In the most recent chapter of a trade mark dispute that has spanned more than two decades, the United States District Court has upheld a Trademark Trial and Appeal Board decision to cancel six trade mark registrations of the word REDSKINS and variants thereof owned by the Washington Redskins American football team.[1] Despite the team maintaining that the name honors Native Americans, it was held that the marks may be perceived as disparaging or offensive to this racial group and thereby not registrable pursuant to Section 2(a) of the Lanham Act.

Whilst the majority of, if not all, Australian sporting teams have inoffensive names, this decision acts as a reminder for business owners in Australia that to be legally protected, they need to consider several factors before selecting a potentially controversial trade mark.

In Australia, like the United States, offensive or so-called “scandalous” trade marks are not registrable. Under Section 42(a) of the Trade Marks Act 1995(Cth) (Act), a trade mark application must be rejected if “the trade mark contains or consists of scandalous matter”. What constitutes scandalous matter is not codified in the Act, but has been left to the Australian Trade Marks Office (ATMO) and the courts to define. Though the case law has set a high bar for refusal, it is nonetheless important to understand what is not likely to be accepted.

The likelihood that the intended consumers, when directly exposed to a trade mark in its normal use, find such a mark offensive, in part determines whether a mark is scandalous pursuant to s 42(a) of the Act.

As such, the specific goods and/or services for which registration is sought have an impact on determining whether a trade mark is scandalous. A trade mark may be found acceptable for use on one set of goods, such as beer, but not another, such as children’s clothing. Furthermore, it is appropriate to consider the normal way in which elements or words of the trade mark are used, their level of acceptance within the community and whether they may offend or shock the ordinary person. In this regard, only a proportion of Australians need be, or are likely to be, offended for a trade mark to be considered scandalous.

Of course, the words or images applied for are also closely examined by ATMO in determining whether a trade mark is scandalous. Marks that may be considered merely crude or not in good taste may not necessarily be found “scandalous” under Australian law. The mark LOOK GOOD + FEEL GOOD = ROOT GOOD for example was held not to be scandalous, but rather simply in poor taste.[2] More recently, the mark POMMIEBASHER caused some debate. While considered scandalous by an examiner of ATMO, a Delegate of ATMO later found that the term POMMIEBASHER suggested a person who is merely “markedly and stridently biased in their view of the English” rather than someone who “engages in racial vilification, or is prone to verbal abuse”.[3] Indeed, the delegate considered POMMIEBASHER to be part of “ordinary and acceptable, if colourful and colloquial, language” and therefore not scandalous. Nonetheless, trade marks which include overt racial, ethnic or religious slurs will likely be found “scandalous” and not registrable.

In contrast to the above, owners of trade marks that are obvious phonetic equivalents of obscenities likely face an uphill battle to secure registration. For example, in Re: Application by Kuntstreetwear Pty Ltd,[4] the applicant was refused registration of a trade mark, as it was held to be phonetically identical to a strongly offensive English word and rejected under s 42(a). Notwithstanding the above, exceptions to this rule can be found on the register, but their registration has seemingly been dependent on the goods and/or services for which the potentially scandalous trade mark has been registered. There are for example marks employing overt sexual verbs[5] registered in Class 35 for direct marketing and selling of adult products and sex toys via parties.

Companies which have successfully pursued a trade mark application having obscene or suggestive words, have sometimes succeeded by concealing or softening them by unusual or imaginative spelling and slightly altered sounds. Examples of this strategy can be found on the register and include trade marks featuring phonetic elements such as fark[6]. Furthermore, it was noted in one of the cases cited above that if a mark “strikes the eye as being a foreign language word which has a coincidental resemblance to [an obscene English word]”, it may not be considered scandalous.[7]

Opportunistic trade mark applications relating to high profile tragedies or traumatic events are likely to attract objections under s 42(a) of the Act. In a recent decision by ATMO, the applicant of the MH370 mark requested a hearing regarding rejection of the mark as scandalous on the basis that the trade mark would offend a section of the community.[8] Given the public sentiment in Australia regarding the MH370 tragedy it is unsurprising that such an objection was raised. At the hearing, ATMO was ultimately not required to consider whether the trade mark was scandalous as the application was rejected on distinctiveness grounds.

In light of the above, a simple test to gauge whether your trade mark may be found “scandalous” and thereby refused registration is to consider whether ordinary customers are likely to be shocked or offended by your goods and/or services branded with such a mark. If you are unsure or would like a second opinion, the trade marks attorneys here at Fisher Adams Kelly are available to advise on such matters.

Given the continuous state of flux of community, religious and moral standards, it is also important to note that a particular word or phrase that may have once been considered scandalous or offensive may not be so today or in the future. As the Washington Redskins case so aptly illustrates, the reverse may also be true, where community perception of the REDSKINS trade marks has evolved from being acceptable 20 to 30 years ago at registration to being viewed as a disparaging racial slur by the majority today.

As an aside, the United States District Court were at pains to highlight that the Washington Redskins are still free to use the trade mark in commerce, but they will now have to rely on the common law to enforce the de-registered REDSKINS trade marks. Similarly, Australian owners of trade marks found to be scandalous may rely on such rights, but they do not offer as strong a protection as registered trade mark rights and are typically more difficult to enforce.