Scandalous trademarks. In Australia there has been an increase in the number of trade mark registrations which contain potentially offensive material.

Section 20 of the Actstates that: 

If a trade mark is registered, the  of the trade mark has, subject to this Part, the exclusive rights:

• To use the trademark
• To authorise other persons to use the trademark

A trade mark registration essentially gives you the exclusive right to use the mark or marks in Australia for the goods or services for which you have registered.

Section 27 of the Act outlines the principal requirements necessary to register a trademark:

 It states that a person may apply for the registration of a trade mark in respect of goods and/or services if:

• the person claims to be the owner of the trade mark; and
• one of the following applies:

1. The person is using or intends to use the trade mark in relation to the goods and/or services;
2. The person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;
3. The person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

Grounds for rejection:

The trademarks office of IP Australia evaluates all applications for registration of new trademarks. In essence the process includes a collection of data and a counter check on IP Australia’s database on whether previous registration has taken place for the same or a similar mark. After the examination process of the information is collected the register of trademarks or a delegate will determine whether or not to accept or reject the application. The most common grounds for rejection of a trademark can be found in Division 2 section 39-44 of the Act.

For the purposes of this paper I will focus on Section 42(a) of the Act; which provides for rejection of a trade mark for registration if the proposed mark contains or consists of scandalous matter. Under the Act there is no clear definition of what exactly constitutes as being "scandalous"; although according to The Trademarks office Manual of Practice and Procedure Part 30 Section 2.1 Scandalous is taken to mean the following:

1. disgraceful to reputation; shameful or shocking.
2. offensive to public or individual sense of propriety or morality: exciting reprobation.
3. Defamatory or libellous, as a speech or writing.

In practice and judging from the examples of trademarks that have been able to get approved, it is quite rare for a mark to be rejected on the grounds that it is scandalous. Further as will be shown; merely being “crude” and “distasteful” will not qualify for rejection for being scandalous.

There are relatively few decisions of the Trade Marks Office and the Australian Courts in relation to the interpretation of section 42(a). But in the case of Cosmetic, Toiletry and Fragrances Association Foundation v Fanni Barns Pty Ltd, the Trade Marks Office had to consider whether the trade mark "Look Good+Feel Good=Root Good", which was related to products in the area of cosmetics and sexual hygiene products and clothing, was scandalous. In making a decision, the Delegate of the Registrar of Trade Marks considered the fact that contemporary language is evolving and that spoken and written language is stronger and rougher than it was 10 years ago. Therefore, it was determined that the trade mark was not likely to cause a significant degree of shock, despite being crude in sentiment and grammatical construction.

Another example where the Trade Marks Office considered a possible scandalous matter according to section 42(a) was in an application for the words “Pommiebasher”, the Delegate of the registrar found that the word "Pommiebasher" suggested a person who was "markedly and passionately biased in his view of the English". He found that the term did not go so far as to suggest a person engaging in racial criticism or prone to verbal abuse or one who literally bashes or assaults English people. It was therefore concluded that the mark was not scandalous or even in bad taste on the basis that the term is accepted in today’s society as part of ordinary and acceptable language.

Further in using the recent trademark acceptance of the phrase “Nuckin Futs”: it was said in the decision that in determining whether words or phrases are held to be scandalous, perception has changed over time with the changing attitudes of society.  Few trademarks are actually rejected on the basis of being scandalous and recently it seems it has become easier to register words that might have been considered offensive/ scandalous in the past. This decision is also very useful as it highlights the difficulty in determining what is scandalous in modern times; it is difficult because different people have different views and views will have significantly changed over time.  In essence it must be something that’s more than merely indecent or crude or in bad taste and it also must be something which does more than merely allude to or suggest an offensive word.  The decision also is a good example on how the “context” of the proposed use of the trade mark may be relevant, as it depicts what might be acceptable to use in regard to products sold in a bar but might be completely unacceptable for products which are sold in a public setting.

What then is the gauge for being scandalous?

Based on case law and results from trademark applications the following key points are among the deciding factors in determining if a trademark is scandalous according to Section 42(a):

According to Part 30 Division 2.1 of The Trademarks office Manual of Practice and Procedure: 

The Registrar is obliged to decide, on behalf of the "ordinary" person, whether a trade mark should be regarded as shameful, offensive or shocking, and therefore be rejected. The words and images fitting this description have changed with the passage of time, and it is quite likely, in the 21st century, that words which would have caused major offence in earlier times are now acceptable as trade marks in certain markets.  Similarly, words which were once innocent may have developed quite different connotations and can now be regarded as offensive in certain circumstances.

“Changing society values and meanings given to words”

In determining whether a trade mark is invalid because it is scandalous, the current position is that much consideration and focus should be given to the views that potential customers of the product or service will have based in light of the manner in which such word is being used as part of our ordinary language. This means that it is necessary to consider that society standards are constantly evolving and changing and that what may be "scandalous" at a particular time may be merely in bad taste at a later time. It was said in the application of Hallelujah trademark case, the phrase "contrary to morality" or scandalous should be considered by the generally accepted standards of today and not by those of 1933. It was further stated in that case that the examiner or delegate when deciding whether to reject or approve the application; must not remain isolated from the day to day world, frozen in an outmoded set of moral principles, he must equally not presume to set the standard.  He must certainly not act as a censor or arbiter of morals, nor yet as a trendsetter.  He must not lag so far behind the climate of the time that he appears to be out of touch with reality, but he must at the same time not be so insensitive to public opinion that he accepts for registration a mark which many people would consider offensive.

This goes to show that when making a decision, the trademarks office must keep an open mind in determining the context and connotations of the words used. Just as was mentioned in the earlier application for the word “Pommiebasher”, probably 50 years ago if that word were to be used in Australia you could be labelled as being extremely racist, but nowadays you can see and hear the word “pommie” being used in everyday language on magazines and even in regular conversations. The Registrar's decision is one which must be made on the merits of each case, taking into account the words or images applied for, the intended market for the goods/services involved and the level of acceptance of the terms within the general population.

 Another good point is mentioned in Division 2.5 of The Trademarks office Manual of Practice and Procedure:  where it is important that consideration should be given to the context of use, but that alone cannot be the decisive factor.  It is appropriate to consider normal, expected usage rather than possible usage.  For example, in relation to an application for “t-shirts” it would not be appropriate to consider how a mark would be received when worn in church during a solemn religious occasion as this would not constitute normal expected usage for such goods. This was the position taken in the “NUCKIN FUTS” application as it was stated that the trademark was approved only on the condition that it would not be marketed towards children and was only to be sold in bars and nightclubs and not exposed to the general public.

Conclusion:

As shown above, it is safe to say that in our society not only in Australia but all over the world, people have become more open and have come to accept/ tolerate certain things which may have not been tolerated by our elders. That’s not to say that our morals and values have diminished. It is merely a sign of time; in my experience I can say that certain vulgar words such as “Shit”, “Sucker", Fucker do not have the impact as they once did. They do not cause that same shock and disgust as they did maybe 20 years ago. I believe that the law as well as legislation which includes the area of trademark application is supposed to progress along with the society, it should not change radically, but it should be able to progress and adjust to modern times instead of being stagnant and out dated.

Bibliography:

Legislation:

• Trade Marks Act 1995 (Cth)
• The Trademarks office Manual of Practice and Procedure

Case law:

• Hallelujah Trade mark, [1976] RPC 605
• Cosmetic, Toiletry and Fragrances Association Foundation v Fanni Barns Pty Ltd [2003] 57 IPR 594
• Harjo v Pro Football Inc 50 USPQ 2d 1705 (USPTO Trademark Trial and Appeal Board (1999)
• Registrar of Trade Marks v Woolworths, (1999) AIPC 
• Le Marquise Footwear Inc's Application 
• Imperial Group ltd v Philip Morris & Co [1982] FSR 72
• Campomar socieded Limitada v Nike International ltd (2000) 202 clr
• Registrar of Trade Marks v Nukin Futs
• Registrar of Trade Marks v Pommiebasher

Text Book:

• Davison, Monotti &Wiseman; Australian Intellectual Property Law, 2008
• Fitzgerald, Beale, Lim and Middleton Internet and E-commerce Law Technology Law and Policy ; Thomson Lawbook Co 2007

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