Voodoo: religion or trademark? – Think Schuhwerk

Recently, in Think Schuhwerk v OHMI – Müller (VOODOO) [2014] EUECJ T-50/13 [in French], the Court of Justice of the European Union was called on to rule whether or not “VOODOO” could be registered as a Community Trade Mark (CTM).

Which all sounds very boring: but where it becomes interesting for students of law and religion is that the applicant, Think Schuhwerk GmbH, challenged the registration on the grounds, inter alia, that the term “voodoo” was descriptive and would be used to describe a general style of dress – and in doing so it asked the Court to order an expert appraisal of voodoo as a religion. Now read on…

The facts

In 2007 Andreas Müller, a clothing manufacturer, applied to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) to register “VOODOO” as a CTM under Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11 p 1) [1]. In February 2010 “VOODOO” was duly registered as CTM No 5832464.

In March 2010 Think Schuhwerk GmbH filed an application for invalidity, based on Article 52(1)(a), read together with Articles 7(1)(b) and (c) 52(1)(b) of of Regulation No 207/2009. In January 2012 the Cancellation Division rejected the application for revocation. In March 2012 Think Schuhwerk appealed unsuccessfully to the OHIM. The OHIM Board of Appeal found that the trade mark was neither descriptive nor common and was sufficiently distinctive. It also found that no bad faith had been established within the meaning of Article 52(1)(b) of Regulation No 207/2009.

The judgment

In its judgment the First Chamber CJEU noted that the OHIM Board of Appeal had referred to several definitions to show that the term “voodoo” might have religious origins without being a religion in its own right [sans être une religion propre], referring to acts of worship that originated in Haiti or Africa. The consumer would associate the term with occult or black magic. None of the definitions of “voodoo”, nor the documents produced by the applicant, could demonstrate that specific clothes were used to practise voodoo or that the occult acts in question were linked to rituals, places or particular occasions reserved to specific groups of people [24].

Think Schuhwerk had not disputed that “voodoo” referred to acts of worship originating in Haiti and Africa but had relied on several sources of information to maintain that the term corresponded to a distinct religion (which was contrary to the conclusion of the Board of Appeal) [25].  Think Schuhwerk had also asserted that the term lacked the distinctive character that was necessary to make it registrable as a trade mark.

The Court rejected that view and held the complaint inadmissible. There was no particular generic style of “voodoo” clothing [33] and the OHIM Board of Appeal had given clear reasons for that finding [36]. It therefore saw no reason to commission an expert assessment of voodooism [37]. The Court also refused to accept that the proposed trade mark was unregistrable on the grounds that it had no distinctive character; nor had the original application been an abuse or made in bad faith [57 & 58]. Finally, the Court rejected the claim that the application for registration had been intended to circumvent the use of a CTM that had been registered previously [60].

Comment

A strange case and, almost inevitably, the issue of religious labels as possible trade marks has been raised before.

In 2007, amid some controversy, an Italian manufacturer persuaded the US Patent and Trademark Office to register “Jesus” as a trade mark and began selling “Jesus Jeans” in the States. And I doubt many people who drive around in a Mazda connect the name with Ahura Mazda, the Zoroastrians’ title for the Supreme Being. More pointedly, General Electric and Westinghouse used to market light-bulbs under the Mazda trade mark; the name was chosen precisely because of its association with Ahura Mazda, which means “light of wisdom”.

Whether or not “VOODOO” as a trade-mark was in bad taste was not an issue before the Court. But would the Court (or indeed, the OHIM) have accepted “Islam” or “Judentum” (remember. we’re in Germany) as a CTM? I don’t think so.

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[1] Which was replaced by Regulation (EC) No 207/2009 of the Council of February 26, 2009 on the Community trade mark (OJ L 78 p 1).

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Suggested citation: Frank Cranmer: ‘Voodoo: religion or trademark? – Think Schuhwerk‘ (Law & Religion UK 21 November 2014) (available at http://wp.me/p2e0q6-47x)

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