Blimey - Was FCUK Lawful?

French Connection Limited (FCL) is a well known High Street fashion retailer. From about 1998 FCL used the trade mark FCUK extensively in the United Kingdom. Such use was of both the trade mark alone and in short advertising strap lines or promotional statements obviously designed to make an impact on the reader. FCUK became a highly valuable brand name for FCL.

When FCUK was created, FCL was operating in three separate divisions - one in the UK, one in United States and one in Hong Kong. The explanation by FCL for the adoption of FCUK is that it was first used as an identifier for the UK division, ie FCUK as opposed to FCUS and FCHK, after which the advertisers saw its potential and developed the brand.

On 16 December 1998 FCL was granted by the UK Trade Mark Registry (the Registry) under UK Trade Mark number 2 184 549 a registration of FCUK for certain goods in Class 14 (of the trade mark registration system), in summary being watches, jewellery, and packaging therefor. UKTM 2 184 549 is one of a number of UK registrations and Community Trade Mark registrations for FCUK either on its own or as part of a trade mark for a wide range of goods and services. Almost six years later, on 20 September 2004 Mr Dennis Woodman applied to the Registry for a declaration that UKTM 2 184 549 was invalid on the ground that it was contrary to section 3(3)(a) of the Trade Marks Act 1994 – UKTM 2 184 549 was picked as an example for a test case, the attack being on the trade mark itself used in any circumstances, and not in relation to any particular use.

It is probably hard for anyone who has walked down a busy shopping street on a sunny day not to have come across FCUK, either in a shop window or used in a slogan across a T-shirt. FCUK has undoubtedly been very successful as an indicator of the origin, being FCL, of the goods which were sold under or by reference to it. Such indication is the fundamental purpose of a trade mark. Furthermore the advertisers were clearly ingenious in the creation of the strap lines and statements which were a part of the campaign which used FCUK.

However there can be no doubt that amongst the public of the UK, there was an undercurrent of dissatisfaction with the use of FCUK. FCUK was successful and was developed only because of its close association with the highly offensive swear word, FUCK. To the human eye, the switch of the middle two letters to make FCUK does not disguise that association. Mr Woodman had no financial interest in obtaining a declaration of invalidity, but pursued his application solely because he felt offended by the use of FCUK and was prepared to try to do something about it. In particular he was unhappy that the use of FCUK was given a ‘stamp of respectability’ by the official UKTM registrations – and CTM registrations.

In a decision dated 20 December 2005 the Registry refused Mr Woodman’s application. Mr Woodman appealed to the “Appointed Person”, under the specific trade mark appeals regime, and on 17 May 2006 Mr Richard Arnold QC, the Appointed Person for this appeal, confirmed the Registry’s decision in a comprehensive analysis of the law in this area (to which it is impossible to do justice in this short article).

What was the basis of Mr Arnold’s decision? Section 3(3)(a) is derived from Article 3(1)(f) of Council Directive 89/104/EC of 21 December 1988 (and so the law has European wide relevance) and reads – “A trade mark shall not be registered if it is ….. contrary to ….. accepted principles of morality”. This is a simple statement but, inevitably, has substantial difficulty in its application. Where is this dividing line between a registrable and unregistrable trade mark? As Counsel for Mr Woodman submitted at the hearing in the Registry – does FCUK pass the test like DICK & FANNY (a granted CTM) or fail like TINY PENIS and FOOK (both refused UKTMs)?

Mr Arnold’s guidance for this test can be summarised as follows:-

1. The applicability of section 3(3)(a) depends on the intrinsic qualities of the trade mark itself and not on circumstances relating to the conduct of the applicant for registration.
2. The applicability of section 3(3)(a), as with the other ‘absolute grounds of objection under the 1994 Act, must be assessed as at the date of the application for registration, ie December 1998
3. Section 3(3)(a) must be interpreted and applied consistently with Article 10 of the ECHR, and so registration should only be refused where this is justified by a pressing social need and is proportionate to the legitimate aim pursued by the applicant for registration (with any real doubt being resolved by upholding the right to freedom of expression and thus permitting registration).
4. Section 3(3)(a) must be applied objectively – thus the personal views of the tribunal are irrelevant.
5. While section 3(3)(a) may apply to a trade mark whose use would not be illegal, the legality or otherwise of use of the trade mark is a relevant consideration.
6. For section 3(3)(a) to apply, there must be a generally accepted moral principle which use of the trade mark contravenes.
7. Mere offence to a section of the public, in the sense that such section would consider the trade mark distasteful, is not enough for section 3(3)(a) to apply.
8. Section 3(3)(a) does apply if the use of the trade mark would justifiably cause outrage, or would be the subject of justifiable censure, amongst an identifiable section of the public as being likely significantly to undermine current religious, family or social values.
9. In the case of a trade mark of a word only, it is necessary to consider the applicability of section 3(3)(a) on the basis of any usage which the public makes of the relevant word – thus a slang meaning of a word may lead to an objection even if its normal meaning does not.
10. A trade mark which does not proclaim an opinion, contain an incitement or convey an insult, is less likely to objectionable than one which does.
11. Different considerations apply to trade marks in different categories (such as swear words which may contravene social or family values, and words with religious connotations which may contravene respect for religious beliefs).

Applying this guidance to the evidence before him and after referring to the UKTM for the trade mark CNUT, Mr Arnold dismissed the appeal with, inter alia, the following words – “the intrinsic qualities of the mark FCUK are not such as to render it objectionable. It is not a swear word even though it can be used and has been used to evoke a swear word”.

End Note

This feature was drafted by Mr Malcolm Chapple, who is a barrister with New Square Chambers at Lincolns Inn in London.  Mr Chapple appeared on behalf of Mr Woodman before the Trade Mark Registry and was instructed by Leigh Ellis of Gillhams Solicitors. He advises on intellectual property rights and disputes, involving trade marks, copyright, and patent rights, as well as commercial legal advice.  Called to the Bar in 1975, he spent his days before advocating his clients' rights before the High Court as an engineer at BEA and British Airways.