06 Aug 2015
Too raunchy to register: navigating the murky waters of scandalous trade marks
by Timothy Webb, Brett Doyle, Peter Key-Matuszak
Australian trade mark registrations could now be vulnerable to cancellation either because they are scandalous or because their use would be contrary to law.
Trade mark registrations for REDSKINS owned by the Washington Redskins football team face cancellation in that country because a US court has held that they disparage Native Americans. Would such registrations in Australia be vulnerable to cancellation on similar grounds?
US law allows a trade mark registration to be cancelled if it “may disparage” or bring people into contempt or disrepute. The US court decision is a significant victory for Native American activists who have long campaigned against the REDSKINS trade marks. The judge found that “evidence shows that the term ‘redskin,’ in the context of Native Americans, was offensive.” The Washington Redskins have signalled their intention to appeal.
In Australia, there are registration for the following REDSKINS marks:
- for clothing, games equipment and textile goods owned by the United States National Football League; and
- REDSKINS owned by Société des Produits Nestlé SA for confectionery.
Australian law has no direct equivalent allowing the above Australian registrations to be cancelled. To oppose registration or to cancel an existing registration, the trade mark would need to be "scandalous" or its use would need to be "contrary to law".
What is "scandalous"?
Guidance from Trade Marks Office or court decisions is limited and offending a particular group or minority may suffice but the offence must be reasonably based. On this basis, terms such as POMMIEBASHER and FAT BASTARD have been registered. There is also the trade mark ABO on the register.
Presumably applications containing terms such as NIGGER or NIGGER BROWN would be rejected, as in the product packaging below left. The trade mark Registration 240232 (on the right), dating from 1970, excludes any such material:
Because the courts and the Registrar of Trade Marks accept that what is scandalous varies over time, it is possible that the Australian REDSKINS registrations might now be vulnerable to cancellation.
A less stringent approach seems to be taken for other types of potentially scandalous trade marks. The Trade Marks Office Examination Manual gives the following guidance:
"While changes in society have resulted in fairly broad acceptance of many scatological and suggestive words, there are some words which are likely to cause offence across a wide section of the community. Whether a word considered by many as offensive language is acceptable as a trade mark will depend to some degree on the amount of invention and imagination used to present it. Phonetic equivalents of strong but commonly used expressions, such as PHAR QUE or FAR KEW, will generally be acceptable if the expression is sufficiently modified by way of humour, thoroughly idiosyncratic spelling (for example, DR PHUQ) or other factors (for example, disguising the word within a device element).
Conversely, an overt phonetic equivalent such as FUK M, FUCT or FCK where the difference in spelling is minor and it is not softened by anything in the way of humour or subtlety, is still sufficiently scandalous as to require a ground for rejection, as is the word concerned spelt out in full."
However FCUK is a registered trade mark.
What is "contrary to law"?
"Contrary to law" is very broad and may cover material that is not "scandalous" but is defamatory. It is also broad enough to cover a breach of section 18C of the Racial Discrimination Act 1975, which provides:
"Offensive behaviour because of race, colour or national or ethnic origin
(1) It is unlawful for a person to do an act, otherwise than in private, if:
(a) the act is reasonably likely, in all the circumstances, to offend, insult, humiliate or intimidate another person or a group of people; and
(b) the act is done because of the race, colour or national or ethnic origin of the other person or of some or all of the people in the group."
It is possible that Australian trade mark registrations such as those containing REDSKINS could now be vulnerable to cancellation either because they are scandalous or because their use would be contrary to law. Irrespective of their existing registrations and the use of the marks over many years, it is questionable whether the Registrar of Trade Marks would now register terms such as REDSKINS.
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