Trade mark decision

BL Number

O/330/05

Decision date

20 December 2005

Hearing officer

Mr M Foley

Mark

FCUK

Classes

14

Registered Proprietor

French Connection Limited

Applicant for Invalidity

Dennis Woodman

Invalidity

Section 47(1) based on Section 3(3)(a)

Result

Section 47(1) based on Section 3(3)(b): - Application for declaration of invalidity unsuccessful.

Points Of Interest

• The opponent appealed to the Appointed Person. In his decision dated 17 May 2006 (BL O/137/06) the Appointed Person upheld the Hearing Officer’s decision and dismissed the appeal.

Summary

The applicant referred to various codes of conduct and reports relating to advertising and sales promotion under the mark in suit. He noted that the Advertising Standards Agency (ASA) had upheld complaints relating to the use and phonetic variants of the word FCUK; also where in use letters are replaced with typographical characters such as in F*UK. As regards the mark in suit complaints had been upheld by the ASA where FCUK had been used as part of a phase such as "World's biggest fcuk" or with imagery which would be likely to cause the use to be interpreted as the expletive.

The applicant also drew attention to correspondence with the ASA and its view that it could not ask the registered proprietor to withdraw its current advertising campaign because FCUK is a registered mark.

The registered proprietor explained the history of the mark in suit. The company's initials are FC and these had been combined with the initials of different countries to form trade marks eg FCUS (for USA), FCHK (for Hong Kong) and FCUK (for the UK). The proprietor also filed details of widespread use of its mark in the UK over a long period of time. It draws attention to its association with other traders and financial institutions such as Boots the chemist and the Royal Bank of Scotland. While there has been a few complaints about the mark in suit these must be set against the widespread and extensive use of the mark. No organisation such as the ASAor Radio Advertising Clearance Committee suggest that the mark FCUK is itself offensive though it is accepted by such organisations that in particular contexts it can be offensive.

The Hearing Officer carefully considered the guidance from the Courts in other similar cases and also the Registrar's own practice as set down in the Trade Mark's Manual. In considering the mark in suit the Hearing Officer concluded from the guidance before him that the word FUCK would be considered unacceptable and offensive. However, FCUK would most likely be pronounced as letters and while the proprietor was aware that on occasions the mark could be used in an offensive manner, not one complaint had been upheld against the mark used on its own. Respectable traders have been involved with FCUK branded goods over the years and they would not have participated with the proprietor if they had thought the FCUK mark would impact on their reputation. On the evidence before him the Heairng Officer concluded that, while he appreciated the basis of the objection, this was insufficient to justify a finding that the mark is invalid. Application failed.