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On 23 October 2020 the Patent and Trademark Office (PTO) refused the registration of the mark PANDEMIA ('pandemic') for goods in Classes 32 and 33 on the grounds that the mark was contrary to accepted principles of morality. Following an appeal filed by the applicant, the Arbitration Centre for Industrial Property, Domain Names, Trade Names and Corporate Names (ARBITRARE) confirmed the refusal.
Facts
On 13 May 2020 the applicant filed a Portuguese trademark application for the mark PANDEMIA (642493) to cover:
• "barley wine [beer], fruit juice beverages, mineral water, seltzer water" in Class 32; and
• "white wine, grape wine, sparkling grape wine, red wine, alcoholic wines, table wines, sparkling wines, fortified wines, rose wines, cereal-based distilled alcoholic beverages, grain-based distilled alcoholic beverages, distilled beverages and spirits" in Class 33.
PTO decision
On 23 October 2020 the PTO refused the application on the grounds that the mark was contrary to morals, public policy and accepted principles of morality.
Appeal
The applicant filed an appeal against the refusal decision before ARBITRARE. It claimed that an offence to morals or public policy was something that can be considered a violation of:
• the rules of morality and social conduct which are generally recognised and accepted at a certain moment in a community; or
• the general living practices commonly accepted by honest people (ie, the predominant social morality).
The applicant opined that the mark PANDEMIA did not offend the morals of public order. It argued that the word 'pandemia' meant an outbreak of a disease with a wide international geographical reach, a meaning which by itself could not be considered to offend morals or the public order. The applicant claimed that a mere reference to a catastrophic situation was insufficient for the mark to be considered contrary to morals or public policy.
ARBITRARE decision
On 28 February 2021 ARBITRARE confirmed the PTO's decision to refuse the trademark application for the mark PANDEMIA on the following grounds:
• An assessment of whether the mark PANDEMIA complied with morals and public policy had to consider:
o the meaning of the word 'pandemia';
o the goods covered and the relevant target consumer; and
o the potential impact of the mark and its advertising message on the social environment (ie, the circumstantial reality that would shape and condition the reaction of potential consumers when faced with the mark).
• Considering the time at which the applicant had applied for the registration of the mark PANDEMIA and the historic context in which it had intended to use it, there would be an inevitable association between the mark and the COVID-19 pandemic.
• Since the goods covered by the mark targeted the general public, the criteria to assess the compliance of the mark with morality and public policy had to be more restrictive as the ethical sensitivity of the targeted consumers of those goods reflected the general moral convictions of the Portuguese community.
• Alcoholic beverages are typically consumed in a cheerful and relaxed social environment. Because the mark PANDEMIA evoked a human tragedy that had affected the population in general on several different levels and caused suffering and privation, it had to be considered shocking in light of the ethical sensitivity and convictions that were predominant in the social community.
Therefore, ARBITRARE considered that the mark PANDEMIA, which had been intended to cover alcoholic beverages, was contrary to morality and public policy.
Article first published at the ILO newsletter of 31 May 2021
31-05-2021
Back
On 23 October 2020 the Patent and Trademark Office (PTO) refused the registration of the mark PANDEMIA ('pandemic') for goods in Classes 32 and 33 on the grounds that the mark was contrary to accepted principles of morality. Following an appeal filed by the applicant, the Arbitration Centre for Industrial Property, Domain Names, Trade Names and Corporate Names (ARBITRARE) confirmed the refusal.
Facts
On 13 May 2020 the applicant filed a Portuguese trademark application for the mark PANDEMIA (642493) to cover:
• "barley wine [beer], fruit juice beverages, mineral water, seltzer water" in Class 32; and
• "white wine, grape wine, sparkling grape wine, red wine, alcoholic wines, table wines, sparkling wines, fortified wines, rose wines, cereal-based distilled alcoholic beverages, grain-based distilled alcoholic beverages, distilled beverages and spirits" in Class 33.
PTO decision
On 23 October 2020 the PTO refused the application on the grounds that the mark was contrary to morals, public policy and accepted principles of morality.
Appeal
The applicant filed an appeal against the refusal decision before ARBITRARE. It claimed that an offence to morals or public policy was something that can be considered a violation of:
• the rules of morality and social conduct which are generally recognised and accepted at a certain moment in a community; or
• the general living practices commonly accepted by honest people (ie, the predominant social morality).
The applicant opined that the mark PANDEMIA did not offend the morals of public order. It argued that the word 'pandemia' meant an outbreak of a disease with a wide international geographical reach, a meaning which by itself could not be considered to offend morals or the public order. The applicant claimed that a mere reference to a catastrophic situation was insufficient for the mark to be considered contrary to morals or public policy.
ARBITRARE decision
On 28 February 2021 ARBITRARE confirmed the PTO's decision to refuse the trademark application for the mark PANDEMIA on the following grounds:
• An assessment of whether the mark PANDEMIA complied with morals and public policy had to consider:
o the meaning of the word 'pandemia';
o the goods covered and the relevant target consumer; and
o the potential impact of the mark and its advertising message on the social environment (ie, the circumstantial reality that would shape and condition the reaction of potential consumers when faced with the mark).
• Considering the time at which the applicant had applied for the registration of the mark PANDEMIA and the historic context in which it had intended to use it, there would be an inevitable association between the mark and the COVID-19 pandemic.
• Since the goods covered by the mark targeted the general public, the criteria to assess the compliance of the mark with morality and public policy had to be more restrictive as the ethical sensitivity of the targeted consumers of those goods reflected the general moral convictions of the Portuguese community.
• Alcoholic beverages are typically consumed in a cheerful and relaxed social environment. Because the mark PANDEMIA evoked a human tragedy that had affected the population in general on several different levels and caused suffering and privation, it had to be considered shocking in light of the ethical sensitivity and convictions that were predominant in the social community.
Therefore, ARBITRARE considered that the mark PANDEMIA, which had been intended to cover alcoholic beverages, was contrary to morality and public policy.
Article first published at the ILO newsletter of 31 May 2021
31-05-2021
