Events with significant media coverage, whatever their nature, often provide self-seekers with a golden opportunity to exploit the situation for commercial ends. Thus, unscrupulously some have sought to take advantage of the tragic attacks which occurred in Paris. Barely a few hours after the attack against the editorial team of the satirical newspaper, Charlie Hebdo in the morning of January 7, 2015, the INPI, the National Institute of Industrial Property, received about fifty filing applications for the “Je suis Charlie” trademark and derivatives thereof.
The broadcast of this slogan, created by Joachim Roncin, artistic director of Stylist magazine, half an hour after the attack, was beyond measure. The whole world, with social networks in the front line, took over and almost instantly popularized the visual. Faced with such magnitude, the creator of the visual formally opposed any commercial use of the message and the image. The INPI responded on the same day by issuing a press release announcing the dismissal of such filing applications on the grounds that “this slogan cannot be picked up by an economic actor due to its wide use by the community.” Thus, a few hours sufficed to render “Je suis Charlie” world famous and inalienable. Beyond the ethical aspect, would the widespread use of this visual have therefore rendered it devoid of any distinctive character?
This rejection is not so obvious and may be legally questionable. In accordance with Article L711-2 of the Code of Intellectual Property, “are devoid of any distinctive character: signs or names which in everyday or technical language simply constitute the necessary, generic or usual product or service; signs or names which may serve to designate a characteristic of the product or service (…); signs which consist exclusively of the shape imposed by the nature or function of the product.” However, at the time of filing, the slogan had not yet become part of common parlance or professional language to describe a product or service, nor any of its characteristics and could not necessarily be considered as being a sign constituting a product. Consequently, the slogan could have been treated as distinctive. The argument of the INPI for rejecting the distinctive character is therefore questionable. The INPI should have instead chosen a contention based on public policy to oppose trademark applications to the extent that a monopoly on the slogan could restrict freedom of expression.
Nevertheless, the intention of the INPI is commendable. An extreme state of affairs begets an extreme remedy and the informed position adopted by the INPI can only be saluted. Indeed, the INPI’s role is to examine trademark applications and it may reject them if they do not meet the substantive requirements for registration as required by law. Once the trademark is filed, the INPI publishes the registration of the trademark within a period of six weeks. After this period, the examiner scrutinizes the merits of the application and may raise objections. Third parties also have the opportunity to submit comments or to object to the registration of the trademark, when it published. In this case, the INPI issued a provisional refusal objection to these registrations. The applicants concerned can respond to this objection. Indeed, they can react and respond to this objection within two months, should they so wish to do so. However in view of the exceptional situation, their responses will have little chance of success.
Thus, the shady affair surrounding Charlie should not take place, at least legally in France. It is rather different in practice and the INPI could not, over the last few days, hinder the surge of multiple products bearing the image of the famous visual on eBay, such as stickers or T-shirts. Moreover, due to the international media buzz around the attacks, other foreign offices, such as the Benelux Office or the United States, have received similar requests. As concerns Benelux, the process is ongoing and the decision should be taken within two months. In the United States, Steven Stanwyck and Kelly Ashton also filed the trademark with the USPTO (the US Patent and Trademark Office) for communication and advertising services falling within class 35. In addition, during the registration [procedure], they specified that they wished to use this brand for non-profitable purposes. The USPTO (United States Patent and Trademark Office) has not responded yet.
More recently, the Community Trademark Office (OHIM) received a community trademark application for the same mark, that is, to be protected throughout the entire territory of the 28 countries across the European Union. The application for registration will, in all probability, be rejected because it is likely to prejudice the public interest. In fact, this trademark should be considered contrary to public order and morality. The INPI has no power to contest such registrations outside French territory and therefore cannot prevent foreign companies from disseminating the “Je suis Charlie” mark in the future.
Furthermore, in parallel to these filing applications, domain names such as “charliehebdomassacre.com” or “je-suischarlie.com” were put on sale. The latter, for instance, is on sale display for 349 euros on the domain name sales platform Sedo, the market leader. When confronted with such dishonest business, registrars do little, if anything at all and hide behind the first-come, first-served principle and allege that they must remain neutral and passive. However, in case of a dispute over the registration or use of a domain name, it is nonetheless feasible to initiate actions, particularly in cases of fraud like the UDRP procedure.
Given the current context, it is advisable that registrars, at least the French ones, align themselves with the stance adopted by the INPI in refusing to register such domain names for reasons of public order.