Hybrid | Naughty Trade Marks and Greedy Owners

This event has been rescheduled from 23 March to 28 April due to industrial action by the Universities & College Union

The Panel

Chair:

Professor Anthony Julius, UCL Chair of Law and the Arts and Deputy Chairman of Mishcon de Reya

Speakers:

• Professor Jonathan Griffiths, Queen Mary University of London
• Professor Lisa Ramsey, University of San Diego School of Law
• Darren Meale, Partner Simmons & Simmons and Deputy Judge

About this event

The Paris Convention of 1883 permits signatory states to refuse to register trade marks that are ‘contrary to morality or public order’ and numerous countries have such a provision in their national trade mark laws. But recently, the US Supreme Court has held that this ground, long relied upon by the USPTO to refuse registration of offensive, disparaging, immoral or scandalous trade marks violates the constitutional right to free speech. In the EU, the CJEU has also acknowledged that refusing to register trade marks on morality grounds interferes with freedom of expression, but has not gone as far as the US court. Rather, it has directed that this ground should only be raised if ‘a reasonable person with average thresholds of sensitivity and tolerance, taking into account the context in which the mark may be encountered…’ would perceive the mark to be ‘contrary to accepted principles of morality.’ Thus, it seems that the EU provision will now seldom be invoked, and then will need to be based on evidence, rather than a merely abstract assessment.

So if a trade mark owner’s right of freedom of expression is likely to trump the concerns of others at the registration stage, when an owner comes to enforce that right, is a defence invoking the defendant’s own right to freedom of speech likely to succeed? In the recent overhauling of the EU trade mark regime, the legislature rejected the proposal of a standalone ‘free speech’ defence, but the recitals do include a new instruction that trade mark law ‘should be applied in a way that ensures full respect for fundamental rights and freedoms.’ Might this change tip the balance in the defendant’s favour in respect of uses that further free expression and fair competition?

Additionally, in the courts in the UK and EU are now directing their attention for the requirement that a trade mark owner must act in ‘good faith’ when registering marks. Trade mark applications filed in ‘bad faith’ are invalid. But where is the line to be drawn between prudent business practice and bad faith activities? How broad can a valid specification of goods be? When is re-filing a mark ‘normal commercial practice’ and when is it illegitimate ‘evergreening’? 

Our distinguished panel seeks to shed light on the extent to which ethical values do – and should – shape the nature and scope of trade mark protection.

Event Delivery

This is a hybrid event. We have in-person tickets and online tickets.

Ticket prices

Queries

If you have any queries about this event please contact Lisa Penfold - lisa.penfold@ucl.ac.uk

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