How scandalous is too scandalous for the Australian Trade Marks Office?
Over recent years, the Australian Trade Marks Office has had to consider a handful of potentially "scandalous" trade marks under section 42(a) of the Trade Marks Act 1995, ("the Act") which states that an application for registration of a trade mark must be rejected if the trade mark "contains or consists of scandalous matter".
There are relatively few decisions of the Trade Marks Office and the Australian Courts in relation to the interpretation of section 42(a). However, in 2003 in Cosmetic, Toiletry and Fragrances Association Foundation v Fanni Barns Pty Ltd1 , the Trade Marks Office had to consider whether the trade mark "Look Good Feel Good=Root Good", in relation to cosmetics and sexual hygiene products and clothing, was scandalous. In the decision, the Delegate of the Registrar of Trade Marks took into account the fact that contemporary language is evolving and that spoken and written language is more robust than it was 10 years prior to the decision. 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. On this basis, it was decided that, on balance, the trade mark did not transgress section 42(a).
Another matter where the Trade Marks Office considered section 42(a) was the 2008 application for the mark "Pommiebasher". Peter Hanlon (who was self-represented) filed a trade mark application for the "Pommiebasher" mark in relation to clothing and beverages (including beer). The Examiner took the view that the mark was not registrable on the basis of section 42(a). In the 2011 Trade Mark Office decision2 , the Delegate found that the mark "Pommiebasher" suggested a person who was "markedly and stridently biased in his/her view of the English". He found that the term did not go so far as to suggest a person engaging in racial vilification or prone to verbal abuse or one who literally bashes or assaults English people.
The Delegate concluded that the mark was not scandalous (or even in bad taste) on the basis that the term is "part of ordinary and acceptable, if colourful and colloquial, language".
In his reasoning the Delegate referred to an example of use of the term "Pommiebasher" in a light-hearted article relating to cricket in an English newspaper, concluding that the term was in regular use in the media (although there did not appear to be any evidence to support this finding). Interestingly, the Delegate found that the term was in a different category to similar "_______ basher" names that promoted violence against people on the basis of their race or sexual orientation.
In the course of reaching the above conclusions, the Delegate outlined the history of section 42, noting that the concept of morality was dispensed with under Australian law in 1955, but had remained a part of the equivalent UK legislation as a bar to the registration of marks which are "contrary to public policy or to accepted principles of morality".3
The Delegate also made reference to a 1993 article4 by US author Stephen R Baird in which he categorised scandalous and immoral marks into seven discrete categories as follows:
Those with a religious nexus5;
Those consisting of or comprising racial slurs or epithets;
Those consisting of or comprising profane matter (A US example is "Bullshit"6. An Australian example is "Fuct", although "Fcuk" has been found to be merely suggestive. A UK example is "Bollox");
Those consisting of or comprising vulgar matter;
Those relating to sexuality (Australian examples are "Kunt"7 and "Look Good Feel Good=Root Good" as referred to above);
Those involving innuendo;
Those suggesting or promoting illegal activity (A US example is "Wife Beater").
Despite referring to the above categories, the Delegate expressed the view that codification of the relevant principles is inappropriate as each case should be considered on the basis of its own facts.
The Delegate reiterated the reasoning in the "Look Good" decision that community standards are changing. This view is supported by the Delegate's discussion of the 1947 UK decision8 relating to the "Oomphies" mark, which was refused registration at first instance on the basis that it meant sex appeal. Clearly this mark would not be refused registration in Australia today.
Although section 42(a) does not explicitly refer to use of a mark which contains or consists of scandalous matter, in the view of the Delegate the concept of notional fair use is nevertheless imparted by the definition of a trade mark in section 17 of the Act. On that basis, it is necessary to consider the applicability of section 42(a) by reference to the goods or services covered by the trade mark application. The Delegate's conclusion that the mark did not consist of scandalous matter was reached despite the fact that the goods in respect of which the applicant sought to register the mark could theoretically extend to infant clothing, lawn bowler's attire or church choir robes.
Accordingly, the Delegate concluded that the "Pommiebasher" mark should be registered subject to any applicable grounds being raised by a third party in the usual opposition process.
In contrast, in the 2010 decision in Home Box Office, Inc v. Isaias Florenca9 it is apparent that the original version of a trade mark in relation to clothing was amended to "Absofcukinglutely" in order to overcome a section 42(a) objection raised by the Examiner that the original mark was scandalous.
Finally, a further example of a potentially scandalous trade mark, "Nuckin Futs"10 was filed on 10 February 2011 in relation to nut products. The Trade Marks Office allowed the application to proceed to acceptance in January 2012, despite an initial objection that the mark was scandalous. On this basis, it appears that the mark may fall into the category of marks incorporating obscene or coarse language which has the requisite degree of invention or imagination for registrability purposes.
However, it is of particular interest that the application for "Nuckin Futs" was accepted subject to the following endorsement:
It is a condition of registration that the trade mark will not be marketed to children
It is unclear exactly what is meant by the above endorsement as the terms "marketed" and "children" are not defined.
As a practical matter, it seems that the endorsement may be difficult to comply with unless the owner of the trade mark uses and licences the mark for use, in adult-only venues only and advertises and promotes the brand in a very restricted manner. Failure to comply with the condition of registration may make the registration vulnerable to cancellation.
A review of Australian registered trade marks comprising f…. derivatives and euphemisms does not reveal any registrations which are subject to similar endorsements. Such marks include:
In determining whether a trade mark is unregistrable because it is scandalous, consideration will be given to the sensibilities of ordinary potential customers, judged by reference to the manner in which such word is being used as part of our ordinary language. In this regard, it is necessary to consider that community standards are constantly evolving and so what may be "scandalous" at a particular time may be merely in bad taste at a later time.
Notwithstanding reference to the seven categories of scandalous and immoral marks, the position of the Australian Trade Marks Office is that it is inappropriate to seek to codify such marks in light of the changing community standards and the necessity to consider the context of use of such marks.
It appears that the prospects of obtaining acceptance of a potentially scandalous mark may be enhanced if the applicant consents to the entry of an endorsement restricting the manner of use of the trade mark, for example, stating that the trade mark will not be marketed to children.
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