Scandalous trade marks: did POMMIEBASHER cross the line?
The Australian Trade Marks Office has ruled that the POMMIEBASHER mark is registrable as it is not a scandalous mark. The as yet unpublished decision, handed down by a Delegate of the Registrar of Trade Marks on 31 May 2011, is useful as it provides some further guidance in relation to the difficult area of scandalous trade marks. There are relatively few decisions of the Trade Marks Office and the Australian Courts in relation to this area.
Prohibitions against “scandalous” trade marks in Australia’s Trade Marks Act 1995
The applicant, Peter Hanlon, who was self-represented, sought to register POMMIEBASHER 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) of the Trade Marks Act 1995, which states that an application for the registration of a trade mark must be rejected if the trade mark “contains or consists of scandalous matter”. The applicant then requested a hearing regarding the registrability of the mark. In this decision, the Delegate of the Registrar of Trade Marks was required to consider whether the application for the mark POMMIEBASHER had to be rejected on the basis that it was scandalous.
The Delegate referred to dictionary definitions of scandalous as meaning “the causing of a significant degree of disgrace, shock or outrage”. The Delegate stated the relevant test as being:
“Will it shock the ordinary customer for the relevant goods/services?”.
Interestingly, the Delegate also took into account the state of the Register and the views of “other stakeholders and other interested parties, potentially including foreign governments”, as well as “the sensibilities of small but not insignificant subsets of the Australian population”. Arguably, this creates a somewhat broader test than that referred to above.
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.
It is significant to note that the Delegate made reference to the presumption of registrability which has been in operation in the Australian legislation since 1995, confirming that he must accept the application unless satisfied that there is a ground for rejecting it.
Approaches to the regulation of scandalous trade marks in other countries
This decision is notable for its exploration of a rarely-invoked provision of the Trade Marks Act. 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”.1
The Delegate also made reference to a 1993 article2 by US author Stephen R Baird in which he categorised scandalous and immoral marks into seven discrete categories as follows:
Those with a religious nexus (Australian examples are MECCA3 and JESUS4 and a UK example is HALLELUJAH5) ;
Those consisting of or comprising racial slurs or epithets;
Those consisting of or comprising profane matter (an Australian example is FUCT, although FCUK has been found to be merely suggestive);
Those consisting of or comprising vulgar matter;
Those relating to sexuality (an Australian example is KUNT6, although “LOOK GOOD FEEL GOOD ROOT GOOD”7 was found to be just registrable despite being crude in sentiment and grammar);
Those involving innuendo;
Those suggesting or promoting illegal activity.
Although unstated by the Delegate, the final category referred to above appears to be the most applicable in terms of the POMMIEBASHER mark. However, the Delegate commented that codification of the relevant principles is inappropriate as each case should be considered on the basis of its own facts.
The Delegate further commented that, in any event, community standards are changing. This view is supported by the Delegate's discussion of the 1947 UK decision 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.
In this regard, the author notes that in 2010 it was proposed that the lyric:-
"gay your life must be",
in the well known Kookaburra children's song, 1936 be amended to:-
"fun your life must be",
as a result of evolving meaning of the word.
The author also notes that Rhett Butler's powerful final words to Scarlett O'Hara in Gone with the Wind "Frankly, my dear, I don't give a damn" challenged sensibilities in 1939. However, the word "damn" is now contained in the Australian registered trade mark DAMN THIRSTY WORK.
Use of a Trade Mark
Although Section 42(a) does not explicitly refer to use of a mark which contains or consists of scandalous matter, the concept of notional fair use is nevertheless imparted by section l7 of the Act in the view of the Delegate. 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. Notional fair use does not involve undue weight being given to the intentions of the applicant as regards scandalising potential customers. 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 bowlers’ 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.
Australian Trade Marks Office Practice
The Delegate comments that the current Australian Trade Marks Office Manual of Practice & Procedure makes reference to the sensibilities of "old fashioned" people as being relevant in a consideration of what may be scandalous. However, this consideration has its origins in UK case law in the context of marks which were rejected under the UK Registrar's discretion. The Delegate expresses the view that this test is not applicable in this country in the context of scandalous marks and thus, seems to conclude that old fashioned people are not a relevant subset of the Australian population.
Lessons for Trade Mark Applicants
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.
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