Back in the 19th century the countries signing the Paris Convention agreed that designations contradicting morals or capable of insulting religious feelings should not be registered as trade marks. It is very rare if ever that people apply for obscene trade marks. It may happen that a word trade mark in one country has a neutral meaning but while being pronounced and heard by people in another country has quite a different meaning. In that case, there is a question.

There is an interesting decision taken by the Chamber of Patent Disputes in 2007. The trade mark application was filed in 2004 by a British company Buddhist Punk. The company filed an application claiming the trade mark rights for the word combination Buddhist Punk. According to the description of the trade mark, it is a word mark written in standard Latin font. The designation reproduces part of the company name. The registration was claimed for classes 9, 18, 18 and 25 of the ICTM. The Patent Office refused the registration because the claimed designation meant "a young male partner of a homosexual" or had an archaic meaning as a "prostitute" (Dictionary.com unabridged).

The applicant objected to the decision of the Patent Office claiming that the claimed designation Buddhist Punk would not offend the religious feelings and contradict morals because the meaning "prostitute" had been used in England in the 16th century. (To do justice to this objection one should say that the other meaning – which is not archaic – of a young male partner of a homosexual is no the better). The claimed designation was also registered as a trade mark in Japan (number 4656718), Hong Kong (number 300116397) and Taiwan (number 1155392). The semantic meaning of the word designated values that unite Buddhist qualities and unorthodox tastes showing in clothes and music.

The Chamber of Patent Disputes nevertheless did not heed the arguments of the applicants. It reiterated that the claimed designation Buddhist Punk had an obscene meaning in English.

While in general agreeing with the Patent Office, we nevertheless have some questions. A punk is an English word and even though English is spoken by some of the Russian people the word punk is not widely known. And what is known comes from the media when they report about foreign young people being punks. In those cases where the word appears it is always associated with a certain subculture. It is difficult for a person whose English is foreign to judge whether the obscene meaning comes readily to mind to a native speaker when the word is heard. But one can affirm 100% that to understand that obscene meaning of the word a Russian person would have to be very well educated in English and most probably have spent years in an English-speaking country. All other people, who are consumers of the goods, would not be expected to understand that meaning of the word unless they specifically delve into the special investigation of the word as surely the examiners of the Patent Office did. Considering that, the decision of the Patent Office does not seem impeccable.

Vladimir Biriulin

Gorodissky & Partners
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