Freedom of expression and trademark registration: A case with the Ukrainian application at the EUIPO

For people following the war that Russia started in Ukraine, the phrase ‘Russian warship, go f**k yourself’ has become a symbol of resistance and courage of the Ukrainian people. Today, it is also a part of an intellectual property domain as a trademark application at the European Union Intellectual Property Office (EUIPO).

In this article, it will be argued that despite the laudatory intent of the applicant’s representative to benefit the Ukraine’s hero who was the initial applicant at the EUIPO, the applied-for phrase cannot become a trademark, as it shall be left to the public to be freely used as an expression of protest to Russia’s actions.

Overview of events

On the first day of the Russian full-scale aggression (24 February 2022), a Ukrainian border guard on the Snake Island used the phrase ‘Russian warship, go f**k yourself’ as a reply to the proposed surrender by the invaders. Immediately after that, the phrase has occupied an important place in the public discourse in both Ukraine and Russia. In the former case, the phrase is now a symbol of the Ukrainian defence used, for instance, in songs (a strong example) and on stamps. In the case with Russia, the saying is also a sign of opposition by Russian people to the political regime in the country; For example, activists, in their speeches or posts, suggest that the country’s state censorship ‘go along the path of the Russian warship’.

In March 2022, the World Trademark Review reported that a new trademark application had been filed to the EUIPO in the name of the Ukrainian border guard, though the current holder of the application is the Administration of the State Border Guard Service of Ukraine. When filing the application, the applicant’s representative described their aim as ‘defend[ing] against opportunistic trademarks’ and ‘giving the soldier and his family the ability to have ownership of the phrase’ (emphasis added). Besides, the representative noted that ‘many people are using the phrase commercially without [the soldier and his family’s] consent.’

Source: EUIPO

When looking at the application, one can see two lines of capitalized text in a simple font, with the first line consisting of the phrase in Russian and the second line – in English. At the end of the Russian text, there is a three-letter word that is often used as a translation of the English ‘f-word’ in the ‘go f**k yourself’ (or ‘f**k you,’ or ‘f**k off’) expression, with two first letters concealed: ‘**Й’ (there is no space added before this word and the preceding preposition ‘HA,’ or ‘ON’ in English). In the English text, there is the word ‘F**K’ at the end, with two middle letters concealed.

The sign was applied for goods and services in classes 9, 14, 16, 18, 25, 28, and 41 of the Nice Classification, including with respect to key rings, jewellery, art works, banners, clothes, toys, etc. that can be grouped as merchandise and promotional products.

In December 2022, the EUIPO refused to register the sign, and in February 2023, the applicant appealed. (There is another similar application for the EU trademark from the same parties that was submitted for goods in classes 29, 30, 32, 33, covering food and beverages. There is no EUIPO action as of the moment of writing, though the analysis below also applies.)

EUIPO analysis

The EUIPO raised an objection to the application based on contradiction to accepted principles of morality (Art. 7(1)(f) of the EU Trademark Regulation or ‘EUTMR’). The applicant, in turn, stressed the positive, not immoral, connotation behind the sign as a symbol of resistance and courage of Ukrainians, with these actions and attitude supported by the EU. The applicant also tried to prove the favourable connotation by arguing about the popularity of products that bear the phrase. This stand did not help.

In refusing the application, the EUIPO stated that reasonable consumers would perceive the sign as insulting because of its vulgar language: The office referred to the offensive sexual connotation of the implied ‘f**k you’ phrase and general taboo status of the ‘f-word’ in English (particularly regarding the chosen goods and services that, in many instances, may target youngsters, according to the office). More specifically, the EUIPO concluded:

[The sign] seeks to gain financial gain from what is universally accepted to be a tragic event, namely the invasion of Ukraine by the Russian Federation … Even if the sign was to be considered as a message of bravery and courage, it banalizes the Russian invasion and uses the sign as merely a tool to sell merchandising goods such as jewels, toys, clothing, wallets, etc.

The office listed numerous consequences of the war, including deaths of thousands of people, refugees’ influx to the EU, economic and defence issues for the EU countries, etc. and underlined that, despite the EU’s support of Ukraine, an ‘offensive sign’ cannot be regarded as registrable because of these circumstances.

Was the analysis conducted by the EUIPO a correct and full one? It can be concluded that, given the importance of the events and the role of the phrase in public discourse around the war, another ground for refusal in registering a trademark, namely non-distinctiveness (Art. 7(1)(b) EUTMR), should have become the focus of the analysis. In the alternative examination below, it will be attempted to reconsider the public policy and morality ground and put more emphasis on the non-distinctiveness one.

Alternative analysis

Preliminary remarks. To start with the basics, the list of signs that can become trademarks is non-exhaustive (Art. 4 EUTMR). Slogans and phrases in general represent one of possible options for registration. A slogan can mean ‘a phrase used to express a characteristic position or stand or a goal to be achieved’ as well as ‘a brief attention-getting phrase used in advertising or promotion.’ In the trademark context, the latter meaning may be more relevant, because trademarks are tied to economic activities in which marketing, including advertising, plays an important role. For instance, the EUIPO and Court of Justice of the European Union (CJEU) in their practice particularly refer to ‘advertising slogans’ and their ‘promotional formula’ (Smart Technologies v OHIM). Still, as it was mentioned, any phrase may potentially be a trademark if no grounds for refusal apply.

During the examination, the EUIPO has to go through the absolute grounds for refusal in accordance with the EUTMR and identify relevant grounds all at once. In this case, they appear to be as follows: (i) non-distinctiveness of the sign (Art. 7(1)(b) EUTMR) and (ii) contradiction to public policy or accepted principles of morality (Art. 7(1)(f) EUTMR). The non-distinctiveness ground immediately arises, because the trademark application consists of quite a long phrase in two languages, while a trademark that helps easily identify the product’s origin is typically a short word or a phrase (Beebe/Fromer). Besides, the phrase is very popular, as the applicant’s representative himself confirmed in correspondence with the EUIPO. The public policy and morality ground shall also be considered due to the reference to a brutal event and inclusion of the ‘f-word’ into the application.

Public policy and morality. In its refusal, the EUIPO touched upon only the public policy and morality ground, so this alternative analysis will also begin with it. According to the EUIPO summary, the goal of this ground is not to register signs that would ‘contravene the state of law or would be perceived by the relevant public as going directly against the basic moral norm of society.’ As for the public policy ground, the application of which shall be based on objective criteria, it is hard to understand how a clear condemnation of the war in Ukraine can be against the ‘state of law’ in the EU, when the EU is continuously adopting sanctions against Russia, package after package, and providing military aid to Ukraine. The applicant is not trying to register a name of a terrorist or crime against humanity, as in the case with ‘BIN LADEN’ or ‘MECHANICAL APARTHEID’, but condemns the war in the slogan, just like the EU does through the prism of fundamental rights according to the EU Charter. The public policy ground seems to be inapplicable.

Regarding moral norms, they are founded in subjective values that must be applied objectively. In this process, one has to consider the view of the relevant and even broader public, goods and services claimed, fundamental moral values and standards that change over time, and context in which the sign may be encountered by the public (PAKI v OHIM, Constantin Film v EUIPO). In the present case, it may be against the universally accepted anti-war position in the EU to claim that condemnation of the war through a slogan is immoral. As the applicant stressed in its correspondence with the EUIPO, ‘[t]he sign has a positive connotation and is supported by the vast majority of the EU population as a symbol of resistance to aggression and courage.’ A related issue is possible commercialization of tragic events, as it was the case with the ‘MH17’ sign (reference to the Malaysian Airlines plane that was shot down over Ukraine in 2014). However, the emphasis in the application is on positive feelings about the fight against the aggressor, about being on the side of the good, with extensive support in the EU where the trademark is applied for. The message is a total opposition to the war and tragedies that it causes.

This case reminds of the movement in which the phrase ‘Je suis Charlie’ was used to show solidarity with the victims of the 2015 shooting at Charlie Hebdo and general support to freedom of speech and press. While the phrase was related to a tragic event in France, its message on being on the side of victims and freedoms was a highly positive one. Still, ‘Je suis Charlie’ trademark applications were addressed by the EUIPO as ‘probably’ objectionable on the public policy/morality and non-distinctiveness grounds, with the latter one capable of resolving the questionable status of applying the former one (see below).

The Ukrainian sign becomes even more problematic in the morality domain when one considers the ‘f-word’, with the help of which the war-related message is constructed. Indeed, the ‘F**K’ part of the application may be an issue, given how many applications with this element get rejected at the EUIPO in accordance with Art. 7(1)(f) EUTMR and, probably, the so-called endorsement theory, i.e., the EUIPO’s approach not to ‘endorse a trademark that violates the values and moral precepts of a society’ (see Basire/Martin who criticize the approach). On the other hand, some signs with the ‘f-word’ are registered, and the EUIPO may justify its approval, for instance, by the fact that the f-word ‘is a somewhat vulgar intensifier merely reinforcing the meaning of [the other word in the application]’ (emphasis added). Thus, the EUIPO’s practice regarding the ‘f-word’ is not consistent, but given the wide use of this work in daily conversations, mass media, and art and, as a consequence, the disappearance of its ‘shock value,’ including on the EU level, it is doubtful that signs with the f-word are truly offensive (Basire/Martin).

Thus, while the Ukrainian application is related to a tragic event that the EUIPO tends to categorize under the public policy/morality ground for refusal, and while it includes the ‘f-word’ that the EUIPO usually does not accept, it is the adherence to all positive issues that arose during the war and the use of the ‘f-word’ as a possible ‘intensifier’ of that positiveness that make the application of the analysed ground questionable. As mentioned earlier, the non-distinctiveness ground may better fit the analysis.

Non-distinctiveness. The general distinctiveness requirement applies to any type of slogans or other phrases, meaning that they ‘must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish that product from those of other undertakings’ (Henkel v OHIM). However, when a slogan is used as a mere promotional formula, with no indication of commercial origin by it, it is devoid of distinctive character and cannot serve as a trademark (Smart Technologies v OHIM). According to the CJEU, there are certain qualities of slogans that may help establish their source-identifying function, with all of them related to unusualness or an extra work of people’s mind (‘play on words,’ ‘imaginative, surprising and unexpected’ character, etc. – Audi v OHIM). In addition, while no stricter criteria shall be utilized in assessing signs like slogans, the analysis shall be conducted with regard to the goods and services in the application as well as the perception of the applied-for sign by the average consumer, which may vary depending on a type of signs at issue (Audi v OHIM).

In the present case and given the current world affairs that are widely covered and discussed in the EU and beyond, the phrase about the Russian warship can hardly be named a promotional or advertising slogan. Even if it were considered such a slogan, it would still lack any distinctive character, for there is no unusualness or extra work of mind that may draw a link between the phrase concerned and the source of goods in the application. The slogan may be better categorized as a clear expression of a stand and opinion about the war in Ukraine that is understandable as such by a lot of people. Thus, the phrase has nothing to do with any product. It is even widely applied for third parties’ goods like clothing as a constitutive part of, for instance, t-shirts, a part for which consumers buy these products to transform their bodies into moveable signs of condemnation of the war.

The applicant wrote in its defence that

Since the beginning [of the war, the phrase] has become associated with the courage and bravery of the Ukrainian armed forces and a symbol of Ukraine’s fight for their freedom against Russian occupation. The sign has been widely used on protests and by international news agencies. It has also been used by political and cultural activists in Europe and the United States.

The applicant referred to the stamp, listed marketplaces that sell goods with the phrase, and stressed the attractive character of the phrase as it is, with no regard to any product’s source. From the applicant’s perspective, it was important to stop ‘bad faith users’ that ‘take financial gain’ from using the sign, while the ‘author of the phrase’ does not prosper.

While the applicant’s approach to benefit the family of the Ukrainian border guard is extremely praiseworthy, it is not in line with the logic of the trademark system. Any trademark, first and foremost, helps identify and distinguish products of one undertaking from those of another (Recital 11 and Art. 4 EUTM). However, the key point from the applicant’s analysis is that the phrase is already very popular and widely used by many parties, with no hints of it signifying any source of origin of any products. Instead, everyone around the applicant is using the phrase at issue for the only purpose – to express one’s stand towards the brutal war in Ukraine, and the applicant confirms that with their arguments. The trademark law system cannot become a tool to monopolize the phrase that already belongs to the public’s free voices.

One may ask, could the phrase be considered distinctive for food and beverages that are specified in the list of goods for the other Ukrainian application, i.e., for products that do not typically bear slogans as their core (e.g., milk, flour, juices, and alcoholic beverages v. t-shirts and tote bags). The answer will also be negative, since the phrase written on a package of bread will still be indicative of a stand that is understandable by everyone as such because of its wide dissemination and common values behind it. It is like writing about environmental goals of some company on its products in generally accepted terms.

Additionally, could this phrase acquire distinctiveness with respect to some party’s goods and services through extensive and constant use, as allowed by Art. 7(3) EUTMR? While the phrase is too long to be a good trademark (it is even filed in two languages probably to eliminate application costs, though it will hardly be used as submitted), it cannot be excluded that some person indeed constantly uses the phrase for its products. Even if one imagines that no one else does that (highly unlikely given the importance of the phrase), it can be argued that the initial meaning of the sign has already been fixed in history as a crucially important statement used by the crowd to express their opinions with respect to one of the most tragic events for Ukraine. Non-distinctiveness is at the heart of such socially valuable signs, helping citizens stay free in expressing their views. Now, it is worth separately addressing these issues in our alternative analysis.

Freedom of speech concerns. Freedom of expression is not among absolute grounds for refusal in the EUTMR. At the same time, all these grounds have some public interest behind, with the non-distinctiveness ground being related to the importance of providing consumers with convenient tools (i.e., signs) that truthfully inform about product origin (Alfred Strigl). The other side of this requirement can be formulated in the freedom of expression terms: If something does not enable consumers to distinguish products and, on the contrary, is used by many in expressing opinions and views, such tools shall not become trademarks used in commerce. This interpretation may be justified by the EUTMR preamble that fixed that ‘[the regulation] should be applied in a way that ensures full respect for fundamental rights and freedoms, and in particular the freedom of expression.’ While this sentence is included into Recital 21 that can be tied to Art. 14 EUTMR on ‘Limitations of the effect of an EU trade mark,’ the freedom of expression concerns seem to be crucial in considering all contexts, given its importance for the EU as specified in Art. 11 of the Charter of Fundamental Rights.

Currently, some commentators in trademark law underline the necessity to refer to freedom of expression when assessing trademark cases, including in the interpretation of such notions as ‘honest practices’ and ‘due cause’ (Schovsbo, Senftleben). At the same time, Bohaczewski, while focusing on the infringement stage, considers that the freedom of expression concerns have already been built into the trademark system and do not require a separate application in trademark cases. The registration stage is not left uncovered: For instance, Sakulin, even before the most recent EU trademark reform, suggested a stricter application of the distinctiveness requirement to registering a trademark with the goal to better integrate the freedom of expression matters – this view is worth taking into consideration when dealing with the Ukrainian application.

While one indeed may opine that the legislator has incorporated the freedom of expression concerns into the grounds for refusal in registering a trademark, it may be beneficial for the trademark field actors to clearly perceive every time, for example, what higher goals are pursued in applying the non-distinctiveness ground. In the present case, the EUIPO examiner could refer to this ground in line with the argumentation above and add that the phrase in the trademark application has acquired a certain significance in the public discourse around the war in Ukraine, namely in how people that look for means of expressing their views find the appropriate tool in products like clothing, covered by the application, with the phrase at issue – or in how companies may do the same by placing the phrase on packages of their products to let customers know about their stand – and in how the wide usage of this tool helps unite people’s voices in the informational war against Russia’s actions.

Conclusion

When one tries to discover more cases related to slogans used on products like clothing, the trademark registration manual of the United States Patent and Trademark Office (USPTO) appears to be quite helpful. It explicitly states that

Slogans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates [e.g., to express enthusiasm] have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods … [C]ommon phrases and slogans that are frequently displayed by many different parties on various products or with various services are not likely to be viewed as source indicators … Instead, such goods would likely be purchased for the message the phrase or slogan conveys [in the case with awareness ribbon symbols, for instance, – ‘regardless of the particular context or use’].

In the United Kingdom, the IP office (UKIPO) has a separate section in its examination guide on ‘Non-distinctive statements used on clothing’ that accepts the well-established practice of putting messages (not origin-denoting information) on clothing and considers items like t-shirts to be ‘an effective platform’ for doing that. The focus of the USPTO and UKIPO explanations is correctly put on non-distinctiveness. As for the EUIPO, no similar examples have been identified in its trademark guidelines.

The applicant’s elaborations let one conclude that they are probably going to license the aspired trademark to allow third parties – that now freely sell goods like t-shirts with the phrase on the front – selling those goods ‘officially’ under the applicant’s control and with the applicant receiving royalties from such a use. Thus, there is likely no intention on the applicant’s side to use the phrase at issue as a product source (e.g., on a t-shirt’s small label inside the product; however, even in this case the phrase may still maintain its message-like, not source-like, status). Instead, the use will be equal to stating one’s opinion of Russia’s war in Ukraine (e.g., on a t-shirt front or back), likely written in large letters to draw attention of passers-by.

In its examination, the EUIPO could have referred to all these issues, including the ones in the previous paragraph, and used arguments, such as those by the USPTO and UKIPO, to justify its refusal more profoundly. The office should have described true considerations under the more appropriate non-distinctiveness ground of refusal and even teach future trademark applicants a lesson: Not every phrase that they use may and shall be a trademark, including because of broader concerns, like those in the freedom of expression domain. A formal application of the public policy/morality ground does not make the trademark system functional; it creates complications and makes the system incomprehensible to non-experienced trademark users.

Sakulin and Senftleben suggested that there should be clear grounds for refusal in registering socially, politically, and culturally significant artworks as trademarks. The phrase in the Ukrainian application may be named a societally significant phrase, just like ‘Je suis Charlie.’ This note does not have the goal of promoting a separate refusal ground for such phrases but argues that the phrase’s importance in the societal discourse – in the manner that, when used in public speech, it may help unite people of similar views and even attract newcomers or help the hesitant ones express themselves – does not (and even should not) show a connection to any product source. Thus, even in the current legal framework (i.e., under the EUTMR in force), the phrase cannot become a trademark but must be left for the public, including commercial entities, to express their views and, thus, promote highly valuable freedom of expression. The EUIPO could have grounded its refusal on these elaborations.

Kuva: Istock / artJazz