‘Going down’ Is a Trade Mark That Causes a Bad Influence on Morality, Says the Beijng High Court in China

From The IPKat:

‘Going down’ is a common English phrase whose meaning is descending or sinking. But when it tried to be registered as a trade mark for some sex-related products in China, it encounters the issue whether such a phrase leads to a bad influence on morality.

Similar to Article 7(1)(f) EUTMR, Article 10 (8) of the PRC trade mark law prevents a mark from registering if it is harmful to socialism morality or has other bad influence.

In its recent decision (here, in Chinese), the Beijing High Court affirms that ‘going down’ is a trade mark that causes bad social influence when it is designated for sex-related products.

. . . .

The trade mark office of the PRC refused the application because it held that the pronunciation of ‘going down’ is identical to that of Chinese words ‘够淫荡’ (pronounced as ‘Gou Yin Dang’ and translated to English is ‘enough to be lascivious’). This sexual implication of the trade mark harms Socialism morality and causes negative social influence. It shall then not be registered in accordance with Article 10 (8) of the PRC trade mark law.

. . . .

The applicant filed an appeal to the Beijing IP Court. Not siding with the trade mark office, the Court held that ‘going down’ is a regularly used phrase whose meaning is ‘descending or sinking’. The English words themselves have no immoral meaning, and the relevant public will not generally relate ‘going down’ to ‘够淫荡’. Thus, the use of the sign for the designated goods would not cause bad influence. Such a trade mark can be registered.

. . . .

Unsatisfied with the judgement of the Beijing IP Court, the trade mark office filed an appeal to the Beijing High Court. The Court sided with the trademark office and held that ‘going down’ is a trade mark that causes bad influence. The Court reasoned as follows:

1. What is a trade mark that causes other bad influence? 

A sign could be held to be a trade mark resulting in bad influence if it or its constituent element(s) may cause a negative influence on public interests and public order. The term ‘other bad influence’ in Article10 (8) of the trade mark law is used to refine an absolute ground to refuse the registration of a trade mark. The ‘other bad influence’ shall not be interpreted in an unduly broad way to restrict the freedom of expression and creativity. Nor shall it be interpreted in an unduly narrow way to allow the registration of a trade mark which has a negative effect on political, economic, cultural, religious and ethical public interests and orders.

2. Has ‘going down’ an immoral meaning?

The words ‘going down’ (phonetically) have immoral, negative and low-taste meaning when it is used for the designated goods such as vaginal syringes, condoms, non-chemical contraceptives and sex dolls, although the literal meaning of these words is ‘descending or sinking’. The trade mark office’s decision shall be upheld for the purpose of leading the public to build a positive mainstream culture and value; of prohibiting the act of meeting the ‘three forms of vulgarity’ (inelegant, indecent, and insipid) in a way of ‘play edge ball’; and of realizing the judiciary’s duty to preserve and pass on mainstream awareness and value.

3. Is ‘going down’ causing bad influence?

A trade mark is a commercial sign attached to products that disseminate to the public. In addition to distinguishing goods and services from others and bearing reputation, a trademark can also disseminate value and culture. A trade mark’s influential power and contact in the public are wide and uncertain. The cultural taste and the value represented by a trade mark would be widely disseminated through the use.

. . . .

In addition, the decision of the Beijing High Court briefly states that the freedom of expression and creation may play a role in trademark law. In this case, it relates to the assessment of whether a trade mark could cause bad influence. This statement echoes the recent decision of the Supreme Court of the US in Lancu v. Brunetti and the opinion of the AG Bobek in Constantin Film Produktion v. EUIPO. Both of the cases address the freedom of expression and creation and the trade mark consisting the immoral elements or words. The US Court directly claims that prohibiting registration of a trademark consisting of or comprising immoral or scandalous violates the First Amendment (free speech clause). In EU case, AG Bobek holds that the freedom of expression as a fundamental right does play in the field of the trademark. It is still waiting for the decision of the CJEU on the EU’s position on the freedom of expression and trade mark law.

. . . .

Lastly, it is also worth to mention that the Beijing High Court recognizes a potential new function of a trade mark, namely, disseminating culture and values. As argued by the Court, with the distribution of goods attaching a trade mark, the culture and value represented by the trademark could be also disseminated. If a trade mark disseminates a low-taste or inferior culture, it shall harm the society or public morality.

Link to the rest at The IPKat

A couple of months ago, the US Supreme Court struck down a law barring the registration of vulgar trademarks.

From The New York Times:

The Supreme Court on Monday struck down a federal law barring the registration of “immoral” or “scandalous” trademarks, saying it ran afoul of the First Amendment.

. . . .

The trademark case concerned a line of clothing sold under the brand name FUCT. When the case was argued in April, a government lawyer told the justices that the term was “the equivalent of the past participle form of the paradigmatic profane word in our culture.”

Justice Elena Kagan, writing for a six-justice majority, did not dispute that. But she said the law was unconstitutional because it “disfavors certain ideas.”

She gave examples. Government officials have granted trademark protection to antidrug messages but not to “Marijuana Cola,” to pro-religion messages but not to “Madonna” wine and to antiterrorism messages but not to “Baby Al Qaeda.”

The decisions were understandable, Justice Kagan wrote. “The rejected marks express opinions that are, at the least, offensive to many Americans,” she wrote.

. . . .

But a bedrock principle of First Amendment law, she wrote, is that the government may not draw distinctions based on speakers’ viewpoints.

In 2017, addressing a companion provision in the trademark law, a unanimous eight-justice court struck down a restriction on trademarks that disparage people, living or dead, along with “institutions, beliefs or national symbols.”

The decision, Matal v. Tam, concerned an Asian-American dance-rock band called the Slants. The court split 4 to 4 in much of its reasoning, but all of the justices agreed that the provision at issue in that case violated the Constitution because it took sides based on speakers’ viewpoints. (The decision also effectively allowed the Washington Redskins football team to register its trademarks.)

Link to the rest at The New York Times

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