“Billy Boy” ruled not obscene

The challenged application was filed on February 1, 1996 under Serial No 2,019,392 by Mapa GmbH Gummi- und Plastikwerke in International Class 10 and was subsequently limited to “condoms”. On April 18, 2000 the National Institute of Industrial Property (INPI) refused the registration on the grounds of art. 3, paragraph e), of the Argentine Trademark Law, which bars the registration of “words, drawings and other signs contrary to morals and good mores”. The administrative rejection was affirmed by the District Court, who ruled that the drawing involved was disagreeable, inappropriate and obscene.

On March 4, 2010 Division 2 of the Court of Appeals reversed the rejection of trademark “BILLY BOY” (and device), basically with the argument that the assessment of what is or is not moral must be made on the basis of society’s actual values at a given time. The three members of Division 2 voted unanimously for reversal. In the first vote, Dr. Santiago B. Kiernan, after highlighting the danger that sectarian spirits pose for civil liberties and warning against condemnation of what does not conform to one’s own personal morals, held that the drawing involved did not provoke sexual thoughts or desire more than is natural and organic, and the convenience of using condoms to prevent venereal diseases and AIDS. In the second vote, Dr. Ricardo V. Guarinoni held that judges must fill in the meaning of expressions such as “morals and good mores”, which are ambiguous or lack a specific content, in accordance with the society they live in, and concluded that under the social morals of 2010 there is no room for holding that a drawing such as the one involved here is inappropriate. He also took into account that at the time of the appeal the mark was registered in more than thirty countries and was to be used with a condom, so that “the reference to the phallus in the symbol was not unreasonable”. The third judge, Dr. Alfredo S. Gusman, adhered to Dr. Kiernan’s vote.

This decision will probably be useful to decide the situation of currently pending applications –basically referred to publications, games and musical groups– where the INPI has raised the same objection.