Trade marks are an important part of protecting your brand. However, under the Trade Marks Act 1995 (the ‘Act’), your trade mark application may be rejected if your mark has ‘scandalous matter’. What this includes is subjective, and the law provides limited guidance. As such, you should be aware of some historical cases that have considered this issue. This article will explain some definitions of ‘scandalous’ from both the dictionary and legal cases that can help guide you to determine if your trade mark has scandalous material.
Common Definitions of ‘Scandalous’
Dictionary definitions of scandalous reference common ideas such as being:
- offensive to morality or law;
- shocking or shameful; or
- outrageous to the general public.
From a legal point, the Act does not clearly outline what is considered a ‘scandalous’ trade mark. It is important to understand that interpreting what is scandalous can evolve over time, and legal decisions may vary. The standard for being ‘scandalous’ can vary from person to person and may depend on what is acceptable in a given society. Generally, if a trade mark is offensive, indecent, or goes against commonly accepted moral standards, it may count. If you are unsure whether your trade mark might be scandalous, seek professional legal advice.
Australian Cases Featuring Scandalous Trade Marks
Because legal definitions of ‘scandalous’ are still ambiguous, it is important to refer to meanings found in historical cases. In these cases, all applications were initially rejected for being too ‘scandalous’. Each outcome shows how authorities have previously set criteria for a ‘scandalous’ trade mark. The table below explores these cases.
| Case | ‘Scandalous’ Trade Mark | Outcome |
| Cosmetic, Toiletry & Fragrance Assn Foundation v Fanni Barns Pty Ltd | A company that sold hygiene products for the bedroom applied to trade mark the phrase, “Look Good + Feel Good = Root Good”. | The trade mark was approved and deemed not to be scandalous. This was because the words were colloquially explicit, which was more socially acceptable. |
| Home Box Office Inc v Florenca | The applicant sought to register “absofuckinglutely” as a trade mark. | The examiner’s objection was maintained, and the trade mark was refused. The court also deemed an adjusted trade mark, ‘absofcukinglutely’, to be still too scandalous. |
| PommieBasher | The applicant, under the trade mark classes for clothing and beverages, set out to register the mark POMMIEBASHER. | The trade mark was approved and not deemed to be scandalous. Though the trade mark did express some prejudice against the English, it was not racially offensive. Instead, it was simply “colourful, colloquial language” that would not shock an ordinary consumer. |
| Kuntstreet Wear Pty Ltd’s Trade Mark Application | The applicant attempted to register the trade mark ‘KUNT’. | The examiner’s objection was maintained and the trade mark was refused. The word was too similar to the offensive English word. While the applicant attempted to argue the pronunciation as ‘Koont’, the Dutch word for ‘can do’, the resemblance to the English word was too clear to allow registration. |
To summarise, the cases show that your trade mark will likely be denied if it contains or is very similar to profanity. Phrases or words that are somewhat crude but clearly casual/slang, however, are not likely to meet the threshold of being ‘scandalous’.
Continue reading this article below the formDefinitions of ‘Scandalous’ in Other Countries
Furthermore, in other countries, there are several other ways a trade mark may be scandalous. These include trade marks that:
- are offensive towards a religion;
- are racially insensitive;
- feature profanities;
- are vulgar;
- have sexual connotations; and
- encourage unlawful behaviour.
The Role of Social Norms
If a word is scandalous in the mind of one person but acceptable to the majority, you may be able to include it in your trade mark. However, this does not permanently protect your trade mark from being considered ‘scandalous’ under the Act. For this reason, Australia’s trade mark authority, IP Australia, has not specifically identified what counts as a scandalous trademark. It instead relies on changing social norms and community standards to dictate how the law responds to offensive phrases or words.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
Registering a trade mark is key to protecting and growing your brand. As a result, you should ensure your mark is not ‘scandalous’ under the law to avoid your registration being rejected. You are more likely to have a successful application if you know that the meaning of scandalous depends on:
- common sources like the dictionary;
- historical cases;
- other countries; and
- social standards, which can evolve over time.
If you would like assistance regarding the criteria for trade mark registration, contact our experienced trade mark lawyers as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
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