January 2006
FCUK UK TM OK says TM Registry
After what seemed like a gargantuan effort to get the FCUK UK trade mark registered in the first place (see our previous articles on the registrability of FCUK) various versions of the “FCUK” mark successfully made it on to the UK register. After a comparatively short grace period the class 14 mark (jewellery and watches) has been subject to its first attack in the form of an application for a declaration of invalidity by a Mr Woodman who brought the action on the basis that he felt the mark was offensive and therefore contrary to public policy or principles of morality and would be perceived by the average consumer as actually being the word “fuck”.
In order to succeed with the declaration of invalidity Mr Woodman needed to show that the mark was contrary to public policy or morality and in order to do this he based his case on the evidence presented to the Advertising Standards Authorities and their subsequent decisions in relation to complaints made to the ASA based on use by French Connection of the mark “FCUK” in advertising. Understandably the hearing officer held that many of the ASA cases had referred to cases where the FCUK mark was used in a sentence or slogan which would increase the chance that the public would believe the FCUK mark to actually be the word “fuck” (e.g. “World’s biggest FCUK”). This is conceptually different to the use of the mark in isolation which was what had been applied for and registered. He further suggested that the DVLA, as a public body, do not permit number plates which may be read as containing expletives.
French Connection produced lots of evidence that showed that historically French Connection have used internal codes to refer to their US, Hong Kong and UK wings of the company referring to them as FCUS, FSHK and FCUK. Further evidence was adduced of widespread use of the mark including in 1.8 million Boots brochures from which only 2 complaints were received which is arguably a low complaint rate. Equally French Connection ran a radio station for which purposes Ofcom did not raise issue with the name FCUK fm thereby giving a strong indication that Ofcom, as a public body, does not consider FCUK to be against public policy. French Connection have also sponsored public events under the FCUK brand including events run by publicly funded organisations including the V&A, various arts and theatre companies and music organisations.
The registry held that the mark was not contrary to public policy or morality and the declaration of non-infringement was refused.
BRIFFA Comment:
The registry raised a distinction between bad taste and public morality or policy in that it agreed that that some people may find FCUK to be in bad taste but they disagreed that it contravened public policy or morality.
Many other marks have previously been the subject of objection on the basis of public policy or morality including “JESUS” (wasn’t registered) see the separate article on this mark, “DICK & FANNY” (was permitted) and “TINY PENIS” (wasn’t registered).
Briffa can assist with registrability advice and have experience of registry practice in the UK and Europe as well as a large network of agents throughout the world.
Sanam Fiaz
sanam@briffa.com