In its judgment of 13 November 2024, the General Court of the European Union rejected the trademark application containing the words "Russian Warship, Go F**k Yourself". The court ruled that the sign was not distinctive and therefore not eligible for trademark protection.
Background: A slogan that has become a symbol
The phrase "Russian Warship, Go F**k Yourself" was uttered on 24 February 2022 on Snake Island, when Ukrainian border guards used it in response to the Russian warship Moscow's call to surrender. This phrase quickly became a symbol of Ukrainian resistance and courage, known worldwide and used on many products and campaigns as a symbol of support for Ukraine.
EUIPO decisions and SBGS counter-arguments
In 2022, the Administration of the State Border Guard Service of Ukraine (SBGS) filed an EU trade mark application no. 018672791 for the following sign written in English and Russian in classes 9, 14, 16, 18, 25, 28 and 41, including jewellery, clothing, stationery, toys and educational services:
However, the EUIPO raised an objection pursuant to Article 7(1)(f) of the EUTMR, as the Office considered the sign to be contrary to public policy or accepted principles of morality. In response SBGS submitted its observations and sought to rebut the ground for refusal with the following main arguments:
- Positive message: the sign is a symbol of courage, resistance and patriotism, not simply a vulgar term.
- Addressing a war tragedy: The use of the slogan is not intended to exploit the war tragedy, but to support and fundraise. The mark would prevent unlawful exploitation by third parties.
- Widespread acceptance: The phrase has been used in demonstrations, media and cultural events and even appeared on a stamp issued by the Ukrainian postal service. The message is supported by a large part of the EU population, especially in countries that are solidly pro-Ukraine, such as the Baltic States.
- Historical context: in this case, vulgarity has a positive connotation and, like other war slogans (e.g. ‘Keep calm and carry on!’), is not considered to be against public morality.
- Economic objectives: The revenue will be used by the Ukrainian state to support the war effort and for humanitarian purposes. If the EU public has donated billions of euros to Ukraine and its armed forces, it cannot be presumed that the public concerned would consider it contrary to public policy or morality for the EUIPO to protect the application or for the applicant to use the registered trade mark to support the war effort and humanitarian aid.
On 22 December 2022, the EUIPO refused the application at first instance on the basis of Article 7(1)(f) of the EUTMR. The main reasons for the decision were the following:
Vulgarity and public morality: the sign uses vulgar language ("go f**k yourself") with offensive sexual overtones ("go f**k yourself") which the average EU consumer may find offensive. In addition, some of the goods (e.g. toys) are targeted at children and young people under 18 years of age and consequently this term, even if the use of the term "Fuck" has become commonplace in certain segments of society, is offensive and offensive to children and younger consumers.
Exploitation of a war tragedy: The slogan is linked to a tragic event (the Russian invasion) which would be inappropriate to use for commercial purposes. As the applicant is not a commercial company, it cannot, by default, profit from commercial activity. The goods which the trade mark is intended to protect (e.g. jewellery, clothing, toys, etc.) are not linked to the struggle for patriotism or independence. Humanitarian aid does not justify the right holder obtaining trademark protection for a vulgar term.
Earlier registered trademarks are not relevant: Earlier registered trademarks cited by the applicant do not set a precedent, as each trademark application must be examined on its own merits.
The arguments put forward by the applicant in its appeal were very similar to the arguments submitted in response to the original request for a declaration. However, following a preliminary examination of the case, EUIPO considered that the application was also excluded from registration under Article 7(1)(b) EUTMR on the ground of lack of distinctive character, and thus raised a new ground for refusal.
On 1 December 2023, the Board of Appeal at second instance also refused the application, but this time on the ground of lack of distinctive character. The EUIPO Board of Appeal did not examine the violation of public morality as it considered the other ground for refusal to be established.
The Board of Appeal also agreed that the phrase applied for was a symbol of Ukraine's struggle against Russian occupation. However, according to the Board of Appeal, the phrase is associated with the soldier, known or unknown by name, the Ukrainian army and the historical event in connection with which it was uttered, but is not associated with any economic undertaking. Thus, the relevant public will perceive only the political message conveyed by that phrase and will not perceive or register the sign as a trade mark, that is to say, as an indication of the commercial origin of the goods and services to which it refers.
Decision of the General Court
SBGS brought an action against the EUIPO's decision before the General Court of the European Union. SBGS challenged the decision of the Board of Appeal on three grounds. It claimed that
- the mark applied for was sufficiently distinctive to be registered
- the Board of Appeal infringed the principles of equal treatment and sound administration by applying different criteria for assessing the distinctiveness of the mark applied for from those used in the past to assess the distinctiveness of similar signs, in particular political slogans; and
- the Board of Appeal infringed Article 71(1) EUTMR by refusing to examine the ground for refusal (public morality) in Article 7(1)(f) of the contested decision.
The General Court dismissed the applicant's action.
As regards the lack of distinctive character, the General Court agreed with EUIPO that the sign applied for is a widely used political slogan which does not indicate a commercial origin, and the Board of Appeal was therefore correct in finding that the mark applied for was devoid of distinctive character.
As regards the second ground of appeal, the General Court noted that the legality of the decision should be assessed on the basis of the EUTMR and not on the basis of the EUIPO's previous decision-making practice, which is not binding on the EU court. In the present case, the Board of Appeal correctly concluded, on the basis of a full and specific examination and taking into account the relevant circumstances of the case, that the mark applied for was devoid of any distinctive character and that SBGS could not therefore effectively rely on earlier EUIPO decisions or on a practice which was not followed by the Board of Appeal.
As regards the third ground of appeal, the General Court held that the existence of a single absolute ground for refusal was sufficient to prevent the sign in question from being registrable as a trade mark in the European Union. Since the Board of Appeal correctly held that the mark applied for was devoid of any distinctive character, it was not necessary to examine whether registration was contrary to public policy.
Lessons learned
This case is yet another example of the importance of taking into account the social and cultural context when registering trademarks. As in the FACK JU GÖHTE case, the question of where the line is drawn between public policy and the protectability of a trademark was raised, and it would have been interesting to see from a trade mark law perspective what the EUIPO Board of Appeal and the General Court thought about public policy.
According to the DartsIP database of trademark cases, in 95% of the approximately 12,000 slogan-related cases in the database, the EUIPO and the European Court of Justice rejected the trademark application concerned for lack of distinctiveness. At EU level, it is therefore very difficult to obtain trademark protection for a slogan, usually only in exceptional cases, when the slogan could be considered to be more than a simple (advertising) message praising the qualities of the goods or services concerned. This was notably the case where the slogan had a particular originality, was a pun or required an effort of interpretation.
However, the absence of trade mark protection does not preclude the use of the slogan in the course of trade. A slogan is unlikely to be protected by copyright, as words or short phrases are not usually protected by copyright, they do not constitute a separate original work of an individual character. Therefore, it is doubtful that copyright action can be taken against those who merely use the slogan without permission. Of course, in relation to a graphic work containing the slogan (such as the image below or the stamp issued by the Ukrainian postal service), the situation is different, they may be protected by copyright and the rightholder may therefore be able to take action against unauthorised use.
