Noteworthy Provisional Refusal Decision on the Ground of Contrary to Public Decency

As trademark professionals aware, there are relative and absolute grounds for refusal of a trademark during the trademark examination. The EUIPO examines trademarks ex officio only on absolute grounds; however, it does not refuse applications on relative grounds (prior marks) unless an opposition is filed. At the same time, the Ukrainian PTO conducts ex officio examination on both absolute and relative grounds, meaning it can refuse a mark if it conflicts with prior rights or if there are absolute grounds for refusal.

In Ukraine, the absolute grounds for refusal are set out in Article 6 of the Law of Ukraine “On Protection of Rights to Marks for Goods and Services”, while in the EU, these are found in Article 7 of the EU Trade Mark Regulation 2017/1001:

Provisional refusal decisions on the ground of contrary to public decency or generally accepted principles of morality are less common compared to other absolute grounds.

The definition of trademarks contrary to public decency or accepted principles of morality generally refers to designations that conflict with fundamental societal values or ethics.

The EUIPO follows a detailed framework for evaluating trademarks under such grounds. The European Union Intellectual Property Network (EUIPN) has issued the “Common Communication on Trade Marks Contrary to Public Policy or Accepted Principles of Morality” dated April 2024, which provides guidelines, highlighting specific categories, for example, Marks referring to well-known tragic events.

Per the said document from EUIPN, trademarks that include or allude to tragic events, their victims, or their consequences are assessed based on several factors:

• The nature of the event;
• The historical and national context of a given situation;
• The sensitivity or perception of the public (e.g., if part of the relevant public perceives the mark as insulting or disrespectful, even if there is no association with the victims);
• The effect or impact on a community (how deeply the tragedy has affected the local public – it should be noted that tragic events can affect people through many generations, even if there are no survivors or living people who were directly affected by the tragedy);
• The time elapsed since the tragic event and the examination of the case; for instance, if a significant amount of time has passed, it is possible that the relevant public does not link the sign with the tragedy, or even if they do, they do not feel offended (e.g., the Roman invasion of a country two thousand years ago is unlikely to be offensive to anybody, whereas events closer in time such as World War II or apartheid are much more likely to still be offensive);
• Whether the word related to the tragedy has acquired a secondary meaning (e.g., ‘Titanic’, due to the film).

The above reference to well-known tragic events is relevant because the Ukrainian Patent and Trademark Office (PTO) recently issued a noteworthy provisional refusal decision, which shows that the approach to examination has become stricter, aligning more closely with European trademark examination practice.

The provisional refusal decision concerns the trademark “TITANIC” under International Registration No. 1415404, applied for the goods in class 33 (alcoholic beverages (except beers)).

The Ukrainian PTO issued the refusal based on the ground of potential conflict with public decency and morality. The Examiner’s opinion was that the use of the term “TITANIC” in connection with class 33 may evoke sensitive historic events and tragedies associated with the sinking of the RMS Titanic. The use of such a mark in association with goods related to alcoholic beverages, which fall under class 33, may be considered offensive or inappropriate by the general public.

Attorneys of IPR Group contested the Examiner’s decision and filed an objection against the provisional refusal using the following arguments (summary):

• Historical Distance: The tragedy occurred over a century ago, diminishing its emotional resonance for the modern public.
• Cultural Reinterpretation: The term “Titanic” has acquired a secondary meaning through cultural phenomena, including the acclaimed film, symbolizing a tragic love story rather than the catastrophe that occurred with the RMS Titanic.
• Public Perception: Arguments and evidence demonstrate that the Ukrainian public does not associate the term exclusively with the tragic event but also recognizes its broader cultural significance. Beyond the shipwreck, Titanic symbolizes humanity’s enduring ambition to surpass its own limits, despite the inevitable sacrifices that often accompany progress and development of civilization.

Throughout history, human civilization has faced disasters alongside technological progress and the development of various types of transportation. Modern disaster reports typically provide statistics on victims based on age, gender, nationality, and other criteria. While the tragedy of the Titanic remains significant, our Objection against the provisional refusal highlighted a fact: none of the passengers on board were from what is now modern-day Ukraine.

• Commercial Neutrality: The trademark application did not exploit or trivialize the tragedy but aimed to create a brand identity referring to humanity’s aspiration for achievements and overcoming challenges rather than focusing on the tragic aspect of the Titanic disaster.

Eventually, these arguments convinced the Examination, and the decision to grant protection to the TITANIC mark was issued in Ukraine.

The decision to grant legal protection illustrates the Ukrainian IP Office’s evolving approach, emphasizing a more comprehensive evaluation of historical context, public perception, and the broader implications of trademark registration for designations connected with significant historical events.

The EU’s approach is characterized by comprehensive guidelines and a cautious stance on trademarks related to sensitive historical and ethical issues. While Ukraine’s practice is also well-balanced, it is evolving to reflect all-round approach to consideration of public policy, morality, and related aspects. The “Titanic” case demonstrates that the Ukrainian PTO is increasingly aligning with EU methodology in trademark examination.

The examination of trademarks potentially contrary to public policy or morality requires a delicate balance between protecting societal values, applying rational judgment, and respecting commercial interests. The successful resolution of the “Titanic” case serves as a strong precedent for IP practitioners filing objections in similar cases, highlighting the importance of context, evidence, and persuasive argumentation in overcoming refusals.

As always, our Trademark Attorneys are ready to assist clients in overcoming provisional refusals, which represent one of the most challenging aspects of the trademark registration process and require the expertise of experienced professionals. The IPR Group provides this support in Ukraine and other jurisdictions of our operations.