appear to be in bad taste, it all depends on context. For example, the National September 11 Memorial and Museum has successfully obtained several trademark registrations for a logo containing ‘9/11 MEMORIAL’ covering museum services and memorabilia. Nevertheless, others have had their applications for marks containing or relating to '9/11' rejected.

US trademark law prohibits the registration of a trademark that is considered scandalous in nature, and Australian and EU trademark laws contain similar provisions. However, at least in Australia, the threshold for a mark to be considered scandalous is quite high, given that registrations have been obtained for marks such as NUCKIN FUTS (Registration 1408134) and POMMIEBASHER (Registration 1267253).

Fast forward to 2015 and people sought to capitalise on the tragic events in France by applying to register 'Je suis Charlie'. The French Trademark Office rejected at least 50 applications to register this term, but on the grounds of descriptiveness – albeit that French trademark law also prohibits the registration of marks that are considered "contrary to public order or morality".

An application to register 'Je suis Charlie' was filed in the United States in respect of charitable services, but was rejected on the grounds that the public would not perceive the slogan as a trademark that identified the source of the applicant’s service. According to the US trademark examiner, use of the slogan has become ubiquitous with respect to the Charlie Hebdo magazine attack, as well as in connection with consumer merchandise produced by other parties.

In Australia, applications to register ‘Je suis Charlie' (Application 1668521) in respect of publishing services (including publishing by electronic means) and ‘Charlie Hebo' (Application 1668519) in respect of fabrics and apparel (clothing, footwear and headgear), were filed – but have since been withdrawn – perhaps on the basis of negative publicity.

Lastly, several companies have recently applied to register marks containing 'Cecil' in the United States, including:

• i-Star Entertainment, which has applied to register 'Cecil the lion' in respect of toys and gifts (US Serial 86709523);
• Canadian Colette Ledoux, who has applied to register 'Je suis Cecil' in respect of charitable and online retail services (US Serial 86713998); and
• Ty Inc, which has applied to register 'Cecil' in respect of stuffed toys (US Serial 86709963), as well a corresponding trademark application for 'Cecil' in Australia (Application 1711585).

As mentioned above, the threshold for scandalous under Australian trademark law is quite high. So while some may see these applications for marks containing 'Cecil' as distasteful, distaste does not generally constitute a prohibition against obtaining a registered trademark. At least in the United States and Australia, trademark applications undergo substantive examination, which includes an assessment of inherent registrability (ie, whether the mark can actually function as a trademark) and a comparison with earlier filed or registered trademarks. Provided that a trademark is not descriptive or confusingly similar to an earlier filed or registered trademark, registration is likely.

Who is the rightful trademark owner?
In first-to-use jurisdictions, ownership of a trademark is generally determined by priority of use in the course of trade; whereas in first-to-file jurisdictions, rights are provided to the first person that files an application to register a trademark.

With respect to the recent events in France, it is perhaps unsurprising that the French Trademark Office was flooded with applications to register ‘Je suis Charlie' given the first-to-file nature of French law. Even in first-to-use jurisdictions, it is common to observe a proliferation of trademark applications subsequent to a significant and tragic public event. When applications do not come from the originators of the trademark, but are first-to-file trademark applications, the laws of a first-to-use jurisdiction at least provide some protection against misuse – rights stemming from the first legitimate use of a trademark would be afforded some protection.

There was a significant increase in demand for Charlie Hebdo magazine in Australia after its headquarters were attacked. Could the magazine owner have used this as the basis to challenge Australian applications for ‘Charlie Hebdo' and ‘Je suis Charlie' to prevent their registration? Perhaps.

The Australian application filed for ‘Charlie Hebdo' might have been challenged successfully on the basis that the Australian applicant did not own the mark. However, the success of that challenge to ownership would have depended on whether there was evidence of prior use of ‘Charlie Hebdo' in Australia by the French magazine company. As there was a significant increase in demand for the magazine, evidence of a significant number of Australian visitors to the Charlie Hebdo website might have constituted sufficient proof. Alternatively, it might have been possible to establish that ‘Charlie Hebdo' was significantly well known and had acquired a reputation in Australia before the date on which the Australian application was filed, and thus the use of ‘Charlie Hebdo' by the Australian applicant would have deceived or caused confusion. In this context, the relevance of reputation is irrespective of whether the mark has been used in Australia and the nature of the goods and/or services normally associated with the mark. The owners of the French magazine could also have challenged the application for ‘Charlie Hebdo' on the grounds that it was filed in bad faith. However, this might have been difficult to prove.

With respect to ‘Je suis Charlie', the application might have been rejected under the provision prohibiting the registration of scandalous marks. This provision also allows the prevention of registration of a mark if its use would be contrary to law. Notably, Australian consumer law prohibits misleading and deceptive conduct in trade and commerce. Thus, one possible point of challenge might have been that use of ‘Je suis Charlie' in respect of publishing services could mislead and deceive because it suggested an affiliation with Charlie Hebdo.

Where there is a will, there should be a way
In a market-based economy, trademark owners are generally free to choose trademarks associated with their goods and/or services. Ultimately, choosing wisely will help to build strong brand recognition and capture market share.

Trademark laws in most jurisdictions recognise this freedom to choose, within reason. Whether a mark might be considered scandalous or merely in bad taste will depend on the context of use, but also perhaps what is socially acceptable at that time.