There must be something in the water at trade marks offices around the world. They’ve approved shirts emblazoned with the letters FCUK, bar snacks called Nuckin Futs and even a beer called F*****g Hell!

If that wasn’t exciting enough, soon we might be able to finish up the day at a ‘Breastaurant’.  The trade mark has recently been registered in the United States by the founder of the ‘Bikinis Sports Bar & Grill’ restaurant chain, where patrons are served by waitresses wearing bikini tops, jean shorts and cowboy boots. According to the website, the ‘Breastaurant’ was born when its founder was holidaying in Australia. He was approached by an attractive server who asked, ‘wanna  beer, mate?’  Perhaps if she had asked, ‘where the bloody hell are you?’ things might have turned out differently.

Jokes aside, how might the Australian Trade Marks Office react if Bikinis, home of the Breastaurant, were to move Down Under and seek to register its trade mark here?  After all, the term isn’t without potential controversy to some members of the public at least.

Our investigations into the likelihood of ‘Breastaurant’ becoming a registered trade mark in Australia led to surprise by the liberal approach taken by the Trade Mark Office in granting marks which 15 years ago might well have been considered scandalous.  The examples we came across show how rapidly our culture is changing – some recently approved trade marks are even too rude to print in this post!

How can scandalous marks be rejected?

Under section 42(a) of the Trade Marks Act 1995 (Cth), an application for registration of a trade mark will be rejected if it contains or consists of scandalous matter.

The issue is determining what is ‘scandalous’. Such a decision must necessarily  take into account emotion, and subjective reactions by the public or particular segments of it.   The Australian Trade Marks Office Manual of Practice & Procedure acknowledges this by stating, at part 2.1:

“…it is quite likely, in the 21st century, that words which would have caused major offence in earlier times are now acceptable as trade marks in certain markets. Similarly, words which were once innocuous may have developed quite different connotations and now be regarded as offensive in certain circumstances.”

Generally, Hearing Officers will consider:

  • the materials the trade mark has been fashioned from and how it will be understood in Australia; and
  • whether a ‘not insubstantial’ number of people will be, or are likely to be, shocked by the trade mark in its context. (See Application No. 999278 at [14] and [28])

Trade marks do not have to be ‘a high point in skilled allusion’, and may be approved despite being in bad taste as long as they are not likely to cause any significant degree of shock.  This decision is highly subjective and variable.

An interesting case concerned a successful application for the trade mark ‘Nuckin Futs’ for a brand of bar snack, where it was held that the “’f’ word” is commonly used in Australia and is apparently no longer offensive or shocking! We must try using it with clients sometime and see how they react…

Lost in translation

However, whilst the ‘f’ word will make the cut, the ‘c’ word remains persona non grata.  An application to register the mark ‘KUNTSTREETWEAR’ (Application No. 999278) was not approved by the Australian trade mark office for, well, obvious reasons. It was accepted that some foreign obscenities may be so obscure as to render them effectively meaningless, and that those applications would probably be accepted for registration (at [40]).  However, it was found that in this case there was no suggestion of the trade mark being foreign, and it was therefore likely to be viewed as a crude copy of the English obscenity.

The Devil’s in the detail

It will also depend on the context in which the trade mark is to appear.

The trade mark ‘Nuckin Futs’ was  approved in Australia on the basis that the snacks were to be served in bars and nightclubs, and so would not be widely marketed in places where children or overly conservative members of society would frequently be exposed to them.

However, in the “lost in translation” example above, the trade mark was to be attached to clothing, and so the application was refused for public policy reasons because there were no warnings or restrictions on who could access it (Application No. 999278).

‘Breastaurants’ in Australia?

Possibly, the appeal of the name ‘Breastaurant’ lies in its humorous play on the word ‘restaurant’ in combination with … well, you know.

Interestingly, in the United States at least, the term is said to describe “a restaurant that has sexual undertones, most commonly in the form of large-breasted, skimpily dressed waitresses and barmaids.”  Types of US breastaurants are said to include the aptly named ‘Mugs N Jugs’, ‘Canz’ and ‘Show-Me’s’, and may also include ‘Twin Peaks’. It rather begs the question of why a trade mark application for breastaurant would not face hurdles for lack of distinctiveness…

We don’t want to be party poopers, but we expect consumer reactions to the name in Australia would not be uniformly congratulatory.  Perhaps an Australian trade mark applicant for  ‘Breastaurant’  could overcome these issues by running a similar argument to that led in ‘Nuckin Futs’, namely, the name and products are not intended to have mass market application; they are directed to, say, alumni of Hooters rather than  avid readers of the Female Eunuch.  That said, a rival restaurant owner in the United States has said: “I want Twin Peaks to be a place where, you know, my mom’s comfortable here, where my neighbors can bring their kids and everybody can enjoy it.” Interestingly, an application for the trademark ‘Twin Peeks Lingerie Restaurant’ was lodged in Australia in March 2013, so we’ll have to keep our eyes peeled as to how that plays out before the Trade Marks Office.

The Australian Trade Marks Manual states that expressions sufficiently modified by humour or idiosyncratic spelling will generally be acceptable (part 2.6).

Given the emphasis placed on context in determining whether a trade mark is scandalous, and taking into account progressive 21st Century culture and attitudes (for example see our past post Copyright licensing and a cautionary (fairy) tale, some TV shows like Jersey Shore and  music video clips performed by artists who target young audiences) , we think it quite possible that ‘Breastaurant’ would pass the test.

What might be regarded as scandalous in 15 years’ time?  Perhaps, not much.