FCUK trade mark upheld

The UK Trade Marks Registry hearing officer has rejected an application to declare the trade mark FCUK invalid on the ground that it was contrary to accepted principles of morality.

This is the latest in a long list of contentious proceedings. Back in 1999, French Connection tried to grab the URL “Fcuk.com”, registered in April 1997 and belonging to Tony Sutton. The clothing chain claimed that this was an abuse of the goodwill generated by its £3 million advertising campaign.  Fcuk was used by the company First Consultants UK, or FCUK for short, and French Connection had its attempt to stop the Web site using the four letter word rejected by Mr Justice Rattee. The judge said: “Fcuk is just a euphemism for the obscene expletive f**k”. “How can you talk about goodwill in connection with such a tasteless and obnoxious campaign?” he asked. The judge rejected French Connection’s plea for an immediate injunction and ordered a full trial.

In May 2004, the American Family Association lobbied the US Trade Mark Office to reject the Fcuk registration.

In August of that year, French Connection Limited won an important victory before the World Intellectual Property Organization Arbitration and Mediation Center (WIPO) in gaining the transfer of the domain name http://www.fcuklifestyle.com/ from a Daniel Bradley, the registrant of http://www.fcuklifestyle.com/. French Connection claimed that its trademarks easily can be found by anyone making even the most cursory search.

In December, Dennis Woodman’s claim that the use of the FCUK brand was offensive and breached “generally accepted principles of morality” was rejected. Mr Woodman believes that the FCUK trademark breaches the 1994 Trade Marks Act, whereas French Connection maintains that the accronym of “French Connection United Kingdom” s innoncent, and their lawyers have pointed out that the mark is merely a light-hearted play on words, and have also noted that the trademark Dick & Fanny was allowed.

The UK Advertisiing Standards Authority (ASA) adjudicated on an advert that ran in Boots the Chemist Health and Beauty magazine.  “The Authority acknowledged that “fcuk” was the advertisers” trademark and that the names of the fragrances were “fcuk™ him” and “fcuk™ her”; it noted the trademark symbol was included after the word “fcuk” in the advertisement but considered that, in the context of the advertisement, which included a sexually suggestive photograph of a man and a woman headlined “scent to bed”, the trademark “fcuk™” in the phrases “open here to try fcuk™ him” and “open here to try fcuk™ her” could be interpreted as “f*ck”, not just as the advertisers” brand name.

The Committee of Advertising Practice (CAP) – the industry arm of the self-regulatory system for non-broadcast advertising – has now ordered French Connection to pre-vet all its posters for the next two years. This decision follows a ruling by the Advertising Standards Authority (ASA) upholding a complaint against posters for the advertisers’ radio station – FCUK FM.

This case is somewhat reminiscent of an Israeli Legal Decision from back in 1973, regarding a high school diploma and GMAT crammer company that wished to use the slogan “Lech Tistayen” meaning “Go Excel!” in a radio program. The slogan was considered offensive, as it sounds very similar to “Lech Tizdayen” meaning “Go F*%#!”. Israel High Court Judge, Dalia Dorner, overturned the decision of the broadcasting authority claiming freedom of speech.

If Dorner was trully interested in Freedom of speech, of course, one would have expected her to at least mention this core value in passing, when she and the other high court judges overturned the Knesset Bill that was passed to legalize Pirate Radio Station, “Channel 7”. Here, it seems, the justification to close down a popular communication medium because it was identified with the settler movement, apparently rendered irrelevant issues such as Freedom of Speech, and democratic parliament decisions.



Categories: Internet, Israel Related, News, Opinion, trademarks, Uncategorized

2 replies

  1. I find this article very useful in understanding that marks that may be rejected on grounds of violating an established moral principle. Clear reading of the FCUK trade mark application in light of other decision and the law on this subject have helped appreciate this principle. Iam highly idebted to the authors of this article for publishing such a useful article. Thank you

  2. I am an undergraduate law student currently taking Intellectual Property Law as one of the units this semester. I stumbled upon this gem while finding moral considerations which come into interplay before registration of a trademark. This article was incisive for my purposes. Good work Dr. Michael.

    With best regards.

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