- The case was referred to the Enlarged Board of Appeal of the EUIPO due to its legal complexity and significance.
- It was determined that the trademark MARICÓN PERDIDO would offend a significant portion of the general Spanish public, as it is considered a homophobic slur.
- The evidence presented by the petitioner did not demonstrate that the gay community has attempted to redefine the meaning of “Maricón” in order to eliminate its offensive connotation.
The Enlarged Board of Appeal of the EUIPO has issued its decision in Case R 2307/2020-G, assessing the absolute ground for refusal under Article 7(1)(f) of Regulation 2017/1001, which prohibits the registration of trademarks that are contrary to public policy or accepted principles of morality. The decision includes findings on the standards for determining accepted principles of morality, the relevant public when assessing this ground for refusal, and the role of freedom of expression.
Background
On May 5, 2020, Turner Broadcasting System Europe Limited filed an application to register the word mark MARICÓN PERDIDO as an EU trademark, seeking protection for goods and services in Classes 9 and 41: audiovisual products and entertainment services. It is worth noting that the trademark application was filed before the premiere of the popular television show *Maricón Perdido* on June 21, 2021.
On November 25, 2020, the EUIPO examiner rejected the application in its entirety pursuant to Article 7(1)(f), in conjunction with Article 7(2). The decision was based on the argument that the mark meant “total faggot” and was a vulgar and offensive expression. The examiner considered that this sign would cause offense not only to the consumers for whom the goods and services were intended, but also to people who might come across it by chance in their daily lives.
On December 4, 2020, the petitioner appealed the decision. His main argument was that, although MARICÓN PERDIDO was “a homophobic expression used in Spain to describe men who could not be reeducated to be heterosexual,” it had evolved into an ironic expression used by the gay community itself, which has adopted the term “Maricón.”
Given the complexity of the case, the Board of Appeals referred it to the Enlarged Board of Appeals. In a decision issued on November 25, 2024, the appeal was dismissed.
Decision
The Enlarged Chamber upheld the examiner’s opinion, concluding that the trademark applied for would offend a significant portion of the general Spanish public, as it is considered a homophobic slur and, therefore, contrary to human dignity and accepted principles of morality.
In reaching this conclusion, the Enlarged Chamber took into account the criteria established in the FACK JU GÖHTE (Case C-240/18 P) and COVIDIOT (Case R 260/2021-G) cases, which provide guidelines on determining accepted principles of morality and clarify the role of freedom of expression in trademark proceedings.
With regard to the applicant’s arguments concerning the incorrect application of this absolute ground for refusal, the Enlarged Chamber noted the following:
- The brand's audience consisted of the consumers targeted by its products and services, as well as other people who, while not interested in them, might encounter the brand in their daily lives.
- Since the sign consisted of words in Spanish, the audience was primarily Spanish-speaking, including children and young people under the age of 18.
- Regarding the meaning of the mark:“Maricón” means “homosexual” or “effeminate” and is used as an insult. Meanwhile, “Perdido” refers to a person dominated by bad habits. In this regard, the Enlarged Chamber went beyond the examiner’s interpretation and held that the most accurate interpretation of the mark was “hopeless faggot.”
- With regard to the applicant’s assertion that the “gay community” had attempted to reclaim and redefine the meaning of the term “Maricón” in order to eliminate its negative and offensive connotation, the evidence presented did not support this claim. The Enlarged Board upheld the examiner’s decision that, as of the filing date of the application, the term remained offensive not only to a significant portion of the general Spanish public but also to many members of the “Spanish gay community.” Although the articles submitted by the applicant mentioned that the term “Maricón” had been coined by the LGBTQ+ community—particularly thanks to the television show *Maricón Perdido*—they also noted that its meaning depended on who said it, how it was said, and in what context. Therefore, the term remained unacceptable when directed at gay men by someone outside their group.
- The personal circumstances of the trademark applicant (who claimed to be part of the potentially offended group) had no impact on the applicability of this absolute ground for refusal.
- This absolute ground was considered a valid limitation on freedom of expression.
Comment
As in the previous case before the Enlarged Board of Appeal (see COVIDIOT), this decision clarifies the factors to be considered when refusing to register a mark on the grounds that it violates accepted principles of morality. Furthermore, it provides useful criteria for assessing the relevant public when applying this ground for refusal and defines what is considered morally acceptable according to normal standards of tolerance and sensitivity.
The fact that the trademark application was filed before the premiere of the television show *Maricón Perdido* may have influenced the Expanded Chamber’s decision. Based on the evidence provided by the applicant, the show was very well received by its audience, and the irony in its title was highlighted. However, this did not prevent the trademark from being deemed offensive, especially when used by people outside the LGBTQ+ community.
Pamela Olivos Reyes, Associate in the Trademark Practice Group.