The General Court has confirmed that the mark "F--KING AWESOME", owned by an American skateboarding and fashion brand, is not sufficiently inherently distinctive to function as a registered trade mark in the EU.
Whilst the mark had cleared the hurdle of not being contrary to public policy and offensive, the decision is a stark reminder of the challenges brand owners may face when seeking to register marks that could be perceived by consumers as purely promotional messages or marketing slogans.
Although the case focused on inherent distinctiveness, the European Union Intellectual Property Office (EUIPO) could now resume its examination to assess whether the mark has acquired distinctiveness through FA World Entertainment Inc.'s use.
The applicant, FA World Entertainment Inc., applied to register the word mark "F--KING AWESOME" via an EU designation of its International Registration (the mark has already been successfully registered in the US).
The designation covered various clothing and skateboard apparel across classes 9, 18, 25 and 28 (including eyewear, bags, clothing, skateboards and accessories).
The EUIPO rejected the designation on the grounds that the mark was devoid of distinctive character, as consumers would interpret it as a pure promotional statement suggesting the goods are of "exceptional quality" – rather than indicating origin. The mark was also deemed contrary to public policy and offensive.
On appeal, the EUIPO Board of Appeal disagreed that the mark was offensive – it was merely a 'slightly vulgar message promoting the high quality of the goods at issue' - but confirmed the Examiner's view that the mark was non-distinctive. FA World Entertainment Inc. lodged a further appeal with the General Court.
The General Court agreed with the Board of Appeal's assessment that the mark would simply indicate to the relevant English-speaking public (largely young-middle aged customers interested in skateboarding and fashion) a promotional message about the quality of the goods in very informal language.
A key debate, of course, was the interpretation of the mark.
In its appeal, FA World Entertainment Inc., had argued that the Board of Appeal had incorrectly assumed that consumers in certain EU countries such as Ireland, Malta, Cyprus, and Portugal would understand the mark, as English is not their mother tongue and the words do not form part of their basic vocabulary. However, the Court disagreed, pointing out that English is the official language of countries such as Malta and Ireland and therefore the mark would be understood by its inhabitants.
As for the interpretation of the mark itself, there was no dispute regarding the meaning of the individual words ("f--king" being considered a "vulgar intensifier" and "awesome" meaning "excellent" or "outstanding"). However, FA World Entertainment Inc. raised that the words "F--KING AWESOME", had no meaning as a whole. In particular, the words when combined have no firm dictionary definition, could have various connotations and therefore should be considered distinctive.
However, the Court disagreed, stating that the absence of a dictionary definition does not mean the mark has no meaning or that it will change the public's understanding of it. It was further noted that this was not an unusual play on words – just a combination of two words with precise meaning forming a phrase that is known in informal language.
The Court further disagreed with FA World Entertainment Inc.'s assertions that the mark must have distinctive character as consumers will encounter it directly on the goods. In this case, the mark would be sewn on labels inside garments, appear on tags and be applied on goods such as skateboards. The Court considered that this would simply draw a consumer's attention to the "high quality" of the goods, and not indicate commercial origin.
The case also confirms the general approach where marks are successfully registered in other jurisdictions. Although the mark appears to have been refused in the UK, FA World Entertainment Inc. argued that the successful registration of the mark in the US demonstrated that it was considered sufficiently distinctive for the purpose of registration in the context of the English-speaking consumer. It also flagged several other EU trade mark registrations it considered relevant.
However, the Court highlighted that the EU trade mark regime is an autonomous legal system separate from other national systems (such as the US system). Each mark must also be examined in its own right based on its specific facts, as opposed to relying on the EUIPO's previous decision-making practice.