In light of the recent Scandalous Trademarks case in the U.S.A in which the Washington Redskins American football team have lost all of their trademarks which contained the word “redskin” or “redskins”, I thought it would be a good idea to give you some information on inappropriate or scandalous trademarks, what they are, and how to avoid them.
Section 42 of the Trade Marks Act 1995
Section 42(a) of the Trade Marks Act 1995 says that an application for the registration of a trademark must be rejected in it contains or consists of scandalous matter. However the phrase “scandalous matter” is very broad, relative and subjective, so, in the absence of a definition in section 1 of the Act, we have to look to recent case law to determine exactly what may constitute scandalous trademarks.
What makes Scandalous Trademarks?
The NFL team The Washington Redskins name was considered to be “disparaging of Native Americans”, resulting in 6 of their trademarks, containing the word ‘Redskin’, being cancelled. This is a perfect example of a phrase that may have been acceptable by the majority 20 or 30 years ago, has become a racist or disparaging racial slur in modern times.
In Australia there have only been a handful of court cases in which refer to Section 42(a).
Cosmetic, Toiletry & Fragrance Assn Foundation v Fanni Barns Pty Ltd (2003) 57 IPR 594
- Applicant seeking registration of mark ‘Look Good + Feel Good = Root Good’ in respect of cosmetics and sexual hygiene products
- Mark causing significant degree of disgrace, shock or outrage
- The trademark was decided to be merely explicit use of colloquial language and therefore the opposition to the trademark was unsuccessful, and the trademark was allowed to be registered.
Home Box Office Inc v Florenca  ATMO 99
- The trademark application was made for the word “absofuckinglutely” and was filed through TM Headstart, where an objection under section 42(a) was raised by the examiner, on the basis that the trade mark contained or consisted of scandalous matter.
- As a result, the applicant amended its trade mark to “Absofcukinglutely” prior to the payment of the Part 2 fee.
- The Court rejected the application to register this, and other trademarks, under section 42(a) amongst others.
- The applicant wanted to register POMMIEBASHER under trademark classes for clothing and beverages.
- The examiner at IP Australia thought that the mark was not registrable on the basis that it was a scandalous trademark under section 42(a)
- The Delegate found that the word POMMIEBASHER was suggestive of a person who was “markedly and stridently biased in their view of the English”. The Delegate found that it did not go so far as to racially slur English people.
- In conclusion, the Delegate found that the trademark was not a scandalous trademark on the basis that the term is “part of ordinary and acceptable, if colourful and colloquial, language”.
Kuntstreet Wear Pty Ltd’s Trade Mark Application (2007) 73 IPR 438
- In Re: Application by Kuntstreetwear Pty Ltd, the applicant tried to register the trademark ‘KUNT’. A trademark examiner decided that the mark was phonetically the same as an offensive word in English and rejected it under s42(a).
- The applicant said it was a variation of the word to ‘künt’ (with an umlaut), which is a Dutch word that means ‘can do, to be able to, capable, to do, ability’, and is pronounced ‘koont’.
- He tried to argue that it is in the same category as FCUK.
- However, it was decided that the trademark ‘FCUK’ is an acronym which can’t be pronounced in English, and does not phonetically sound like a swear word.
- The Kunt trademark resembles very closely or is phonetically identical to the obscene English ‘c’ word.
- The application was refused, on the grounds that the trade mark was scandalous or offensive.
Other Types of Scandalous Trademarks from other Jurisdictions
There have also been a number of decisions from overseas jurisdictions which can give us a better understanding of what can be registered and what could fall victim to section 41(a) and be considered a scandalous trademark. They are:
- Trademarks with a religious connotation
- Trademarks with racial slurs or phrases
- Trademarks using profane material
- Trademarks using or comprising vulgar matter
- Trademarks which are sexual in nature
- Trademarks involving innuendo
- Trademarks which promote or suggest illegal activity
Changing Community Standards
The ordinary way in which the word is used in the community, and the likelihood that that word will offend the common person in that community, has a lot to do with whether you will be able to register a scandalous trademark. It is important to remember that community standards change over time, they are relative, and so like the Redskins trademark, a word that might be borderline, or even not scandalous today, may cause problems in 10 or 20 years time
This is the reason why the IP Office in Australia has not sought to codify what makes something scandalous. The change in community moral standards, the zeitgeist and the changing moral landscape, changes what we as a community find offensive, and therefore the law should evolve as the community does.