The recent ruling of the US Trademark Trial and Appeal Board (‘the Board’) that registrations for the trade mark Redskins are to be cancelled because they contain ‘matter that is likely to disparage’ made headlines around the world. The Board found that some 30% of Native Americans would be offended by the term, and that this qualifies as a substantial proportion of the relevant class. It also held that a defense of acquiescence or delay in challenging the registrations (‘laches’ as it’s sometimes called) could not be raised because this was a matter of public interest rather than one that affected the interests of a single complainant.
The Redskins issue has, by all accounts, been dragging on for some 20 years, and there is still no guarantee that it is over. The Washington Redskins, the football team that owns the registrations, can apparently still file an appeal. It is also quite possible that, irrespective of what the final ruling is, the team will simply continue using the name Redskins. That is because a ruling of the Board simply relates to the registrability of the trade mark and has no impact on its use – it is conceivable that there are laws in the USA that can be used to prevent the use of racially offensive names, but that is another matter.
Most trade mark systems provide that trade marks that are offensive or immoral cannot be registered. However, as is so often the case, the devil is in the detail. What is offensive to me may be perfectly acceptable to you and what is offensive today might be regarded as acceptable tomorrow.
There have been some interesting cases in the USA. In 1938 the US trade mark authorities decided that the trade mark Madonna could not be registered for wine because it would offend religious sensibilities. This decision may seem strange today, given that one of the world’s leading recording artists has gone by that name for many years. As may the decision to disallow the registration of the slogan trade mark ‘A breast in the mouth is better than a leg in the hand’ for chicken restaurants. Yet the decisions to refuse the following trade marks will probably be seen as being very reasonable: ‘Heeb’ (a phononym for ‘Hebe’, an insulting term for a Jewish person), ‘Khoran’ (in 2010), and the slogan trade mark ‘Stop the Islamizaton of America’ (in 2014).
Standards also vary from country to country. Although registration of the trade mark ‘Jesus Jeans’ was allowed in the USA, it was refused in the UK on the basis that it would offend a clearly identifiable class of persons. The UK trade mark authorities are, in fact, quite conservative in matters like this, having refused the registration of a number of trade marks including the trade mark ‘Tiny Penis’. But they have not always been consistent –the trade mark ‘Fook’ was disallowed on the basis that it is a bit too close to the bone if one takes account of regional accents and dialects, yet FCUK was allowed. In Germany the trade mark ‘Ficken’ – which means exactly what it sounds like it might mean – was accepted because the authorities found that ‘today the word is barely considered offensive or sexually provocative.’ As for the EU trade mark authority, it refused registration of the trade mark ‘Paki’ because it is an offensive terms in the UK for people of Pakistani (and other Asian) origin. The authority was not swayed by evidence that quite a few people who fall within the identifiable class have no problem with the term at all, and in fact use it themselves.
South Africa also prohibits the registration of offensive trade marks. The South African Trade Marks Act talks of refusing protection of a trade mark if the use of that trade mark would be ‘contrary to law’, ‘contra bonos mores’ (contrary to good morals), or ‘likely to give offence to any class of persons’. The South African trade marks office has been quite relaxed on issues of morality and taste, allowing trade marks like ‘Dog’s Bum’ and ‘Fat Bastard’. When the trade mark application for ‘Fat Bastard’ in relation to wine was provisionally refused by the Registrar, my colleague, Vicky Stilwell, filed the submissions in order to overcome the refusal. This was done on the basis that the term ‘fat bastard’ was coined by the wine maker, a Frenchman called Thierry, when he tasted the wine, which had been left on the lees for longer than usual, for the first time. Thierry is alleged to have exclaimed ‘now zat iz what you call eh phet bast-ard’.
Given our history, however, it’s highly unlikely that anything with any racial or religious undertones will be accepted. Although the South African Trade Marks Act does not specifically mention race or religion, it is interesting to note that the Alternative Dispute Regulations relating to domain names in South Africa do. These regulations allow third parties to object to an ‘offensive registration’, and they go on to clarify that ‘an offensive registration may be indicated if the domain name advocates hatred that is based on race, ethnicity, gender or religion and/or that constitutes incitement to cause harm.’ It’s very likely that similar principles will be adopted in relation to trade marks. So when it comes to trade marks in South Africa, the position seems to be as follows: smut and bad taste are OK, but bigotry and religious intolerance are not!