As an Englishman, I appreciate a little innuendo, but sometimes you can push it a bit too far.
In 2015, Martin Cudzilo, a German businessman, applied to register TOUCH MY HOLE as a European Union trade mark (application number 014750822).
The application covered a diverse range of goods and services, such as: “Dietetic food and substances adapted for medical or veterinary use”; “compact disks”; “Instructional and teaching material (except apparatus)”; “billiard tables”; “toys for domestic pets”; “pork sandwiches”; “doughnuts”; “sporting and cultural activities”; and “temporary accommodation”.
It is not quite clear how the TOUCH MY HOLE brand would fit in with Mr Cudzilo’s existing business interests, which appear to relate to hygiene services – a business specialising in cleaning fitness studios (Clean Fitness) and a technology that implements augmented reality to ensure a thorough scrubbing (AR-Check). Sadly, we may never find out.
The examiner at the EUIPO refused the application under Article 7(1)(f) of the EU Trade Mark Regulation on the basis that for English-speaking consumers in the EU the phrase represented a vulgar expression which was contrary to accepted principles of morality.
Not to be deterred, Mr Cudzillo appealed the decision. The Board of Appeal was not, however, swayed by the submissions of his representative. Dr Langfinger & Partner fruitlessly argued that TOUCH MY HOLE would be interpreted by the average consumer as “relating to amusing innuendos on circular recesses in data carriers (recording discs, DVDs), pockets on billiard tables or holes in doughnuts” rather than in a sexual manner.
Relying in part on the results of an internet search (possibly not one you want to replicate at work), the Board of Appeal considered that the sign went beyond the “territory of tasteless, but still acceptable expressions” to one “that is so crude and insulting that protection of the sign is unacceptable”.
So where does the boundary lie between tasteless and unacceptably offensive? Is a mark that is vulgar in one language, acceptable as a trade mark in a jurisdiction where that language is not widely spoken? For more information about scandalous, offensive and immoral trade marks, please make sure you attend the panel session on this topic at the 2017 Annual Conference in Prague.
David Fyfield is an Associate at Charles Russell Speechlys LLP and a member of the IP Emerging Issues Team
Issue 080
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