French Connection Limited has retained the right to use its controversial FCUK trade mark after the UK Trade Mark Registry ruling of 20 December 2005 which rejected claims that the application of the trade mark should be declared invalid as contrary to principles of public morality.
Dennis Woodman, a retired businessman, applied for a Declaration of Invalidity under section 47 of the Trade Marks Act 1994 (UK) (the 'Act'). Section 47 provides that the registration of a trade mark may be declared invalid on the grounds that the trade mark was registered in breach of section 3 of the Act. Mr Woodman alleged that the FCUK trade mark had been registered in contravention of section 3(3)(a) of the Act, which prohibits the registration of a trade mark if it is contrary to public policy or to accepted principles of morality. Strangely, his claim related only to the trade mark where it is used in connection with watches and jewellery and did not refer to other FCUK branded items such as clothes or aftershave.
In his evidence, Mr Woodman referred to adjudications made by the Advertising Standards Authority ('ASA') on the use and phonetic variants of the similarly spelt expletive. The ASA had upheld most, but not all, complaints relating to the use of FCUK, but these related to instances where FCUK was used as part of a phrase, or alongside imagery that would be likely to cause it to be interpreted as the expletive.
French Connection Limited, the registered proprietors of the mark brought evidence that FCUK-branded products were sold by a number of respected traders including Boots, Harrods and Selfridges in London and Fenwicks in Newcastle. They provided a number of letters from retailers involved with the FCUK brand giving details of their trade. Some of these retailers commented that they found the assertion that FCUK is offensive to be surprising. One mentions that in response to an advertisement in its health and beauty magazine distributed to 1.8 million readers, the ASA received one or two objections. They remainder either stated that they had not received complaints or they did not comment. The representatives of French Connection Limited also asserted that the trade mark was enunciated as the letters F-C-U-K and this was not disputed during the hearing. They also explained that the moniker had started life as an internal reference to denote the UK division of French Connection Limited and it was used alongside FCUS (for French Connection United States) and FCHK (for French Connection Hong Kong).
In response to the arguments put forward relating to the ASA, the hearing officer held that the letters produced by Mr Woodman made it fairly clear that the ASA does not consider FCUK (whether a registered trade mark or not) on its own to be offensive. He also stated that whilst the views of the ASA provided a useful insight into how the public may perceive a mark, he was not bound in any way by its views.
The hearing officer went on to hold that, whilst the use of the similarly spelt expletive would cause a high degree of offence to a significant number of people, the trade mark FCUK was not a swear word and did not itself cause offence. Rather, through wordplay, mistake or misconstruing of the letters in the trade mark, the mark is capable of being seen as the expletive. In the 13 page ruling, the hearing officer stated that it was not right to consider the trade mark open to objection because it was capable of being seen as something it was not.
The ruling makes it clear that the position should be assessed on the facts at the time that the application for the trade mark was made. Interestingly, the hearing officer suggested that French Connection Limited may, through contextual use in the years since the mark was registered, have educated the public to regard FCUK as an objectionable word but this had not been the case at the time of application. The ruling went on to state that if the question of offence was being considered as at a later date, the subsequent contextual use would have to be taken into account.