Articles

Do ethics have a place in the trade mark world?

Release Date:

22 March 2007

Recent disputes involving the registration of trade marks affecting industry in developing countries has ignited a debate about the extent to which ethics should play a part in the trade mark world.  Similar arguments have been had about patents and the developing world for some time (particularly in relation to medical patents).

One wrangle has involved UK company, Kikoy UK Limited's application to register the word KIKOY as a trade mark in respect of clothing. "Kikoy" is an English variation of the Kiswahili word "kikoi", which refers to the distinctive cotton hand-made sarong traditionally worn by Kenyans living by the coast. A British trade organisation, Traidcraft is leading the consortium of British and Kenyan charities opposing the application. They argue that if the application is successful, kikoi producers in Kenya will be prevented from selling their products in the UK and that it could effectively kill off the Kenyan kikoi industry.

This argument suggests that Kenyan kikoi producers rely strongly on the name "kikoi" when selling their products in the UK. This does not seem to be the case (if it was then that in itself would be possible grounds for refusing registration).  Where they have used the term, it has most likely been used in a descriptive sense only.   

The real rationale for opposing Kikoy UK's actions is the perceived unfairness of a UK company obtaining commercial benefit from a name and product originating in a developing country. But there is currently no provision in the trade mark regime for this type of ethical objection.

The Ethiopian coffee bean scenario involves a reverse set of facts. The Ethiopian government has filed applications to trade mark its most famous coffee names – Sidamo, Harar and Yirgacheffe – with the intention of requiring coffee retailers around the world to pay for a licence to use these names. Starbucks has been severely criticised for attempting to oppose the trade mark applications. The fact that these coffee names have been used in a descriptive sense may block their registration in any case, but the suggestion from Starbucks' opponents is that the applicable trade mark law should be flexible where developing countries are concerned.

So should trade mark law develop to permit ethical considerations to influence decisions to grant or refuse the registration of trade marks? There is an argument that where a developing country applies for a trade mark which falls on the line of registrability, allowing it to be registered would be a good thing as it would encourage industry and trade in that country to move to a more sophisticated level. The contrary view is that morals do not fit with the commercial nature of trade marks and that it would not be feasible to formally introduce ethics into trade mark law. Where developing countries are concerned there is a general consensus that it is a good thing to support their commercial activities and help them into trade with more developed nations. But the situation is not always straightforward and what is ethical to one person may be morally deplorable to another. 

The trade mark system is currently relatively straightforward, cheap and accessible.   It is said that hard cases make bad law and these examples are certainly hard. There is no place for ethical complexity to be introduced into the realms of trade mark registrations.