Lawyers Outlined How Registries ‘Consider A Range Of Factors Before Making A Decision’

An application for the phrase ‘je suis Charlie’ to become a registered trade mark has put an important spotlight on the key factors which registries consider when it comes to approving such a mark, according to specialist intellectual property lawyers.

‘Je suis Charlie’ has become synonymous with vigils, peace marches, demonstrations and social media support for freedom of speech and liberty following the shocking terrorist attack on the satirical magazine Charlie Hebdo in Paris last week.

However, news has emerged that, following the widespread use of the phrase, an application has been made at the Benelux Office for Intellectual Property to register the words as a trade mark. According to the documents filed just a day following the atrocities, the trade mark would be in respect of goods including soaps, perfumery, games and playthings and even decorations for Christmas trees.

According to intellectual property lawyers at Irwin Mitchell, who specialise in providing advice and support on trade mark and copyright issues, such a move is not entirely uncommon – despite the major questions it raises regarding appropriateness.

Expert Opinion

While such a step will be viewed by a great many as inappropriate profiteering, this is not the first time that such issues have emerged following a major tragedy.

"For example, the flight numbers of the two doomed Malaysia Airline flights – MH17 and MH370 – were the subject of applications last year, and in the wake of the Boston marathon bombings in 2013 the defiant slogan ‘Boston Strong’ was the subject of multiple registration attempts.

"In order to establish whether a trade mark should be registered, the relevant registry – in this case the Benelux Office for Intellectual Property – will take a range of factors into account. These will include whether the applied-for mark denotes trade origin, if it is of distinctive character and if it is likely to deceive the public as to the origin of the goods which will carry the brand.

"Arguably the most important factor in this case is whether the mark applied for is contrary to public policy or accepted principles of morality. The registry may well decide that the applied-for mark is so disparaging or offensive due to the nature of the circumstances related to it that the slogan cannot be registered as a trade mark.

"If this happens in this case, it will come as a relief to those who do not wish to see people commercialise such a tragic event. However, this does not make the distasteful notion of trademark applications of this kind, which are seemingly becoming more frequent, any easier to swallow." Georgie Collins - Partner