On 9 January 2015, a US trade mark application was filed for JE SUIS CHARLIE by a trust from California. An Australian application for JESUISCHARLIE was filed on 12 January 2015 by the M&G Besser Family Trust in relation to publishing services in class 41.* The phrase references the 7 January murder of 12 people at the offices of French magazine Charlie Hebdo.
This isn’t the first time somebody has tried to trade mark a protest slogan in the US. In December last year, an application was made in the US for I CAN’T BREATHE for hoodies and t-shirts. These were the last words of Eric Garner, who had a heart attack and died in November while being arrested. (Warning, the linked article contains video footage and photographs of the arrest and may be distressing to some readers.) In 2011, two applications were made for OCCUPY WALL STREET at the height of the protests. Both have now been abandoned.
In light of the recent tragic events in Paris, could JE SUIS CHARLIE be registered as a trade mark in Australia?
Choosing a popular catchcry as a brand is a bad strategy.
There is an obvious appeal in protecting a popular catchcry. If it was somehow possible to obtain exclusive rights to a phrase trending on the Internet, the economic upside for the owner could be enormous. If we had a dollar for each time somebody used the Twitter hashtag #jesuischarlie, the next IP Whiteboard update might be posted from a cruise ship somewhere in the Mediterranean.
However, the characteristic that makes catchcries attractive (lots of people want to use them) is a fundamental problem when it comes to trying to obtain trade mark protection. Applying for to a trade mark consisting of a widely used phrase indicates a serious misunderstanding of what trade marks are and the scope of protection they provide.
Trade marks have to be able to distinguish the goods and services of the applicant from other traders’ goods and services. They tell consumers who the goods or services come from. Generally speaking, you can’t register a trade mark for a descriptive or generic phrase because it doesn’t say anything about the origin of the goods or services. Similarly, a phrase which has been adopted and used by members of the general public as a slogan or emblem for a particular cause, such as JE SUIS CHARLIE has in recent weeks in relation to free speech, is unlikely to be found to be capable of distinguishing goods or services within the meaning of the Trade Marks Act.
Application would be rejected.
In December, the Trade Marks Office rejected an application to register MH370 (the flight number for the Malaysian Airlines flight that disappeared in early 2014) as a trade mark on the basis that it was not capable of distinguishing the goods and services of the applicant.
JE SUIS CHARLIE, and other terms evocative of terrorist attacks and tragic events, are also likely to be found to be incapable of distinguishing goods and services and are therefore unlikely to be registrable as trade marks in Australia.
The French IP office (INPI) has taken this approach. So many applications have been made in France (apparently more than 50 applications within a week of the attack) that INPI issued a press release (in French) stating it will not register applications for, or referring to, JE SUIS CHARLIE. INPI explained that the slogan does not meet the distinctiveness criteria and is incapable of use by an economic actor because of widespread public use.
There’s also a good argument that a trade mark application for a phrase referencing a violent event is scandalous. The Trade Mark Office’s second examination report for MH370 also rejected the application on grounds that the mark was offensive and scandalous because it referenced a tragic event. No decision was made on this point by the hearing officer because the mark was already rejected on the basis of lack of distinctiveness.
Other problems.
And that’s just for starters. Even if the application was (somehow) accepted, it could be opposed on the ground of acquired reputation before the application was made, so that use as a trade mark would be deceptive or misleading. There has been enormous use of JE SUIS CHARLIE, starting almost immediately after the attack. As at 15 January, a Google search for JE SUIS CHARLIE returned 179 million results. The Wikipedia entry dedicated to the slogan indicates that it was used as a Twitter hashtag 5 million times within the first 3 days after the attack. (Wow, we could be posting from the Mediterranean if we had a cent per use!) That’s not even considering the countless newspaper articles and television news stories, and coverage of celebrities displaying JE SUIS CHARLIE signs and badges on the Golden Globes red carpet. Even an application filed on the same day as the attack would be fighting an uphill battle to argue that the phrase hadn’t acquired a reputation by the time the application was made – let alone one filed a week later.
And even putting all those issues to one side for the sake of argument and assuming that JE SUIS CHARLIE managed to get registered, it would not give the trust an exclusive right to use the phrase in Australia. Other traders who used the phrase before the application was filed could continue to use it. And trade mark protection only prevents other traders from using a trade mark as a trade mark. Trade mark registration doesn’t give a monopoly right to use the words themselves. Many, if not most, of the users of JE SUIS CHARLIE are not using it as a trade mark. When they tweet or hold up a sign at the Golden Globes, they aren’t using the phrase as an indication of origin of goods or services. They’re protesting. They’re indicating support for the victims. Those uses would not be trade mark infringement.
In short, it is not a good idea to jump on the bandwagon when you’re choosing your trade mark. Don’t select a brand name on the basis of what’s trending on Twitter.
*The Australian application was withdrawn on 20 January 2015.
