A trademark application may be rejected if the trademark is considered scandalous or illegal. This is prescribed by section 42 of the Trade Marks Act 1995 (the Act). In part (a) of section 42 it states that an application for trademark registration will not be accepted if it “contains or consists of scandalous matter”. However, what constitutes a scandalous trademark is subjective, and the guidance from the legislation is limited. For this reason we have to rely on case law for guidance on what could be considered scandalous material in terms of trademark registration.

How has the US defined ‘scandalous’?

The Washington Redskins are an American football team whose trademarks were recently revoked. The trademark ‘redskins’ was seen as “disparaging of Native Americans” in the view of the Court. This is a great example of how social norms can greatly influence the law. What was once acceptable is now considered racist. Historically, Australian Courts have only applied section 42(a) in several cases.

Australian Cases Featuring Scandalous Trademarks

  • Cosmetic, Toiletry & Fragrance Assn Foundation v Fanni Barns Pty Ltd (2003) 57 IPR 594

The trademark application was for the words ‘Look Good + Feel Good = Root Good’ for the potential sale of hygiene products for the bedroom. Because of the suggestive wording the mark application was considered too outrageous or shocking by the examiner. Since the words were colloquially explicit they were given trademark approval. This is because colloquial language is often more socially accepted, as it supposedly carries less weight in terms of its vulgarity. In other words, it is easier to achieve trademark registration when the applicant chooses less explicit words.

  • Home Box Office Inc v Florenca [2010] ATMO 99

The applicant in this case sought to have the word “absofuckinglutely” registered, however, the examiner thought this would be too scandalous. Despite attempts to reword the mark, the Court was unwilling to allow the trademark to become registered because of its scandalous content.

  • PommieBasher

Under the trademark classes for clothing and beverages, Peter Hanlon set out to register the mark POMMIEBASHER. The examiner denied the mark’s registration – a view that was not supported by the Delegate of the Registrar of Trade Marks. While both shared the opinion that the mark denoted a prejudice towards the English, the delegate did not believe it to be racially offensive. The Delegate asked: “Will it shock the ordinary customer for the relevant goods/services?”, and considered the views of other stakeholders (including foreign governments). In this case, the Delegate found that the mark was merely a case of “colourful, colloquial language”. As such, it was approved.

  • Kuntstreet Wear Pty Ltd’s Trade Mark Application (2007) 73 IPR 438

In this case, the applicant attempted to trademark KUNT, however, because of its obvious phonetic similarity to the offensive English word, was denied trademark registration. While the applicant attempted to argue the pronunciation as ‘Koont’ being the Dutch word for ‘can do’, the resemblance to the forbidden ‘c’ word was just too close for comfort to allow trademark registration.

Which trademarks have been rejected on this basis in other jurisdictions?

In other jurisdictions, there are a number of other grounds that may justify rejecting a trademark. These include:

  • Trademarks offensive towards a religion;
  • Trademarks that are racially insensitive;
  • Trademarks that feature profanities;
  • Trademarks that are vulgar;
  • Trademarks that have sexual connotations; and
  • Trademarks that encourage unlawful behaviour.

How have social norms evolved?

If a word is scandalous in the mind of one person but acceptable to the majority, this may suggest that the word will be capable of trademark registration. The case may be that what you successfully trademark today might fall foul of section 42(a) at some stage in the future

For this reason, IP Australia have not specifically identified what constitutes a scandalous trademark, instead relying on changing social norms and community standards to dictate how the law evolves in relation to offensive phrases or words.

Conclusion

If you have an idea for a trademark that might be borderline scandalous, it’s best to check with an intellectual property lawyer to determine whether or not it might be accepted in today’s day and age.

If you need assistance trademarking your brand or logo, contact LegalVision on 1300 544 755 and speak with one of our trademark specialists.

Daniel Smith

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