Diversity and Trade Mark Law

This editorial argues that trade mark law has not paid sufficient attention to diversity. Drawing on the author’s forthcoming research, the treatment of the registration and enforcement of minority language terms is contrasted with the interests of minorities in being free from offensive marks. In relation to minority languages, the central role of the ‘average consumer’ in determining meaning has meant that little attention has been given to minority understanding of trade marks. By contrast, when it comes to offensive marks the interests of minorities have been centre-stage and the average consumer has played a lesser role. However, it is argued that even in this latter context, difficult issues regarding the relationship between trade marks and the protection of diversity interests have been glossed over and indeed where the average consumer has made an appearance, her impact has been to complicate the protection afforded to minorities.

We are used to thinking about trade marks as commercial tools – after all, they must be used ‘in the course of trade’ – and less as social phenomena. However, trade mark law is calibrated by reference to consumers. Consumers are people, and people differ in their characteristics: gender, ethnicity, religion, sexuality and disability to name a few. With these differences come different sensitivities, levels of understanding and perceptions. Yet, trade mark law is not good at dealing with difference. Our barometer for registrability and for infringement is the ‘average consumer’. However, averages conceal differences, concentrating attention on what is most common. This means that in trying to be fair and treating people ‘the same’, important differences between how different groups and individuals might perceive and be impacted by marks differently have been missed.

We can see this in relation to how the descriptiveness or otherwise of foreign language terms has been treated, in relation to the absolute grounds for registrability and also infringement and the relative grounds. In Matratzen (C-421/04), the CJEU instructed the Spanish court not to recognise the meaning of that term (mattress in German) where the average Spanish consumer does not understand German. In other words, because the ‘average’ Spanish consumer does not understand German, the term was stripped of its meaning and German speakers based in Spain could not use the mark in relation to their own trade marks. This is a clear example of a situation where treating everyone the same leads to differential outcomes for the German-speaking minority who would want to use that term descriptively. It also stands in contrast to the US doctrine of foreign equivalents, where the meaning of a term in any modern foreign language will be taken into account.

A more nuanced approach has subsequently been taken. Rather than treating consumers as one amorphous mass, the General Court in Kiap Mou (T-286/02) asked whether a ‘significant proportion’ of the UK public (the market in question) would be familiar with Laotian or Thai, and so would understand that the term ‘mou’ meant ‘pork’.

Recognising that consumers are varied and can be divided into ‘proportions’ could potentially work in favour of minority groups. Indeed, in a recent UK Court of Appeal case, Lidl Great Britain Limited & Ors v. Tesco Stores Limited & Ors [2024] EWCA Civ 262 [17], Arnold LJ has observed that the move from treating the average consumer as a single, hypothetic person means that average consumers ‘represent consumers who have a spectrum of attributes such as age, gender, ethnicity and social group’.

However, this optimism is not reflected in the decisions in this area. In research I have conducted into the treatment of foreign languages before the UK Trade Mark Registry, it is astonishing that in only one instance were speakers of foreign languages treated as a ‘significant proportion’ of the UK population and so their understanding of a non-English term taken into account. Speakers of a wide array of languages were labelled ‘not significant’ because they represented too small a percentage of the UK population. Although my research focussed on languages, it seems likely that a similar approach could be taken to other minority characteristics given that such minorities form an equally small proportion of the UK population in numerical terms. Indeed, there is a clear crossover between language and religion, with a UK example of this being the failure to recognise the meaning of the term POOJA, which is an offering made in Hindu ceremonies (Pooja Sweets & Savouries Ltd v. Pooja Sweets Limited O/195/15).

Lest it be thought this is a uniquely British approach to significance, let us return to Kiap Mou, where ultimately the General Court determined there was no evidence to suggest that there was a significant proportion of Thai or Laotian speakers in the UK.

By contrast, diversity concerns have been made explicit in relation to marks offensive to minority communities. Registration of such marks has been barred through the provision which prohibits the registration of marks which are immoral or contrary to public policy. Here again looking at the reactions of the average consumer would lead to unsatisfactory results. Minorities may be particularly prone to being the subject of slurs related to race, gender or sexuality and so would be impacted in a way that the ‘average’ consumer would not be. In the EU, however, under CP14 Common Practice (Trade marks contrary to public policy or to accepted principles of morality), marks which are discriminatory or racist are considered contrary to public policy. This is a ‘top down’ standard, which, according to the Advocate General in Constantin Films (Case C-240/18 P [76]) is a ‘normative vision of values and goals, defined by the relevant public authority, to be pursued now and in the future, that is, prospectively’. As such, what is contrary to public policy does not change depending on societal norms and, following the EUIPO Grand Board’s decision in COVIDIOT (Case R260/2021-G) does not need to be proven empirically according to peoples’ beliefs. Consequently, minorities have received strong protection against slurs.

More difficult are marks invoking religious symbols, deities and concepts. Again, the sensitivities of the average consumer is poorly suited as a mechanism for protecting against offence. The average consumer may not believe in the religion in question, or indeed any religion. However, the approach in both the UK in Basic Trademark SA (JESUS) O/021/05 and in the EU in CP14 is to examine not only the offence caused to members of the religious group, but also to wider society, which it is considered would be offended by the discrediting of the religious beliefs of fellow citizens.

Blocking the registration of marks on morality grounds poses a risk to free speech. The US has dealt with this risk in Matal v. Tam, 582 U.S. 218 (2017), ruling the provision on the Lanham Trademark Act barring offensive marks as unconstitutional. This though means that there is nothing to stop the registration of marks which are offensive in terms of race, gender, sexuality or otherwise. The EU approach is more nuanced, seeking to balance protection against offence with speech interests, although the speech value of trade marks has somewhat surprisingly been cast into doubt by the Grand Board in COVIDIOT and again in MARICON PERDIDO (R 2307/2020‑G).

One area where free speech and minority interests intersect is in relation to self-appropriated slurs (as described by Vicki Huang, ‘Trademarks, Race and Slur Appropriation: An Inter-Disciplinary and Empirical Study’ (2021) 5 University of Illinois Law Review 1605). This is the idea that minority groups seek to empower themselves by adopting a slur word and attempting to ‘defang’ it (Michael Goodyear, ‘Queer Trademarks’ (2024) University of Illinois Law Review 163, 214), removing its offensive content by adopting it as their own. This formed the justification for the attempt to register THE SLANTS by a group of Asian-Americans in Tam. It is not without its critics as self-appropriated slurs may impact differently on different members of the minority group: some may welcome the attempt to change the meaning but others may remain offended by the original meaning of the term. This is highlighted in the Grand Board’s MARICON PERDIDO case. This term, meaning ‘The Lost Queer’ (according to the applicant) or ‘Hopeless Faggot’ (according to the Grand Board) was applied for as an EUTM for entertainment services. It had been used as the title of a television programme chronicling the semi-autobiographical story of the author. The Grand Board concluded that the term remained offensive. Generally it was sceptical towards self-appropriated slurs, noting in particular that a previously offensive term might have lost its offensive meaning for some, for others this may remain.

There is an underexplored question here within minority groups about who gets to control meaning. The Grand Board held that a mark remains offensive if it holds that meaning to a ‘non-negligible’ group of consumers. This raises the prospect of a really very small group of people being able to control the use of a term which other members of a minority group seek to access – an issue the Grand Board did not address. Perhaps ironically this measure is used by the EUIPO to identify a group of consumers who form a significant proportion of the consumer base to identify the average consumer to determine whether marks are descriptive. Using this standard in relation to descriptive marks in, for example, the UK would lead to minority interests being better taken into account compared to the higher threshold that as described above has generally been used. However in the context of offensive terms, pitching significance as a low level creates the potential for an unacknowledged power imbalance which prevents the registration of a trade mark in terms which minorities might wish to control and even commercially exploit and which, for very many, will no longer be offensive.

So, what is the best way to incorporate diversity concerns into trade mark law? As this discussion suggests, there is no single doctrine that will magically achieve this objective. Indeed, the complexity of the issue is such that using the same doctrines in different contexts can lead to conflicting outcomes. It is therefore argued that it is necessary for trade mark decision-makers to be more mindful of the impact of their individual decisions on minority groups, and indeed subgroups within those minority groups. While this may be burdensome in individual cases, it is argued that there are a small number of issues of public importance that transcend the strict enforcement of IPRs. Protection of free speech has already been recognised in relation to copyright and to a lesser extent trade marks and there is a growing body of scholars calling for sustainability considerations to be incorporated into trade mark law, particularly in relation to the resale and reconditioning of second hand goods. It is argued that diversity should be treated in a similar fashion.

Author notes