The Supreme Court gives a green light for the registration of vulgar trademarks

Just over two weeks ago, the US Supreme Court issued a ruling that shocked the public. In the Matal vs. Tam case[1], the judges ruled the Lanham Act was unconstitutional. The Act constituted the basis for the United States Patent and Trademark Office to refuse to register trademarks containing derogatory, offensive or vulgar elements against any person or group of persons.[2] The ruling has reverberated among the public.

Consequences of the American Supreme Court’s ruling

The Supreme Court stated in its judgment a mark submitted for registration as a trademark is a form of freedom of expression, which cannot suffer from any limitations during procedures before the Patent Office. According to the Court, the Patent Office cannot have the power to block the freedom of expression by refusing to register a trademark that has been deemed offensive. The Supreme Court’s argument was based on the fact a registered trademark, despite holding an “official stamp,” is the creation of a natural person, and remains a form of expression, enjoying the private freedom of speech guaranteed in the Constitution, rather than the so-called government speech, where such a freedom can be restricted.

The verdict has attracted divergent views. On the one hand, it has a very positive note. The case concerned a rock band called “The Slants,” which for many years was unsuccessfully demanding the registration of their name as a trademark. The band is made up of four Asian Americans who decided to change the negative racial associations with the word “slant” by using it to name their band and, to a certain extent, to have a control over its use. Judging from the intentions of the claimants, the existing ban on the registration of offensive words as trademarks could indeed be regarded as an excessive restriction of the freedom of speech. On the other hand, before our very eyes, another barrier in the United States protecting the market from hate speech and vulgar language, racism and other negative content disappears. It will soon be clear whether America ends up flooded with trademarks of morally questionable content.

It is worth noting the registration of a trademark does not protect the entitled person against infringement claims of other person’s personality rights, but merely assures the exclusive use of the trademark to designate the goods or services for which that mark has been reserved. As a result, the ruling in question does not mean that perpetrators in the Unites States will get away with defamatory statements — as was the case before, they may be held liable for label or slander.

Does Polish regulations allow for the registration of vulgar trademarks?

The counterparts of the regulation challenged by the US Supreme Court in the Polish and EU legal systems are Art. 129¹ clause 1 section 7 of the Industrial Property Law:

“Rights of protection shall not be granted for signs which (…) are contrary to law, public order or morality”

and Art. 7 clause 1 letter f of Regulation No 207/2009 on the Community trademark:

“Trademarks which are contrary to public policy or to accepted principles of morality shall not be registered.”

Both in the Polish and European systems, patent authorities examine ex officio whether the mark submitted for registration could violate religious, moral or political beliefs due to its form or content, whether it contains obscene, vulgar or insulting elements or otherwise infringes the principles of social interaction. As an example, in the past, the Polish Patent Office refused to register e.g.: “MLEKO CYCATE” [STACKED MILK], “PAPRYFIUTKI” [PEPPER COCKS] or the “fighting Poland” sign – the symbol of the 1944 Warsaw Uprising and the Home Army (AK). Among the high-profile examples of applications rejected by the EU system are the ”JE SUIS CHARLIE” mark and the Soviet “hammer and sickle” symbol.

There is no indication the above-mentioned regulations will change. In the European system, the free speech doctrine is not liberal enough to lead to recognizing that state authorities should not control the protection of marks with controversial content or form.

However, what may change — and probably should — is the current practice of authorities. The sensitivity of our society to some formulations, associations or “newspeak” changes. Words that were considered vulgar thirty years ago are nowadays colloquial. The official “censorship” should therefore be constantly updated and applied much less frequently.

[1] Full text of the decision: https://www.supremecourt.gov/opinions/16pdf/15-1293_1o13.pdf

[2] The grounds for the refusal, i.e. the provision recognized as unconstitutional in the case in question is § 1052(a) of the Lanham Act..