A trade mark that is contrary to public order/morality – is there really an objective test?

The company MAPA GMBH GUMMI UND PLASTIKWERKE requested the registration of the word mark ‘Billy Boy’ and a picture mark (stylized phallic shape) to the Argentina National Register of Industrial Property (INPI). The mark was applied to ‘hygienic rubber articles, particularly condoms’ but subsequently it was reduced to apply only to condoms. INPI to refused registration based on Article 3, subsection e) of the Trade Marks Act 22.362, after considering that the logo was contrary to morals and good customs.

MAPA GMBH GUMMI UND PLASTIKWERKE filed a lawsuit requesting the revocation arguing that the decision was based on an assessment which is subjective. Therefore, the decision did not reflect the current social acceptance around sex. The trial judge dismissed the action considering that the logo was distasteful, inappropriate and obscene.

The plaintiff appealed and the Division II of the Court of Appeals in Civil and Commercial Federal overturned the decision on the grounds that in today's society sex is no longer a taboo. Therefore, the court considered that it should apply a less restrictive approach to determining what is immoral or obscene. Moreover, as the good was a prophylactic, it was reasonable to use that drawing.

In their vote, Dr. James Bernard Kiernan, said that "the criterion for obscenity is confused and imprecise". He continued explaining that in to determine if the logo in question was obscene, they needed to consider that the world is globalised with regard to sex. He added that sex problems have a broad educational and social treatment. On this basis, the vote to which Dr Guarinoni and Dr Gusman adhered, the magistrate found that the figure in question "raises no sexual thoughts or desires beyond the natural, organic and convenience of using a condom for obvious reasons prevention of venereal diseases and AIDS.”

I believe therefore, that what the judges agree with was that morality varies according to time, era, and education. Yet, a subjective test, don’t you agree?

The full text of the case can be found here.