As a general rule in trade mark law, provided that a mark is distinctive of the relevant goods or services for which it is intended to be used, and distinguishable from other parties’ prior marks in the relevant territory, such a mark would be registrable as a trade mark. If those main requirements are met, creatives are at liberty to express their creative and imaginative ideas through trade marks and present them for registration if they so wish. However, in addition to those main requirements, trade mark laws in most countries also contain provisions that expressly bar the registration of marks which are likely to be offensive or disparaging to an identifiable class or group of persons in society. These provisions generally constitute an absolute ground of refusal of marks and, perhaps on grounds of morality and public policy, it appears that they are rarely challenged in practice.

The United States’ Supreme Court (the Supreme Court) has now brought to the forefront a thought-provoking debate, regarding the registrability of so called offensive or disparaging marks in terms of the US trade mark legislation, and questioning whether the provisions of the law which bar the registration of such marks can be sustained, in light of the constitutional provisions which guarantee the right of free speech. The Supreme Court recently gave a ruling, in a case that originated from a trade mark application that was filed by Simon Tam (the founder of an Asian-American music band), to register the name of his band “THE SLANTS”, as a trade mark.

It is a known fact that the term ‘slants’ is regarded as a derogatory term, which refers to persons of east or south east Asian descent. On that basis (and relying on the provision of the legislation which prohibits the registration of marks that may disparage persons, living or dead, or bring them into contempt or disrepute) a US Patent and Trademark Office (PTO) examiner refused Tam’s trade mark application. The examiner was simply of the view that there is a substantial group of persons who find the term ‘THE SLANTS’ offensive, and that this disqualifies the mark from registration. Tam unsuccessfully contested and appealed the refusal of his trade mark application before the examiner and the PTO’s Appeal Board, respectively.

For recourse, Tam then took the matter to the Federal Court, which decided that the provision of law relied on in refusing his trade mark application is unconstitutional, as it encroaches on or violates the constitutional right to free speech, and should therefore be repealed. The PTO filed a petition in the Supreme Court for a final decision on whether the provision of law in question is in fact unconstitutional. In the recent decision, the Supreme Court affirmed the Federal Court’s decision, and concurred that the so called ‘disparagement clause of the Lanham Act is unconstitutional. The Supreme Court expressly stated that “speech that demeans on the basis of race, ethnicity, gender, religion, age disability or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate” (emphasis added).

The PTO’s main argument before the Supreme Court was that the constitutional provision or protection of the right to free speech does not apply to trade marks, as trade marks are government speech and not private speech; and as trade marks are a form of government subsidy. The Supreme Court rejected the PTO’s argument outright, thereby confirming that the constitutional protection of free speech is applicable. The court, in the main, held that, trade marks are in fact private speech, created or emanating from the applicants, without the government’s involvement, and that the registration of a trade mark does not mean that the government approves of its content or point of view. In addition, it was held that the government does not subsidise the registration of trade marks, as applicants are required to bear prescribed official fees for different administrative procedures that are carried out by the PTO.

The court further held that the provision of the legislation that bars the registration of the so called ‘disparaging marks’ is discriminatory based on a “viewpoint” or an expression of a view, and that in a democratic society, free and open discussion must be safeguarded, even where such discussion or speech may be offensive to certain members of the public. It was also the court’s view that, any restriction or limitation of the constitutional right to free speech, irrespective of the context, must serve a substantial interest and must be narrowly drawn, and that the provision which bars the registration of ‘disparaging marks’ fails to meet this requirement.

The Supreme Court’s decision is a significant development for the United States’ trade mark law, and it will undoubtedly open floodgates for new applications seeking registration of so called disparaging or offensive marks, and perhaps those seeking a review of their previously rejected marks (e.g. the mark REDSKINS that the football team, Washington Redskins, has been fighting to get registered). One can also presume that the use of derogatory terms directed at mostly racial, ethnic, or religious groups will undoubtedly stir discomfort in society, and therefore the Supreme Court’s decision may be subject to much debate and controversy for quite some time in America, and possibly internationally. It will also be interesting to watch the developments in other countries which value, uphold, protect and guarantee the right to freedom of speech or expression, to see if they will be persuaded by the arguments raised by the Supreme Court, to apply a less conservative approach when dealing with the relevant provisions in their laws, or to also concur that those provisions cannot be sustained in a modern constitutional era or in a constitutional state which upholds the same constitutional values.

In the South African context, our trade mark law (Trade Marks Act 194 of 1993) also clearly states that a mark that is “…likely to give offense to any class of persons” shall not be registered as a trade mark, and that if it is registered, it shall be liable to be removed from the register. Although there appear to be no published court decisions in which this provision of the Act was considered, commentators on trade mark law agree that indeed, this provision prohibits the registration of any mark which would likely be offensive to any group of persons, including racial, ethnic, religious or any other recognised group in society. In addition, just as in the United States, the South Africa Constitution guarantees the right to freedom of expression (which encompasses freedom of speech), and as the Constitution is the supreme law of the land, any law that is inconsistent with its provisions is, in effect, void.

But is South Africa in a position also to consider if the provision of its Trade Marks Act which bar the registration of ‘offensive’ marks can be sustained, in light of the right to freedom of expression as guaranteed by the Constitution? Despite the clear similarities between the provisions of the trade mark legislation and the constitutions of the United States and South Africa, it is difficult to conclude that the South African Constitutional Court may reach the same decision that was reached by the Supreme Court in the Tam case, if it is called to decide the same matter. However, issues that may possibly be relevant to the court’s inquiry are briefly considered below.

Firstly, the South African Constitution unambiguously limits the right to freedom of expression and expressly states that the right does not extend to (amongst others), “advocacy of hatred that is based on race, ethnicity, gender or religion and that constitutes incitement to cause harm”. Therefore, it may reasonably be argued that, based on the provisions of the Constitution, a mark which is offensive to a racial, ethnic or religious group etc., may nonetheless be protected by the constitutional right to freedom of expression, provided that the content of the mark does not constitute an “advocacy of hatred that is based on race, ethnicity, gender or religion and that constitutes incitement to cause harm”. If that argument is accepted, any application of the provision of the Trade Marks Act in question, in a manner that is inconsistent with the argument should, in principle, be rendered unconstitutional. Put differently, the question that arises is whether a mark, the content of which is regarded as simply offensive to a class of persons, based on, for example, race, gender, or religion, has the potential to promote or necessarily promote hatred of persons in the relevant class or group, or to incite harm? If the answer is in the affirmative, the content of such a mark or the speech expressed through the mark would, therefore, not be protected by the constitutional right to freedom of expression, as they are excluded by the express limitation. If the answer is in the negative, the reasonable conclusion would be that the content of such marks or the speech expressed through the marks is protected by the right to freedom of expression.

In addition, it cannot be disregarded that there is a link between the South Africa jurisprudence and its political history. It is therefore not improbable that the history, mainly in respect of the discrimination or segregation of certain groups based on race, ethnicity and gender, may also influence the court’s approach in dealing with the provisions of the Trade Marks Act in question. The court may be persuaded to exercise caution, in balancing the interests of, for example, maintaining racial, political or religious tolerance in society, and the constitutional right of freedom of expression.

That being said, the single decision that the Constitutional Court has made concerning the right to freedom of expression in the context of trade mark law, may also give more insight on the position that the court may take, if it were called on to decide the constitutionality of the provision in question[1]. Although that case dealt with completely different facts and a different provision of the Trade Marks Act, the court made its views clear on the significance of the right to freedom of expression in a constitutional democracy, and also stated that where reasonably possible (and even in the context of trade mark law) it is obliged to promote the rights entrenched in the Constitution. The court also confirmed that unless an expressive act is excluded by the express limitation of the right to freedom of expression as provided in the Constitution itself, the expression is protected by the Constitution. The court further held that “the constitutional guarantee of free expression is available to all under the sway of our Constitution, even where others may deem the expression unsavoury, unwholesome or degrading” (emphasis added). Regarding the laws of general application, which may reasonably and justifiably limit the right to freedom of expression, the court held that the provision of the Trade Marks Act that was under consideration “must bear a meaning which is the least destructive of entrenched rights and in this case free expression rights. The reach of the statutory prohibition must be curtailed to the least intrusive means necessary to achieve the purpose of the section”.

It is also arguable that the principles raised by the Constitutional Court in the case referred to above may be practically applied in the enforcement of the provision in question, as the provision is evidently broadly worded (any mark that is “…likely to give offence to any class of persons”). The enforcement of the provision in a manner that is consistent with the principles that were raised by the Constitutional Court, particularly in respect of marks that are likely to give offence to a class of persons based on race, ethnicity, religion etc., would, in part, require an examiner to exercise discretion is deciding if such a mark falls within or outside the limitation of the right to freedom of expression (whether or not its content constitutes an “advocacy of hatred that is based on race, ethnicity, gender or religion and that constitutes incitement to cause harm”).

Overall, the US Supreme Court decision in the Tam case has no doubt laid a good foundation for a global debate on whether or not provisions of trade mark laws which bar the registration of so called ‘offensive or disparaging’ trade marks, have lost their place and relevance in the context of the modern constitutional era.