Trademarks Patents Intellectual property. Sex and property rights: Trademarks, patents and other forms of protection of intellectual property
As we know trademarks can be registered but also can be de facto. In the first case there might be a preliminary scrutiny on whether it may have an obscene meaning.
This happens quite often – and involuntarily – when an innocent name has a completely opposite meaning in a foreign language.
But one can imagine that – especially in the field of sex goods – the business may choose to operate under an explicit (and obscene) trademark.
In this case – and contrary to copyright laws – legislative intent is made explicit.
Section 2(a) of the US Lanham Act provides that no trademark may be refused registration unless it «consists of or comprises immoral, deceptive, or scandalous matter».
Section 3(3) (a) of the British Trademark Act states that a trademark shall not be registered if it is «contrary to public policy or to accepted principles of morality».
Article 3 of the French trade- mark law (Loi no 91–7 du n. 1.1991 relative au marques) states, at letter b), that «Ne peut être adopté comme marque ou élément de marque un signe (…) contraire à l’ordre public ou aux bonnes moeurs».
Similar provisions exist in most national legislation pursuant to the provision of Article 6 quinquies, letter B) of the Amended Paris Convention on Intellectual Property of 1883 according to which:
«Trademarks covered by this Article may be neither denied registration nor invalidated except in the following cases: ……(iii) when they are contrary to morality or public order».
The same phrasing is found in Article 3 para. 1 lett. f) of the EC Trademark Directive 89/104 of 21.12.1988 which has substantially unified trademark law throughout the European Union.
The consequences are quite obvious.
If one cannot be granted a trademark on obscene or immoral terms or signs, no property right can be asserted on such terms or signs. They cannot be transferred or licensed. They are not part of the business assets. There is no infringement.
One might also suppose that the undertaking using such words or signs could not claim protection through the rules of unfair competition, because that would circumvent the scope of the law, which is expressly aimed at denying that protection.
As to patents, the UK 1977 Patents Act, at Section 1 (1) states that:
«(3) A patent shall not be granted for an invention the commercial exploitation of which would be contrary to public policy or morality.
(4) For the purposes of subsection (3) above exploitation shall not be regarded as contrary to public policy or morality only because it is prohibited by any law in force in the United Kingdom or any part of it».
Article L611–17 of the French Code de la propriété intellectuelle states that:
«Ne sont pas brevetables les inventions dont l’exploitation commerciale serait contraire à la dignité de la personne humaine, à l’ordre public ou aux bonnes moeurs, cette contrariété ne pouvant résulter du seul fait que cette exploitation est interdite par une disposition législative ou réglementaire».
At an international level Article 27, para. 2 of the TRIPS Agreement mirrors the cited provisions in national law stating that:
«Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, provided that such exclusion is not made merely because the exploitation is prohibited by their law».
Although these provisions have been introduced much later than trademark laws provisions and there is scarce evidence of their practical application, one can easily note, especially from the French text, that the notion of ‘morality’ is given a very wide meaning here and ends up by embracing the many, and difficult, bioethical issues.
One can imagine however cases concerning sex-enhancing products; or sex-related drugs for which a request for patent could be refused.
But rather than embark on farfetched examples (reality is always more creative than imagination), the express prohibition of protection for immoral trademarks and inventions suggests a useful comparison with copyright based on the evaluation of the impact of legislation and on a law and economics approach.
In the former case, where property rights are de jure or, at least, de facto granted to obscene works of art, the market seems to greatly profit from the protection of the law. Admittedly, there has always been – since antiquity, as Greek vases demonstrate – a great request for erotic visual arts, and their success, presumably, is scarcely related to allocation rules.
One can also add that copyright is a costless protection, if compared with the registration procedures required for patents and trademarks.
There is probably a disincentive to apply for IP protection when one does not know in advance whether the request will be accepted or refused and might result in a lower growth rate, especially in the field of patentable inventions, with a very low level of innovation, widespread imitation of goods and practically no brand value.
Obviously these remarks are not meant to suggest that human ingenuity could and should devote itself to the field of sex-related inventions, but simply to show what the effects of different forms of regulation can be.
Returning to a contract perspective the current state of the law may help explain why in the sector of sexual goods we have mostly the sale of unprotected objects, without any sort of restrictions on their use. Passing off is a common feature of the trade, and investment made by one producer is profited from all the others.
This could justify – from the point of view of cost structure – higher prices than those one would expect for that kind of product.
Conclusively, property rights over both tangibles and intangibles are not immune from aversion towards sex.
This is not surprising as one could expect that concern over the morality of juridical acts is addressed to all the various aspects, and not only towards contracts.
This is especially true when – as in the case of patents and trademarks – there are ‘gatekeeper’ procedures upon which entitlement depends.
Abstract from: Zeno-Zencovich, Vincenzo, Sex & the Contract: From Infamous Commerce to the Market for Sexual Goods and Services (Second Edition) (October 23, 2015). Sex & the Contract: From Infamous Commerce to the Market for Sexual Goods and Services (Second Edition), Consumatori e Mercato series, Roma TrE-Press, 2015. Available at SSRN: http://ssrn.com/abstract=2678918