A trade mark is an invaluable branding tool. Time and time again, novel, innovative and even revolutionary product ideas fall by the wayside because traders fail to recognise the importance of marketing and branding their ideas. It’s no use having a top quality product or service if customers cannot distinguish your concept from those of other traders!

In fact, an effective trade mark often acts as a concept’s calling card. However, we understand that coming up with a memorable trade mark is no small feat. This is especially so in a saturated market with countless trade marks. As a result, some traders attempt to register “risky” or “scandalous” terms/logos as trade marks, using the mark as a gimmick to attract attention, publicity or business.

Under Section 42(a) of the Trade Marks 1995 (Cth), an application to register a trade mark will be rejected if it contains scandalous matter. The question you may then be asking is what amounts to scandalous matter and what is merely in bad taste?

What does Scandalous Mean?

In determining whether a trade mark contains scandalous matter, the examiner must assess the mark according to prevailing social norms and attitudes. That is, the examiner must place themselves in the shoes of the ordinary person and ask themselves, does this mark offend me? If the answer is yes, the trade mark must be rejected. If the answer is no, the mark must be allowed to proceed to registration even if it is in bad taste.

Mere sentimental objections to the trade mark’s matter will be insufficient. The trade mark will be considered scandalous if it is capable of offending only a proportion of Australians. That is to say, the trade mark examiner will draw a distinction between matter that is, on the one hand, offensive or repugnant and, on the other, merely in bad taste.

Obvious in fact

A trade mark will be rejected on the basis that it is scandalous if the matter is so obvious and up-front that it goes without saying. A mere suggestion, a vague possibility or a calculated concealment of scandalous matter will often be insufficient to warrant raising an objection.

Marks containing coarse language

Acceptance of a trade mark that contains coarse and/or offensive language depends on the applicant’s intention in presenting the mark.

If the use of humor or idiosyncratic spelling sufficiently modifies the expression or image, it may proceed to registration. A mere misspelling of profanities, however, will rarely be sufficient.

Inherently scandalous marks

Trade marks incorporating matter that is likely to promote or condone the below list will be deemed scandalous and will not be allowed to proceed to registration:

  • violence,
  • racism,
  • terrorism,
  • sociopathic behaviour,
  • personal abuse,
  • ethnic abuse,
  • abuse of a national flag, and/or
  • religious intolerance or vilification

The policy reasons behind deeming such trade marks as scandalous are evident.

Marks containing images of persons

A trade mark may be deemed to be scandalous if it contains an image of a person.  An image of a person will be deemed to be scandalous if:

  • the image itself is scandalous (i.e. a distorted, obscene or vilifying drawing of a prominent public figure),
  • the image is of a well-known person and is accompanied by an offensive suggestion (i.e. a portrait of a politician with a profane expression); and/or
  • the image itself is not scandalous but the relationship between the image and the goods and/or services being sold is scandalous (i.e. using an image of a member of the royal family to sell adult toys).

Conclusion

If you have come up with a risky mark, or had your trade mark rejected on the basis that it is scandalous, contact our friendly team of LegalVision lawyers to see how we can help. We would be happy to assist and answer any trade mark queries that you may have.

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.

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